Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 16-27 of U.S. Patent No. 12205591 (Patent ‘591). Although the claims at issue are not identical, they are not patentably distinct because the patented claims and the instant claim are directed to substantially similar subject matter relating to a computer-implemented method and system for managing queries from multiple users of an assistant-enabled device using a round robin queue.
Independent claims 1 (and 11) of the instant application recite, in part, detecting multiple users associated with user devices, receiving user queries, enabling a round robin mode, and managing action based on a round robin queue. These limitations are taught by claims 1 and 8 (claims 16 and 23) of U.S. Patent 12205591, which recite detecting multiple users in a n environment of an assistant-enable device, receiving queries from multiple users, and enabling a round robin mode causing the digital assistant to control performance of actions based on a round robin queue. Further, Claim 8 (and claim 23) of Patent ‘591 teaches detecting at least one user based on proximity information for a user device associated with the user. Therefore, the limitation of detecting users based on proximity information from associated user devices is taught or suggested by the patented claims.
The limitation of providing the round robin queue for display in a graphical user interface on corresponding user devices would have been an obvious modification of the user interface functionality taught by claims 2 (and claim 17) and 3 (and claim 18) of Patent ‘591, which teach providing output from a user interface of a user device associated with another user and displaying a graphical element on a screen of the user device including user-selectable option (similar to displaying actions next to users). According, one of ordinary skill in the art would have found it obvious to modify the patented system to display the round robin queue, including user identities and corresponding actions, on user device. The pending claim of the instant application therefore lacks a patentably distinct difference over the patented claims of the Patent ’591. Further, claims 2-10 of the instant application is similar to claims 2-12 of the Patent ‘591. Similarly claims 12-20 of the instant application is similar to claims 17-27 of the Patent ’591.
Therefore, the claimed invention in the instant application is fully disclosed in the patent and it is broader than the claimed invention in the Patent ‘591. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982). Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Allowable Subject Matter
Claims 1-20 would be allowable if the rejection(s) under nonstatutory double patenting set forth in this Office action is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTIM G SHAH whose telephone number is (571)270-5214. The examiner can normally be reached Mon-Fri 7:30am-4pm.
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/ANTIM G SHAH/Primary Examiner, Art Unit 2693
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