DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 11-12 recite “after transmitting the first response, receive, from an external device of the one or more external devices, a second natural language input in a second language, wherein: the second natural language input is received without the external device receiving, after receiving the transmitted first response, second input to invoke a second digital assistant operating on the external device”. It is not clear who is sending the second natural language input in a second language? Is it first device’s digital assistant? Or second device’s digital assistant? Or is it a second device’s user? For the examination purpose, Examiner interprets as the first digital assistant is sending the second natural language input to the second user’s digital assistant on second device. Claims 2-10 depend on claim 1 and therefore they have been rejected for the same reason.
Claims 1, 11-12 recite “one or more external devices” in additional to a “electronic device”. Does this imply that each of the external devices is non-electronic? Claims 2-10 depend on claim 1. Therefore claims 2-10 are rejected for the same reason.
Claim 4 depends on claim 1 and recites “a fourth natural language input…”, “a fourth response…”. Claim 1 recites “a first natural language input”, “a second natural language input”, a first response”, and “second response”. However, there is no mention of “a third natural language input” and “a third response” in claim 1 or in claim 4. It is not clear why there is fourth natural language input and fourth natural language response without having any clarification regarding third natural language input/response.
Claim 6 depends on claim 1 and recites “a fifth natural language input…”, “a fifth response…”. Claim 1 recites “a first natural language input”, “a second natural language input”, a first response”, and “second response”. However, there is no mention of “a third natural language input”, “a fourth natural language input”, “a third response” and “a fourth response” in claim 1 or in claim 6. It is not clear why there is fifth natural language input and fifth natural language response without having any clarification regarding third and fourth natural language inputs/responses.
Claim 7 depends on claim 1 and recites “a sixth natural language input…”, “a sixth response…”. Claim 1 recites “a first natural language input”, “a second natural language input”, a first response”, and “second response”. However, there is no mention of “a third natural language input”, “a fourth natural language input”, “a fifth natural language input”, “a third response” “a fourth response” and “a fifth response” in claim 1 or in claim 7. It is not clear why there is sixth natural language input and sixth natural language response without having any clarification regarding third, fourth and fifth natural language inputs/responses.
Claim 8 depends on claim 1 and recites “a third user of the external device…”. Claim 1 recites “a first user”. However, there is no mention of “a second user…” in claim 1 or in claim 8. It is not clear why there is a third user without having any clarification regarding second user.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Claims 1, 11-12 recite “while the electronic device is engaged in a communication session with one or more external device…” This limitation uses not only non-technical and/or ambiguous terminology (It is not clear what is “engaged” and what is a “communication session”?) but also implies that an electronic device consists of merely a processor and a memory is capable of communicating with another device. Specification defines communication session being one between the users of the respective devices which encompasses an exchange of audio, visual and/or textual information between the devices. Seems like there are some essential features/elements that are missing in the claim. Claims 2-10 depend on claim 1. Therefore claims 2-10 are rejected for the same reason.
Claims 1, 11-12 recite “when executed by one or more processors of an electronic device, cause the electronic device to: … receive, from a first user of the electronic device, input to invoke a first digital assistant operating on the electronic device”. Which implies that an electronic device constituted merely of a processor and a memory capable to receive input from a user, which allows interpretations about what is meant by “user input”? Seems like that claims 1, 11-12 lacks essential features/elements with respect to electronic device capability. Claims 2-10 depend on claim 1. Therefore claims 2-10 are rejected for the same reason.
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, 3, 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 13 and 25 of U.S. Patent No. 12230264 (Patent ‘264). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 11-12 of the instant application are similar with the exception of the narrower claim limitations as claimed in Patented claims 1, 13 and 25. Patent ‘264 has narrower claim limitation of “natural language input corresponding to a task”, “user input about the task”, “transmit, …, an output indicative of the initiated task…”, instead of the broader claim limitation of “first natural language input”, “second natural language input”, “a first response”, “a second response” in instant application. Dependent claim 3 corresponds to claim 6 of the Patent ‘264.
The claimed invention in the instant application is fully disclosed in the Patent ‘264 and it is broader than the claimed invention in the Patent ‘264. 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.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20170132199 to Vescovi et al. (“Vescovi”).
As to claims 1, 11-12, Vescovi discloses non-transitory computer-readable storage medium storing one or more programs, an electronic device and a method, the one or more programs comprising instructions, which when executed by one or more processors of an electronic device [paragraphs 0013, 0019, 0206, 0217-19], cause the electronic device to: while the electronic device is engaged in a communication session with one or more external devices [Figs. 8A-8Z]: receive, from a first user of the electronic device, input to invoke a first digital assistant operating on the electronic device, wherein the first digital assistant is configured to operate in a first language [Figs 8A, 8D, paragraphs 0277-282]; receive, from the first user, a first natural language input in the first language [Figs. 8A-8R: “Please let Tomas in my apartment when he arrives” or “Play Tomas his favorite music”, paragraphs 0277-282, 0292]; in accordance with invoking the first digital assistant, generate, by the first digital assistant, a first response, in the first language, to the first natural language input [Figs. 8A-8S, paragraphs 0277-282, 0292-294];
transmit the first response to the one or more external devices; after transmitting the first response, receive, from an external device of the one or more external devices, a second natural language input in a second language [Figs. 8S-8T, paragraphs 0292-0294: “allowing Pierre's digital assistant to proceed. Regardless of the path taken, Tomas' digital assistant receives on his electronic device 200a a message 838 from Pierre's digital assistant 700a, requesting information about Tomas' favorite music”], wherein: the second natural language input is received without the external device receiving, after receiving the transmitted first response, second input to invoke a second digital assistant operating on the external device [Figs. 8S-8V, paragraphs 0292-0294: “this communication occurs directly between the digital assistants without intermediation”, “Pierre's digital assistant 700a initiates communication with Tomas' digital assistant”, also see paragraph 0085: the digital assistant of a first person initiates communication with a second, different person based on the plan template 802, without being directly commanded or instructed to do so by the first person, and according to some embodiments, without notifying the first person]; and the second digital assistant is configured to operate in the second language [Figs. 8S-8V, paragraphs 0292-0294]; and receive, from the external device, a second response, in the second language, to the second natural language input, wherein the second response is generated by the second digital assistant [Figs. 8S-8V, paragraphs 0292-0294].
As to claim 2, Vescovi discloses the one or more programs comprising instructions, which when executed by one or more processors of the electronic device, further cause the electronic device to: transmit, to the external device, context information associated with the first natural language input, wherein the second digital assistant generates the second response based on the context information [paragraphs 0228, 0294: “Based on user context, device context, and/or express user preferences, messages between digital assistants are provided to their respective users in different manners, according to some embodiments”].
As to claim 4, Vescovi discloses the one or more programs comprising instructions, which when executed by one or more processors of the electronic device, further cause the electronic device to: after transmitting the first response, receive, from the external device, a fourth natural language input in the second language; receive, from the external device, a fourth response, in the second language, to the fourth natural language input, wherein: the fourth response is generated by the second digital assistant; the fourth response is received in accordance with the external device receiving fourth input to invoke the second digital assistant; and the fourth response indicates that the second digital assistant initiates a task corresponding to the fourth natural language input [Figs. 8A-8K, 8R-8V, paragraphs 0276-294].
As to claim 5, Vescovi discloses wherein the second digital assistant generates the second response based on information corresponding to a second user of the external device, wherein the information is stored on the external device [paragraphs 0228, 0294: “Based on user context, device context, and/or express user preferences, messages between digital assistants are provided to their respective users in different manners, according to some embodiments].
As to claim 6, Vescovi discloses the one or more programs comprising instructions, which when executed by one or more processors of the electronic device, further cause the electronic device to: after transmitting the first response, receive, from the first user, a fifth natural language input in the first language, wherein the fifth natural language input is received without the electronic device receiving, after transmitting first response, fifth input to invoke the first digital assistant; in accordance with receiving the fifth natural language input, generate, by the first digital assistant, a fifth response, in the first language, to the fifth natural language input, wherein the fifth response indicates an initiated task corresponding to the fifth natural language input; and transmit, to the one or more external devices, the fifth response [Figs. 8A-8K, 8R-8V, paragraphs 0276-294].
As to claim 9, Vescovi discloses wherein the second natural language input does not include a response to a prompt for user input generated by the first digital assistant or the second digital assistant [Figs. 8S-8V, paragraphs 0292-0294: “this communication occurs directly between the digital assistants without intermediation”, “Pierre's digital assistant 700a initiates communication with Tomas' digital assistant”, also see paragraph 0085: the digital assistant of a first person initiates communication with a second, different person based on the plan template 802, without being directly commanded or instructed to do so by the first person, and according to some embodiments, without notifying the first person].
As to claim 10, Vescovi discloses wherein: the input to invoke the first digital assistant includes a spoken trigger input or a selection of a button of the electronic device [paragraph 0096: digital assistant client module 229 can be capable of accepting voice input (e.g., speech input), text input, touch input, and/or gestural input through various user interfaces (e.g., microphone 213, accelerometer(s) 268, touch-sensitive display system 212, optical sensor(s) 229, other input control devices 216, etc.) of portable multifunction device 200]; and the second input to invoke the second digital assistant includes the spoken trigger input or a selection of a button of the external device [paragraph 0096: digital assistant client module 229 can be capable of accepting voice input (e.g., speech input), text input, touch input, and/or gestural input through various user interfaces (e.g., microphone 213, accelerometer(s) 268, touch-sensitive display system 212, optical sensor(s) 229, other input control devices 216, etc.) of portable multifunction device 200].
Allowable Subject Matter
Claims 3,7-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent Application Publication No. 20210249009 to Manjunath et al. (Abstract, Figs. 8, 12-15 and corresponding paragraphs), U.S. Patent Application Publication No. 20160373571 to Woolsey et al. (Abstract, Figs. 19-32 and corresponding paragraphs).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached at 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTIM G SHAH/Primary Examiner, Art Unit 2693
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