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 . This Non-Final Office Action is in reply to communication filed on 03/27/2025. Claimed priority is granted from CN202110251061.5, with a priority date of 03/08/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/27/2025 and 02/25/2026 were filed on and after the mailing date of the original application filed on 03/27/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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. 12/289276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Claim by claim mapping:
App. 19/092,191
US 12/289,276 B2
Mapping/difference
ODP Strength
1
1 +5, also 10/13 for ordering
Same first application, first electronic device, first message; starting transmission, second message, integration message, receiver and display concepts. Pending claim expressly sends the second message separately and then sends an integration message containing the second message; it omits the first identifier, determination that first-message sending is incomplete, and same-application restriction; it expressly displays second after first.
Very Strong
2
1
Patent claim 1 already requires integration message comprising merely moves that limitation into a dependent claim.
Essentially Direct
3
2
Same alternatives: first-message ID or type information.
Direct
4
3
Same four application types: IM, live broadcast, video conference, online education.
Direct
5
4
Same first/second-message transmission using a server. Pending wording says “via a server”; patented claim says “using a server.”
Direct
6
7
Same prompt information displayed before second message. Pending claim says applications are the same “type”; patent requires they correspond to the same application, which is narrower.
Very Strong Genius/Species
7
8
Same determination/receipt of first message, stopping prompt, replacing prompt with first message.
Direct
8
9
Same prompt alternatives: image, text, animation.
Direct
9
10
Same determination that integration message arrives before first message and sequential display of first then second.
Direct
10
1 and 7
Pending “same type” is broader than patented “correspond to a same application.” Same application necessarily falls within same type.
Very Strong
11
12
Same receiving first message, second message, or both via server.
Direct
12
1, with 5/10 for receiver consequence
Recasts sender-side method as a first electronic device with processor/memory performing substantially the same functions. Pending claim omits identifier/incomplete-send determination
Strong; Category Change only
13
1
Restores first identifier indicating first-message transmission is incomplete.
Direct
14
2
Same ID/type-information alternates.
Direct
15
3
Same four application alternatives.
Direct
16
13, also 15
Same second-device processor/memory architecture, integration message, incomplete-first-message identifier, and display of first/second messages.
Very Strong
17
14
Same identifier = ID information and/or type information.
Direct
18
15 + 17
Patent 15 supplies prompt display; patent 17 expressly supplies second-message display after prompt. Pending
Very Strong
19
16
Same stopping prompt after first message arrives and replacing prompt with first message.
Direct
20
19
Same integration-before-first determination and sequential first/second display.
Direct
Therefore, claims 1-20 are rejected on the ground of non-statutory double patenting over the claims of U.S. Patent No. 12/289,276 B2.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jude Jean-Gilles whose telephone number is 571-272-3914. The examiner can normally be reached on Mon-Fri, from 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tonia Dollinger can be reached on 571-272-4170. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUDE JEAN GILLES/Primary Examiner, Art Unit 2459
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