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 .
DETAILED ACTION
Claims 1-5 and 21-35 are pending. Claims 6-20 are canceled after election.
This action is response to the Response to Election filed on April 27, 2027.
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a divisional of U.S. Patent Application No. 17/699,565, filed
on March 21, 2022, which itself is a continuation of Application of U.S. Patent Number 11,281,663, filed October 14, 2019, which is a continuation of U.S. Patent Number 10,445,315, filed April 28, 2016. The aforementioned applications are incorporated by reference herein.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 and 21-35 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-11 of U.S. Patent No. US 12229122 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-11 of Patent No. US 12229122 B2 (hereinafter, "Patent"), contains every element of claim 1-5 and 21-35 of the instant application (hereinafter, "Instant Applicant") and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1-5 and 21-35 should have been rejected on the ground of nonstatutory obvious-type double patenting as being unpatentable over claims 1-11 of Patent No. 12229122 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Instant Application
Patent No. US 12229122 B2
A method for comprising:
communicating for presentation a plurality of scope options from which a user can select, wherein the plurality of scope options enable the user to select from web-based searches and local searches;
performing an unfiltered search across a default set of scopes of the plurality of scope options as a result of the user interacting with a search box;
receiving a selection, from the user, of one scope option of the plurality of scope options;
based on the selection of the one scope option of the plurality of scope options, generating at least one suggested search result to present to the user;
receiving a second selection by the user of a second of the plurality of scope options; generating a second set of one or more search results based on the second selection by the user of the second of the plurality of scope options; and
communicating for presentation the at least one suggested search result on a display of a computing device and the second set of the one or more search results that are based on the second selection of the second of the plurality of scope options.
A method for enabling a user to narrow a scope of a search on a computing device to provide relevant search results to the user, the method comprising:
communicating for presentation a plurality of scope options from which the user can select, wherein the plurality of scope options enable the user to select from web-based searches and local searches;
performing an unfiltered search across a default set of scopes of the plurality of scope options as a result of the user interacting with a search box;
receiving a selection from the user of one scope option of the plurality of scope options;
based on the selection of the one scope option of the plurality of scope options, generating at least one suggested search result to present to the user;
receiving a second selection by the user of a second of the plurality of scope options; generating a second set of one or more search results based on the second selection by the user of the second of the plurality of scope options; and
communicating for presentation the at least one suggested search result on a display of the computing device and the second set of one or more search results that are based on the second selection of the second of the plurality of scope options.
Allowable Subject Matter
Claims 1-5 and 21-35 would be allowable if overcome the Double Patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter.
The prior art made of Emigh et al (US 7831581 B1) teaches for method for communicating for presentation a plurality of scope options from which a user can select, the plurality of scope options enable the user to select from web-based searches and local searches, performing an unfiltered search across a default set of scopes of the plurality of scope options as a result of the user interacting with a search box, receiving a selection, from the user, of one scope option of the plurality of scope options. Emigh et al (US 7831581 B1) teaches but fails to teach the following claimed features in combination with overall claimed limitations when interpreted in light of the specification.
The following is an examiner's statement of reasons for allowance: The prior art taken as a whole does not show based on the selection of the one scope option of the plurality of scope options, generating at least one suggested search result to present to the user, receiving a second selection by the user of a second of the plurality of scope options, generating a second set of one or more search results based on the second selection by the user of the second of the plurality of scope options and communicating for presentation the at least one suggested search result on a display of a computing device and the second set of the one or more search results that are based on the second selection of the second of the plurality of scope options.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 1-5 and 21-35 would be allowable over the prior art of record because the claimed features as mentioned above in combination with other claimed features are not recited or suggested by the prior art of records. The above features in conjunction with all other limitations of the dependent and independent claims 1-5 and 21-35 are hereby allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC M WOO whose telephone number is (571)272-4043. The examiner can normally be reached 9:00 to 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tony Mahmoudi can be reached at 571-272-4078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ISAAC M WOO/ Primary Examiner, Art Unit 2163
Prosecution Insights