DETAILED ACTION
Status of Claims
This Action is in response to App. 19/075,099 filed 03/10/2025. The present application is a continuation of 18/244,146. Claim 1 is currently pending and have been examined.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “closed” in claim 1 is used by the claim to mean “while the application is not actively displaying an application interface,” while the accepted meaning is “the application is not executing.” The term is indefinite because the specification does not clearly redefine the term.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12267384 (hereafter Pat. 384) and claims 1-23 of U.S. Patent No. 11785074 (hereafter Pat. 074). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are anticipated by the reference claims as shown:
As per claim 1:
A method of displaying content on a mobile device, the method comprising:
receiving a first content request provided by a native app that closed and that is executing on one or more processors of the mobile device; (See Pat 384 claim 1, “receiving a first content request provided by a native app that appears closed but is executing on one or more processors of the mobile device;”. See also Pat. 074 claim 1, ““receiving a first content request provided by a native app executing on one or more processors of the mobile device;”)
responsive to receiving the first content request, determining whether the native app is permitted to display app content on a screen of the mobile device while the native app is closed, wherein said determining includes examining at least one of: mobile device location, mobile device motion, and date/time; and (See Pat 384 claim 1, “responsive to receiving the first content request, determining whether the native app is permitted to display app content on a screen of the mobile device while the native app appears closed, wherein determining includes examining at least one of: mobile device location, mobile device motion, and date/time; and”. See also Pat. 074 claim 1, ““responsive to receiving the first content request, determining whether the native app is permitted to display app content on a lock screen of the mobile device, wherein said determining includes examining at least one of: mobile device location, mobile device motion, and date/time;”)
in the event that the native app is permitted to display app content on the screen of the mobile device while the native app is closed: (See Pat 384 claim 1, “in the event that the native app is permitted to display app content on the screen of the mobile device while the native app appears closed”. See also Pat. 074 claim 1, “in the event that the native app is permitted to display app content on the lock screen of the mobile device;” See also Pat. 074 spec ¶0044, wherein closed is defined as being on lock/home screen.)
transmitting a second content request to a content server; (See Pat 384 claim 1, “transmitting a second content request to a content server;” See also Pat. 074 claim 1, “transmitting a second content request to a content server;”)
receiving app content from the content server in response to the second content request; and (See Pat 384 claim 1, “receiving app content from the content server in response to the second content request; and”. See also Pat. 074 claim 1, “receiving app content from the content server in response to the second content request;”)
displaying the app content on the screen of the mobile device. (See Pat 384 claim 1, “displaying the app content on the screen of the mobile device.” See also Pat. 074 claim 1, “displaying the app content on the lock screen of the mobile device.”)
Non-Obvious Subject Matter
Claim 1 is similar to the limitations of Parent App. 17/525,589 and 18/244,146, specifically the concept of determining permission to display content while the application is closed/not actively presenting an interface. The Examiner notes upon further search and consideration, the Examiner notes the following reference(s):
Plette et al. (US 20160364574 A1), which talks about presenting content over a lock screen of a device including requesting user permission for displaying content on the lock screen.
Aguera-Arcas et al. (US 20210284297 A1), which talks about expanding lock screen functionality and experience including determining permission information for presenting information on the lock screen from applications.
Although these reference(s) teach/suggest the concept of implementing permissions for presenting information outside of an application, these reference(s) fail to teach/suggest determining the permission based on at least one of a location/time as currently claimed. As such, similar to Parent App. 17/525,589 and 18/244,146, the invention has been determined to be non-obvious over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT M CAO whose telephone number is (571)270-5598. The examiner can normally be reached Monday - Friday 11-7.
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/VINCENT M CAO/Primary Examiner, Art Unit 3622
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