Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to Applicant’s amendment filed on September 9, 2026.
Claims 1-20 are pending in the application.
Response to Arguments/Remarks
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,238,055.
Applicant submitted that the rejection is provisional since the claims of the instant application have not been determined to allowable and that the rejection be held in abeyance. (Remarks, p. 10).
In response, Applicant’s response is a non-responsive. A complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
The rejections on the grounds of nonstatutory double patenting has been maintained. See underlined for amendments disclosed by US Patent No. 12,238,055.
Claim Rejections - 35 USC § 103
Claims 1, 3-4, 14-17, 19-20 were rejected under 35 U.S.C. 103 as being unpatentable over Lowe US Patent Publication No. 2005/0144245 in view of Meisels et al. US Patent Publication No. 2012/0278401, Ganta US Patent Publication No. 2020/0226323, and Willner et al. US Patent Publication No. 2009/0216843.
The amendments to claims 1, 14, and 19 have overcome the rejections. Accordingly, the rejections have been withdrawn.
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. 12,238,055 (“Patent ‘055”).
Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below, the claims are anticipated by claims of Patent ‘055.
Instant Application
Patent ‘055
1. A method, comprising:
receiving a review initiation request from a first email account, wherein the review initiation request is indicative of:
proposed email content;
a reviewer of the proposed email content; and
a second reviewer of the proposed email content;
1. A method, comprising:
receiving a review initiation request from a first email account, wherein the review initiation request is indicative of: proposed email content; a reviewer of the proposed email content; and a second reviewer of the proposed email content;
generating, based upon the review initiation request, an email comprising:
the proposed email content; and
an email review interface comprising:
a feedback entry field; and an approval selectable input;
generating, based upon the review initiation request, an email comprising:
the proposed email content; and
an email review interface comprising:
a feedback entry field; and an approval selectable input;
transmitting the email to a reviewer email account of the reviewer;
receiving, from the reviewer email account and via a first instance of the email review interface, a review response indicating at least one of:
feedback, indicating one or more suggestions associated with the proposed email content, submitted via a first instance of the feedback entry field; or an approval indicator, indicating approval of the proposed email content, submitted via a first instance of the approval selectable input; and
transmitting the email to a reviewer email account of the reviewer;
transmitting the email to a second reviewer email account of the second reviewer;
receiving, from the reviewer email account and via a first instance of the email review interface, a review response indicating at least one of: feedback, indicating one or more suggestions associated with the proposed email content, submitted via a first instance of the feedback entry field; or an approval indicator, indicating approval of the proposed email content, submitted via a first instance of the approval selectable input;
receiving, from the second reviewer email account and via a second instance of the email review interface, a second review response indicating at least one of: second feedback, indicating one or more second suggestions associated with the proposed email content, submitted via a second instance of the feedback entry field; or a second approval indicator, indicating second approval of the proposed email content, submitted via a second instance of the approval selectable input; and
in response to receiving the review response associated with the proposed email content from the reviewer email, generating, by an email review system and based upon the review response from the reviewer email account, an email revision interface concurrently comprising a first selectable input associated with providing one or more reviewers with a revised version of the proposed email content, and a second selectable input associated with providing one or more intended recipients with a second email corresponding to the revised version of the proposed email content.
generating, by an email review system and based upon (i) the review response from the reviewer email account and (ii) the second review response from the second reviewer email account, an email revision interface comprising a first selectable input associated with providing one or more reviewers with a revised version of the proposed email content, a second selectable input associated with providing one or more intended recipients with a second email corresponding to the revised version of the proposed email content and
an email content revision field concurrently displaying (i) at least some of the proposed email content within a first field, (ii) a first representation of the one or more suggestions, from the reviewer email account, within the first field comprising at least some of the proposed email content and (iii) a second representation of the one or more second suggestions, from the second reviewer email account, within the first field comprising at least some of the proposed email content.
Claims 2-13 are unpatentable of claims 2-13 of Patent ‘055.
Claims 14-18 are unpatentable of claims 14-18 of Patent ‘055.
Claims 19-20 are unpatentable of claims 19-20 of Patent ‘055.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua Joo whose telephone number is (571)272-3966. The examiner can normally be reached Monday-Friday 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oscar Louie can be reached at 571-270-1684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA JOO/Primary Examiner, Art Unit 2445
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