DETAILED ACTION
Application No. 19/054,481 filed on 02/14/2025 has been examined. In this Office Action, claim 1 is pending.
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 .
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).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12292942 B2. This is a statutory double patenting rejection.
Present Application 19/054481
US PAT. 12292942 B2
1. A process for operating an enhanced interactive graphical user interface for Internet search, annotation, and filtering on a personal computing device having a display screen, that enables a search engine user to automatically remove one or more search results that each reference a webpage that does not contain a desired search term element, enabling a faster operation of Internet search for the search engine user by enabling the search engine user to avoid spending time visiting a webpage that is missing the desired search term element, the process comprising: providing an Internet search user interface on a personal computing device; receiving a search request from a search engine user that is entered on the personal computing device, the search request comprising one or more search term elements; transmitting the search request to one or more remote servers operating a search engine; and receiving from the one or more remote servers, in response to the search request, a first Internet search result that references a first webpage that is missing a first search term element and a second Internet search result that references a second webpage; displaying the first Internet search result and the second Internet search result on the Internet search user interface, wherein the first Internet search result is organized for display as a first search result grouping comprising a first excerpt for the first webpage, a first Internet link for the first webpage, and a first warning, wherein the first warning comprises a text representing the first search term element and warns the search engine user that the first webpage is missing the first search term element, wherein the second Internet search result is organized for display as a second search result grouping that comprises a second excerpt from the second webpage and a second Internet link for the second webpage but does not comprise any warning that any of the one or more search term elements is missing from the second webpage, wherein the first and second search result groupings are each a unique search result grouping displayed separately from each other; and displaying a filtering option on the Internet search user interface, wherein the search engine user's selection of the filtering option causes the first Internet search result to be removed from the Internet search user interface.
1. A process for operating an enhanced interactive graphical user interface for Internet search, annotation, and filtering on a personal computing device having a display screen, that enables a search engine user to automatically remove one or more search results that each reference a webpage that does not contain a desired search term element, enabling a faster operation of Internet search for the search engine user by enabling the search engine user to avoid spending time visiting a webpage that is missing the desired search term element, the process comprising: providing an Internet search user interface on a personal computing device; receiving a search request from a search engine user that is entered on the personal computing device, the search request comprising one or more search term elements; transmitting the search request to one or more remote servers operating a search engine; and receiving from the one or more remote servers, in response to the search request, a first Internet search result that references a first webpage that is missing a first search term element and a second Internet search result that references a second webpage; displaying the first Internet search result and the second Internet search result on the Internet search user interface, wherein the first Internet search result is organized for display as a first search result grouping comprising a first excerpt for the first webpage, a first Internet link for the first webpage, and a first warning, wherein the first warning comprises a text representing the first search term element and warns the search engine user that the first webpage is missing the first search term element, wherein the second Internet search result is organized for display as a second search result grouping that comprises a second excerpt from the second webpage and a second Internet link for the second webpage but does not comprise any warning that any of the one or more search term elements is missing from the second webpage, wherein the first and second search result groupings are each a unique search result grouping displayed separately from each other; and displaying a filtering option on the Internet search user interface, wherein the search engine user's selection of the filtering option causes the first Internet search result to be removed from the Internet search user interface.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11971937 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of followings.
Present Application 19/054481
US PAT. 11971937 B2
1. A process for operating an enhanced interactive graphical user interface for Internet search, annotation, and filtering on a personal computing device having a display screen, that enables a search engine user to automatically remove one or more search results that each reference a webpage that does not contain a desired search term element, enabling a faster operation of Internet search for the search engine user by enabling the search engine user to avoid spending time visiting a webpage that is missing the desired search term element, the process comprising: providing an Internet search user interface on a personal computing device; receiving a search request from a search engine user that is entered on the personal computing device, the search request comprising one or more search term elements; transmitting the search request to one or more remote servers operating a search engine; and receiving from the one or more remote servers, in response to the search request, a first Internet search result that references a first webpage that is missing a first search term element and a second Internet search result that references a second webpage; displaying the first Internet search result and the second Internet search result on the Internet search user interface, wherein the first Internet search result is organized for display as a first search result grouping comprising a first excerpt for the first webpage, a first Internet link for the first webpage, and a first warning, wherein the first warning comprises a text representing the first search term element and warns the search engine user that the first webpage is missing the first search term element, wherein the second Internet search result is organized for display as a second search result grouping that comprises a second excerpt from the second webpage and a second Internet link for the second webpage but does not comprise any warning that any of the one or more search term elements is missing from the second webpage, wherein the first and second search result groupings are each a unique search result grouping displayed separately from each other; and displaying a filtering option on the Internet search user interface, wherein the search engine user's selection of the filtering option causes the first Internet search result to be removed from the Internet search user interface.
1. A process for Internet search, annotation, and filtering for providing an enhanced interactive graphical user interface for Internet search that enables a search engine user to automatically remove one or more search results that each reference a webpage that does not contain a desired search term element, enabling a faster operation of Internet search for the search engine user by enabling the search engine user to avoid spending time visiting a webpage that is missing the desired search term element, the process comprising: receiving a search request from a search engine user on a personal computing device having a display screen, the search request comprising one or more search term elements; generating, by operating a search engine in response to receiving the search request, a first Internet search result that references a first webpage that is missing a first search term element and a second Internet search result that references a second webpage; generating and providing, for display on the personal computing device, an Internet search user interface; wherein the Internet search user interface comprises the first Internet search result and a first warning to the search engine user that the first webpage is missing the first search term element, wherein the first warning comprises a text representing the first search term element; wherein the first Internet search result is organized for display as a first search result grouping comprising a first excerpt for the first webpage, a first Internet link for the first webpage, and the first warning; wherein the Internet search user interface further comprises the second Internet search result; wherein the second Internet search result is organized for display as a second search result grouping that comprises a second excerpt from the second webpage and a second Internet link for the second webpage but does not comprise any warning that any of the one or more search term elements is missing from the second webpage; wherein the first and second search result groupings are each a unique search result grouping displayed separately from each other; wherein the Internet search user interface provides a filtering option, wherein the search engine user's selection of the filtering option causes an updated Internet search user interface to be generated and provided for display on the personal computing device, and wherein the updated Internet search user interface does not display the first Internet search result; and wherein the process is performed on one or more servers located remotely from the personal computing device.
Rationales:
The subject matter claimed in the pending application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. There are differences between the claims depicted in the bolded words and the underlined words. Pertaining the difference depicted in the bolded words, it appears to be using different wording but meaning is the same. It is therefore deemed obvious to those skilled in the art of claim drafting to draft claim in a later-filed patent application using different wording but same meaning from reading claims in an early- filed patent application issued into a patent. A reason for doing so is to seek a well- rounded protection for a disclose invention. Moreover and pertaining the difference depicted in the underlined words, it appears to be broadening claim by omitting limitations. Nevertheless, it has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 186 USPQ 184(CCPA). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969); omission of a reference whose function is not needed would be an obvious variation.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.
Parikh discloses US 20080010269 A1 Automatic Relevance and Variety Checking for Web and Vertical Search Engines.
Roy et al discloses US 20090019036 A1 Systems and Related Methods of User-Guided Searching.
Mityagin et al discloses US 20090150375 A1 Detecting Zero-result Search Queries. Schwaighofer et al discloses US 20100262568 A1 Scalable Clustering.
Conclusion
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/Mohammad A Sana/Primary Examiner, Art Unit 2166