DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18-22 of U.S. Patent No. 8706,102. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations recited in the present application are found in the U.S. Patent No. 8706,102 with obvious wording variations. Take an example of comparing claims 1 and 2 in the pending applications and claim 1 of the U.S. Patent No. 8706,102:
Pending Application 19/024,692
U.S. Patent No. 8,706,102
Claim 1, A server remote from a mobile wireless communications device including a stored application with associated stored information, the server comprising: a processor and a memory coupled thereto and configured to obtain the stored information from the mobile wireless communications device for the stored application, compare the stored information with available updated information for the stored application, and send updated application information to the mobile wireless communications device based on the available updated information for the stored application.
Claim 2, The server of claim 1, wherein the updated application information comprises at least one updated application portion.
Claim 3, similar to claim 2 in U.S. Patent No. 8,706,102, except for using the term updated instead of the term different.
Claim 4, similar to claim 3 in U.S. Patent No. 8,706,102, expect for using the term updated instead of the term different.
Claim 5, similar to claim 4 in U.S. Patent No. 8,706,102.
Claim 6, similar to claim 5 in U.S. Patent No. 8,706,102.
Claim 7 and 8, similar to claim 6 in U.S. Patent No. 8,706,102, except for it’s a method claim instead of a system claim.
Claim 9, similar to claim 7 in U.S. Patent No. 8,706,102, except for using the term updated instead of the term different and it’s a method claim instead of a system claim.
Claim 10, similar to claim 8 in U.S. Patent No. 8,706,102, except for using the term updated instead of the term different and it’s a method claim instead of a system claim.
Claim 11, similar to claim 9 in U.S. Patent No. 8,706,102, except for it’s a method claim instead of a system claim.
Claim 12, similar to claim 10 in U.S. Patent No. 8,706,102, except for it’s a method claim instead of a system claim.
Claim 13 and 14, similar to claim 18 in U.S. Patent No. 8,706,102, except for the using the term updated instead of the term new.
Claim 15, similar to claim 19 in U.S. Patent No. 8,706,102, except for the using the term updated instead of the term new.
Claim 16, similar to claim 20 in U.S. Patent No. 8,706,102, except for the using the term updated instead of the term new.
Claim 17, similar to claim 21 in U.S. Patent No. 8,706,102, except for the using the term updated instead of the term different.
Claim 18, similar to claim 22 in U.S. Patent No. 8,706,102.
Claim 19 and 20 similar to claim 1 in U.S. Patent No. 8,706,102, except for the using the term updated instead of the term different and except for it’s a non transitory claim instead of a device claim.
Claim 1, A server remote from a mobile wireless communications device including a stored application with associated stored version information, the server comprising: a processor and a memory coupled thereto and configured to obtain the stored version information from the mobile wireless communications device for the stored application, compare the stored version information with available different version information for the stored application, and send different application portions to the mobile wireless communications device based on the available different version information
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s)1, 3-7, 9-13 and 15-19 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Macaluso (US 7, 783, 729).
Per claim 1. Macaluso discloses a server remote from a mobile wireless communications device including a stored application with associated stored information, the server comprising: a processor and a memory coupled thereto (col. 7 lines 41-45, Fig 3, i.e. the primary reference shows a
process, the process would be implemented by a processor that requires a "computer readable medium",
e.g., a RAM, to function) and configured to obtain the stored information from the mobile wireless communications device for the stored application (col.4 lines 44-48, i.e. an application, known as the
download application, running on a computer system independent of the mobile device may receive input
from the user interfaces and may cause the data stores of multiple mobile device content providers to be
searched for desired software), compare the stored information with available updated information for the stored application (col. 12 lines 1-5, i.e. Schedule App version 3 and 4), and send updated application information to the mobile wireless communications device based on the available updated information for the stored application (col.12 lines 9-12, Fig 6, i.e. a newer version of the computer data may be considered suitable if the data is compatible with the mobile device, at 640 data corresponding to the search result is wirelessly transmitted to the mobile device).
Per claim 3, Macaluso discloses the server of claim 1, wherein said processor and memory are configured to send the updated application information to the mobile wireless communications device without a request therefrom (col. 5 lines 1-5).
Per claim 4, Macaluso discloses the server of claim 1, wherein said processor and memory are configured to send a notification to the mobile wireless communications device of availability of updated application information based upon at least one selection preference (col. 9 lines 53-62, i.e. for example, a download-assistance tool on the mobile device may be notified by the computer system that an application is ready for downloading to the mobile device, where the application is desired per the user device).
Per claim 5, Macaluso discloses the server of claim 4, wherein said processor and memory are configured to send the notification without a request from the mobile wireless communications device (col. 5 lines 1-5).
Per claim 6, Macaluso discloses the server of claim 4, wherein the at least one selection preference comprises at least one of an application type and an application name(col. 4 lines 57-62).
Per claim 7, refer to the same rationale as explained in claim 1.
Per claim 9, refer to the same rationale as explained in claim 3.
Per claim 10, refer to the same rationale as explained in claim 4.
Per claim 11, refer to the same rationale as explained in claim 5.
Per claim 12, refer to the same rationale as explained in claim 6.
Per claim 13, refer to the same rationale as explained in claim 1, selectively permit an intermediate server to obtain the stored application information, see col. 11 lines 29-34, i.e. . a user may browse a catalog of applications and ringtones at a touch-screen computer kiosk, and the user may select an application. The information that identifies that selection, such as the title of the application, would be received at the search server.
Per claim 15, Macaluso discloses the mobile wireless communications device of claim 13, wherein said processor installs the updated application information without user input (col. 5 lines 1-5).
Per claim 16, Macaluso discloses the mobile wireless communications device of claim 13, wherein said processor installs the updated application information based upon user input (col. 10 lines 30-37).
Per claim 17, refer to the same rationale as explained in claim 4.
Per claim 18, refer to the same rationale as explained in claim 6.
Per claim 19, refer to same rationale as explained in claim 1 (the primary reference inherently
has this [the computer readable medium], i.e., given that the primary reference shows a process, the process would be implemented by a processor that requires a "computer readable medium", e.g., a RAM, to function, see Macaluso reference discloses in col. 18 lines 23-29, Fig 9).
Allowable Subject Matter
Claims 2, 8, 14 and 20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH E DEAN, JR whose telephone number is (571)270-7116. The examiner can normally be reached Mon-Fri 7:30-3:30.
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/JOSEPH E DEAN, JR/ Primary Examiner, Art Unit 2647
