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
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1 and 11 is/are directed to a system and method respectively for generating a new website under step 1. However, the limitations “in response to …determine...; generate…; create…; arrange; and generate…new website” are functions that can be reasonably done in the human mind with the aid of pen and paper, through observation evaluation judgement and opinion under Prong I step 2A.
Under Prong II step 2A, the other limitations in the claims including “a client device…; and a server computer…” are mere instructions to implement an abstract idea on a generic computer, or merely uses a generic computer or computer components as a tool to perform the abstract idea, thus is not a practical application. See MPEP 2106.05(f). The remainder limitations including “receive…” merely recites insignificant extra solution activity such as gathering, displaying, updating, transmitting, and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(g).
Under step 2B, these additional elements above either individually or in combination are mere instructions to implement an abstract idea on a generic computer, or merely uses a computer or computer components as a tool to perform the abstract idea, thus is not a practical application. See MPEP 2106.05(f). The remainder limitations including “receive…” merely recites insignificant extra solution activity such as gathering, displaying, updating, transmitting, and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(g). Therefore, these additional elements do not recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Re claims 2, 6, and 8-9, the limitations in these claims are considered as additional elements and analyzed under Prong II step 2A where they further define descriptive information which either as instructions to implement an abstract idea on a generic computer, or merely uses a generic computer or computer components as a tool to perform the abstract idea, thus is not a practical application or insignificant extra solution activity such as gathering, displaying, updating, transmitting, and storing data which does not integrate the judicial exception into a practical application. Therefore, these additional elements do not recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Re claims 3-5, 7, and 10, the limitations in these claims are analyzed under Prong I step 2A which are functions that can be reasonably done in the human mind with the aid of pen and paper, through observation evaluation judgement and opinion under Prong I step 2A. There is no additional elements that would integrate into the practical application. Therefore, these additional elements do not recite an inventive concept, thus, the claimed invention is patent ineligible under 35 USC 101.
Re claim 12, it is a method claim having similar limitations cited in claim 2. Thus, claim 12 is also rejected under the same rationale as cited in the rejection of claim 2.
Re claim 13, it is a method claim having similar limitations cited in claim 3. Thus, claim 13 is also rejected under the same rationale as cited in the rejection of claim 3.
Re claim 14, it is a method claim having similar limitations cited in claim 4. Thus, claim 14 is also rejected under the same rationale as cited in the rejection of claim 4.
Re claim 15, it is a method claim having similar limitations cited in claim 5. Thus, claim 15 is also rejected under the same rationale as cited in the rejection of claim 5.
Re claim 16, it is a method claim having similar limitations cited in claim 6. Thus, claim 16 is also rejected under the same rationale as cited in the rejection of claim 6.
Re claim 17, it is a method claim having similar limitations cited in claim 7. Thus, claim 17 is also rejected under the same rationale as cited in the rejection of claim 7.
Re claim 18, it is a method claim having similar limitations cited in claim 8. Thus, claim 18 is also rejected under the same rationale as cited in the rejection of claim 8.
Re claim 19, it is a method claim having similar limitations cited in claim 9. Thus, claim 19 is also rejected under the same rationale as cited in the rejection of claim 9.
Re claim 20, it is a method claim having similar limitations cited in claim 10. Thus, claim 20 is also rejected under the same rationale as cited in the rejection of claim 10.
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 1-8, 10-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berk et al. (U.S. 2017/0109455 A1).
Re claim 1, Berk et al. disclose in Figures 1-6 a system for generating a new website (e.g. abstract and Figures 2-3), the system comprising: a client device operated by a user (e.g. Figure 1 with the client computer 120); and a server computer configured to (e.g. Figure 1 with the server 110): receive a single user-initiated request from the client device to generate the new website from a plurality of content items (e.g. abstract and paragraphs [0003 and 0004] with the single request from the client); and in response to the single user-initiated request: determine one or more attributes of each of the plurality of content items (e.g. paragraphs [0047 and 0067-0070] for determining attributes of those contents); generate a layout for the new website based on the determined attributes of the content items (e.g. paragraphs [0024 and 0044-0047]); create item representatives for each of the content items, wherein each item representative includes at least one of an image or a text block corresponding to the respective content item (e.g. paragraphs [0002, 0019, 0024, and 0064-0067]); arrange the item representatives within the generated layout to form the new website (e.g. paragraphs [0069 and 0093]); and generate a new website URL for accessing the new website (e.g. Figure 2 by the website generation software module 220 and Figure 3 with last component 340 and paragraph [0051]).
Re claim 2, Berk et al. disclose in Figures 1-6 the plurality of content items includes at least one of an upload item, a note item, or a link item (e.g. paragraphs [0019 and 0034]).
Re claim 3, Berk et al. disclose in Figures 1-6 determining the one or more attributes of each content item comprises analyzing at least one of a file type, file size, content length, or metadata associated with the content item (e.g. paragraphs [0046, 0068, and 0070]).
Re claim 4, Berk et al. disclose in Figures 1-6 generating the layout for the new website comprises selecting from a plurality of predefined layout templates based on the determined attributes of the content items (e.g. paragraphs [0021-0023]).
Re claim 5, Berk et al. disclose in Figures 1-6 creating item representatives for each of the content items comprises automatically extracting or generating at least one of a title, description, or thumbnail image for each content item (e.g. paragraphs [0043-0047]).
Re claim 6, Berk et al. disclose in Figures 1-6 the server computer is further configured to: receive a user-defined theme selection; and apply the user-defined theme to the new website during the arranging step (e.g. paragraphs [0022-0024]).
Re claim 7, Berk et al. disclose in Figures 1-6 arranging the item representatives within the generated layout comprises dynamically adjusting the size or position of at least one item representative based on the content and attributes of other item representatives (e.g. paragraphs [0019 and 0091]).
Re claim 8, Berk et al. disclose in Figures 1-6 the server computer is further configured to: receive a request to modify the new website; and regenerate at least a portion of the new website based on the modification request (e.g. paragraphs [0069-0070 and 0093]).
Re claim 10, Berk et al. disclose in Figures 1-6 the server computer is further configured to optimize the new website for different devices or screen sizes by generating responsive design elements that adapt the layout and item representatives based on viewing conditions (e.g. paragraph [0019]).
Re claim 11, it is a method claim having similar limitations cited in claim 1. Thus, claim 11 is also rejected under the same rationale as cited in the rejection of claim 1.
Re claim 12, it is a method claim having similar limitations cited in claim 2. Thus, claim 12 is also rejected under the same rationale as cited in the rejection of claim 2.
Re claim 13, it is a method claim having similar limitations cited in claim 3. Thus, claim 13 is also rejected under the same rationale as cited in the rejection of claim 3.
Re claim 14, it is a method claim having similar limitations cited in claim 4. Thus, claim 14 is also rejected under the same rationale as cited in the rejection of claim 4.
Re claim 15, it is a method claim having similar limitations cited in claim 5. Thus, claim 15 is also rejected under the same rationale as cited in the rejection of claim 5.
Re claim 16, it is a method claim having similar limitations cited in claim 6. Thus, claim 16 is also rejected under the same rationale as cited in the rejection of claim 6.
Re claim 17, it is a method claim having similar limitations cited in claim 7. Thus, claim 17 is also rejected under the same rationale as cited in the rejection of claim 7.
Re claim 18, it is a method claim having similar limitations cited in claim 8. Thus, claim 18 is also rejected under the same rationale as cited in the rejection of claim 8.
Re claim 20, it is a method claim having similar limitations cited in claim 10. Thus, claim 20 is also rejected under the same rationale as cited in the rejection of claim 10.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berk et al. (U.S. 2017/0109455 A1) in view of Thomas et al. (U.S. 2010/0251143 A1).
Re claim 9, Berk et al. fail to disclose in Figures 1-6 the new website comprises multiple sections, and wherein content items associated with different subfolders are arranged in different sections of the new website. However, Thomas et al. disclose the new website comprises multiple sections, and wherein content items associated with different subfolders are arranged in different sections of the new website (e.g. abstract, claim 2 in page 33 and paragraphs [0146-0147]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of claimed invention to add the new website comprises multiple sections, and wherein content items associated with different subfolders are arranged in different sections of the new website as seen in Thomas et al.’s invention into Berk et al.’s invention because it would enable to efficiently manage the data in storage.
Re claim 19, it is a method claim having similar limitations cited in claim 9. Thus, claim 19 is also rejected under the same rationale as cited in the rejection of claim 9.
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 §§ 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 1-2 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,229,214. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1 and 8 of the patent 12,229,214 would anticipate every limitations of claims 1-2 and 11-12 even the wordings are different but they have same context.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20040267867-A1
US-20190236137-A1
US-20180246983-A1
US-20140282371-A1
US-20140075283-A1
US-20100299586-A1
US-20100251143-A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUOC H NGUYEN whose telephone number is (571)272-3919. The examiner can normally be reached M-F: 7:30 am -3:30 pm.
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, Christopher Parry can be reached at 571-272-8328. 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.
/PHUOC H NGUYEN/Primary Examiner, Art Unit 2451
Prosecution Insights