Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
This action is responsive to claims filed on August 12, 2026. Claims 1-20 are presented for examination.
Response to Arguments
Applicant’s arguments, filed on August 12, 2026, with respect to the 102 rejection have been fully considered and are persuasive. The 102 rejection of claims 1-20 has been withdrawn.
Allowable Subject Matter
Claims 1-20 are allowable over prior art of record with the exception to the double patenting rejection below. Said claims recite the subject matter that formed the basis for allowance of the parent application. Accordingly, said claims are allowable for the reasons indicated on Applicant's arguments of the parent application No. 18/193289 filed on December 12, 2022.
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 1-20 of U.S. Patent No. 12,301,523. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims are anticipated by the claims recited in the U.S. Patent. Said claims in both applications are directed to compiling different communication sessions into a single graphical user interface.
Taking claims 1 and 11 in the instant application, as an exemplary to show the similarity in features being claimed in both applications, to compare to claims 1 and 11 in the U.S. Patent (see comparison table below). Therefore, it would have been obvious to one of the ordinary skill in the art, having the same claim elements of the parent application, to construct a system as claimed in the instant application capable of performing identical functions as the parent application. The rest of the instant application claims recite similar features as those cited in the U.S. Patent.
An exemplary table to show similarity among the conflicting claims.
Instant Application
U.S. Patent No. 12,30,1523
1. A system configured to provide a graphical user interface, the system comprising:
one or more hardware processors configured by machine-readable instructions to:
generate user interface information defining a graphical user interface configured to display content compiled from different communication sessions involving two or more participants, the graphical user interface being separate and distinct from other graphical user interfaces through which the different communication sessions were carried out.
1. A system configured to provide a graphical user interface, the system comprising:
one or more hardware processors configured by machine-readable instructions to:
generate user interface information defining a graphical user interface configured to display content compiled from different communication sessions, the graphical user interface being separate and distinct from other graphical user interfaces through which the different communication sessions were carried out, the content compiled from the different communication sessions corresponding to users who were participants in the different communication sessions.
11. A method to provide a graphical user interface, the method being implemented in a computer system comprising one or more hardware processors configured by machine-readable instructions, such that execution of the machine-readable instructions by the one or more hardware processors causes the one or more hardware processors to perform the method comprising:
generating user interface information defining a graphical user interface configured to display content compiled from different communication sessions involving two or more participants, the graphical user interface being separate and distinct from other graphical user interfaces through which the different communication sessions were carried out.
11. A method to provide a graphical user interface, the method being implemented in a computer system comprising one or more hardware processors configured by machine-readable instructions, such that execution of the machine- readable instructions by the one or more hardware processors causes the one or more hardware processors to perform the method comprising:
generating user interface information defining a graphical user interface configured to display content compiled from different communication sessions, the graphical user interface being separate and distinct from other graphical user interfaces through which the different communication sessions were carried out, the content compiled from the different communication sessions corresponding to users who were participants in the different communication sessions.
Examiner’s comment: Applicant response with the respect to the non-statutory double patenting rejection has been noted. To expedite case disposition, Applicant is advised to file a terminal disclaimer.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohamed Wasel whose telephone number is (571)272-2669. The examiner can normally be reached on Mon-Fri (8:00 am - 4:30 pm).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached on (571)272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOHAMED A. WASEL/Primary Examiner, Art Unit 2454