DETAILED ACTION
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 .
Continuation
This application is a continuation application of US 18/313,246 (filed on May 5, 2023 – now US Patent No. 12,299,148), which is a continuation application of US 17/935,056 (filed on Sep. 23, 2022 – now US Patent No. 11,681,816). The prosecution history and references cited in the above application have been fully considered.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-15 of US Patent No. 12,299,148 (“conflicting patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of the current application are anticipated by claims 7-15 of the conflicting patent.
The following is a comparison table between the limitations of the method claims (1-7) of the current application and the conflicting patent. The remaining current claims are similarly anticipated by the conflicting claims.
Instant application (19/170874)
Conflicting patent (US 12,299,148)
1. A method performed by a computing device, the method comprising:
7. A method comprising:
receiving input that is indicative of a selection of a feature that governs an appearance of a visual indication that indicates whether a computer program is executing on the computing device in a private mode, in which data generated by the computer program does not persist on the computing device;
presenting a query to a user requesting a user input selecting one or more features that define a visual indication showing whether an application executing on a user device is executing in a private mode, wherein the private mode is configured to prevent data associated with the application from persisting on the user device;
receiving the user input selecting the one or more features that define the visual indication, wherein the one or more features include a graphical object added to a user interface associated with the application or a change to content of the user interface presented only while the application is executing in the private mode;
obtaining, from the computer program, an image to be posted to an interface for display;
obtaining from the application an image to display to the user;
determining whether the computer program is executing in the private mode; in response to a determination that the computer program is executing in the private mode, posting, to the interface, the image with the visual indication, having the feature, overlaid thereon or positioned proximate thereto;
and associating the visual indication with the application, wherein when the application is executing in the private mode, the user interface including the visual indication is presented such that the visual indication overlays the image, thereby preventing the application from detecting the visual indication, and
and in response to a determination that the computer program is not executing in the private mode, posting, to the interface, the image without the visual indication.
wherein when the application is executing in a non-private mode, the user interface without the visual indication is presented.
3. The method of claim 1, wherein the feature is one of multiple features that are selected to define the visual indication.
(from claim 7): “…receiving the user input selecting the one or more features that define the visual indication…”
4. The method of claim 1, wherein by overlaying the visual indication on the image or positioning the visual indication proximate to the image, an appearance of the interface is changed without the visual indication being detectable by the computer program.
(from claim 7): “…the visual indication is presented such that the visual indication overlays the image, thereby preventing the application from detecting the visual indication…”
2. The method of claim 1, wherein the feature is a font, a location, a color, or a transparency.
8. The method of claim 7, comprising: presenting the query requesting the one or more features including at least two of: a font, a location, a color, a translucency, or a duration associated with the visual indication;
determining whether the application is executing in the private mode; and upon determining that the application is executing in the private mode, presenting at least two of: selected font, selected location, selected color, or selected translucency,
wherein a deviation from at least two of: the selected font, the selected location, the selected color, or the selected translucency indicates that the application is not executing in the private mode.
5. The method of claim 1, wherein the visual indication includes text or another image.
9. The method of claim 7, wherein the visual indication includes a text or an image.
6. The method of claim 1, wherein the method further comprises:
10. The method of claim 7, comprising: presenting the query requesting a duration associated with the visual indication;
receiving second input that is indicative of a selected duration;
receiving the user input selecting the one or more features indicating a selected duration;
determining whether the application is executing in the private mode;
and wherein when the computer program is executing in the private mode, the image is posted with the visual indication for the selected duration and then the visual indication is removed from the interface.
and upon determining that the application is executing in the private mode, presenting the visual indication lasting for the selected duration, wherein a deviation from the selected duration indicates that the application is not executing in the private mode.
7. The method of claim 1, further comprising: receiving second input that indicates the computer program is to execute in the private mode;
11. The method of claim 7, comprising: obtaining an indication to run the application in the private mode;
creating a space in memory in response to the private mode being established;
creating a private space in a memory associated with the user device when the private mode is established;
storing the data, if any, generated by the computer program while the computer program is executing in the private mode in the space;
storing the data of the application in the private space while the application is hosted in the private mode;
and terminating the space in response to a termination of the private mode.
and terminating the private space when the private mode terminates.
Claim Objections
Claims 6-8 are objected to because of the following informalities:
Claims 6 and 7 should be corrected as: “…receiving a second input…”
Claim 8 should be corrected as: “…data generated by the computer program is not ”
Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/01571651 to Kim et al. (hereinafter, “Kim”) in view of US 2018/02325341 to Dotan-Cohen et al. (hereinafter, “Dotan-Cohen”) and in further view of US 2013/0145448 to Newell (hereinafter, “Newell”).
As per claim 1: Kim discloses: A method performed by a computing device (a mobile terminal and a method of controlling a mode switching [Kim, ¶0003]), the method comprising: receiving input that is indicative of a selection of a feature that governs an appearance of a visual indication that indicates whether a computer program is executing on the computing device in a private mode (each of plurality of modes in the mobile device can include at least one dedicated application for that particular mode, wherein one of the modes is a private mode [Kim, ¶0125, 0128]; an indicator per mode is set or selected by a user to discriminate the plurality of modes [Kim, ¶0170, 0172]; the indicator can include an icon, an image, a letter font/color/size, etc. [Kim, ¶0173]), posted to an interface for display; determining whether the computer program is executing in the private mode (a screen processor 185 generates one integrated frame by combining and/or editing the frames received from the frame buffers and can then display an integrated dedicated screen including all the dedicated screens of a plurality of the operating systems (e.g., when implementing a plurality of the modes) [Kim, ¶0140); in response to a determination that the computer program is executing in the private mode, posting, to the interface, the image with the visual indication, having the feature (depending on the currently active mode, the associated icon to that mode is displayed [Kim, ¶0176]), (a mode indicator is just one example for discriminating among the modes, for example a database storage region or a user access authority may be used to discriminate the current operating mode (i.e. no visual indicator is displayed for a particular mode, such as a non-private mode) [Kim, ¶0170]).
Kim does not explicitly disclose the private mode as “configured to prevent data associated with the application from persisting on the user device”. However, Dotan-Cohen is directed to analogous art for facilitating in-private modes (IPM) in mobile computing devices [Dotan-Cohen, ¶0018]. Therefore, Dotan-Cohen discloses: wherein the private mode is configured to prevent data associated with the application from persisting on the user device (upon ending an IPM session, memory allocated to support the session is deleted [Dotan-Cohen, ¶0106]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate privacy-preserving functions to the improve the security of the private mode(s) in Kim, such as temporarily allocating memory space for storage of data used during an IPM session suggested in Dotan-Cohen. The temporary storage of any data used during a private mode in Kim would have prevented and/or mitigated any sensitive data from leaking.
Kim and Dotan-Cohen do not explicitly disclose, but Newell discloses: overlaid thereon or positioned proximate thereto (an icon overlay is used to distinguish applications in personal and work environments (“mode[s]”)[Newell, ¶0045]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the mode indicator of Kim in any manner known in the art with a reasonable expectation of success. Kim does not explicitly disclose, or limit, how the mode indicator is displayed. A person having ordinary skill in the art would have applied the mode identification concept of Newell as an overlay in Kim. An image overlay would not have interfered with the functions of the applications while enabling a user to clearly identify the operating mode.
As per claim 2: Kim in view of Dotan-Cohen and Newell disclose all limitations of claim 1. Furthermore, Kim discloses: wherein the feature is a font, a location, a color, or a transparency (“…each of a plurality of the modes can have a different one of a mode icon, a mode image, a background image, a background color/brightness, a letter font/color/size, a home screen picture (number of pages and page indicator included), an application arrangement structure (e.g., the number of applications included in one home screen, etc.), an application identifier, an LED color, an alarm sound such as a bell sound and the like, a keypad type (backlight color of keypad included), a mode switching key zone, a group identifier (described later) and the like.” [Kim, ¶0173]).
As per claim 3: Kim in view of Dotan-Cohen and Newell disclose all limitations of claim 1. Furthermore, Kim discloses: wherein the feature is one of multiple features that are selected to define the visual indication (a user can select or set the desired mode indicator per mode [Kim, ¶0172]; see also [Kim, ¶0173] for different mode features).
As per claim 5: Kim in view of Dotan-Cohen and Newell disclose all limitations of claim 1. Furthermore, Kim discloses: wherein the visual indication includes text or another image (a mode image, letters [Kim, ¶0173]).
As per claim 7: Kim in view of Dotan-Cohen and Newell disclose all limitations of claim 1. The motivation for incorporating Dotan-Cohen with Kim in claim 1 is also applicable in claim 7. Therefore, Dotan-Cohen discloses: further comprising: receiving second input that indicates the computer program is to execute in the private mode (receiving an indication to begin an IPM session [Dotan-Cohen, ¶0102]); creating a space in memory in response to the private mode being established (allocating a portion of resources on the user device to create an IPM session environment isolated from the normal operating environment of the user device [Dotan-Cohen, ¶0103]); storing the data, if any, generated by the computer program while the computer program is executing in the private mode in the space (the allocated portion of resources include memory [Dotan-Cohen, ¶0103]); and terminating the space in response to a termination of the private mode (upon receiving an indication to end the IPM session, deleting contents in the memory allocated to support the IPM session [Dotan-Cohen, ¶0106]).
Claims 8, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of US Dotan-Cohen in view of Newell and in further view of US 2023/0069789 to Koo et al. (hereinafter, “Koo”).
As per claim 8: Kim discloses: A non-transitory medium with instructions stored thereon that, when executed by one or more processors of a computing system, cause the computing system to perform operations comprising (implemented in software modules executable by a controller or processor [Kim, ¶0100]): determining whether a computer program is executing in a private mode (two modes are disclose: a private mode and a business mode [Kim, ¶0164]), (depending on the currently active mode, the associated icon to that mode is displayed [Kim, ¶0176]) (the icon is an indicator that discriminates the plurality of modes [Kim, ¶0172]); and in response to a determination that the computer program is not executing in the private mode, posting, to the interface, the content without the visual indication overlaid thereon (a mode indicator is just one example for discriminating among the modes, for example a database storage region or a user access authority may be used to discriminate the current operating mode (i.e. no visual indicator is displayed for a particular mode, such as a non-private mode) [Kim, ¶0170]).
Kim does not explicitly disclose “data generated by the computer program is not to persistent on the computing system”. However, Dotan-Cohen is directed to analogous art for facilitating in-private modes (IPM) in mobile computing devices [Dotan-Cohen, ¶0018]. Therefore, Dotan-Cohen discloses: data generated by the computer program is not to persistent on the computing system (upon ending an IPM session, memory allocated to support the session is deleted [Dotan-Cohen, ¶0106]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate privacy-preserving functions to the improve the security of the private mode(s) in Kim, such as temporarily allocating memory space for storage of data used during an IPM session suggested in Dotan-Cohen. The temporary storage of any data used during a private mode in Kim would have prevented and/or mitigated any sensitive data from leaking.
Kim and Dotan-Cohen do not explicitly disclose, but Newell discloses: overlaid thereon (an icon overlay is used to distinguish applications in personal and work environments (“mode[s]”)[Newell, ¶0045]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the mode indicator of Kim in any manner known in the art with a reasonable expectation of success. Kim does not explicitly disclose, or limit, how the mode indicator is displayed. A person having ordinary skill in the art would have applied the mode identification concept of Newell as an overlay in Kim. An image overlay would not have interfered with the functions of the applications while enabling a user to clearly identify the operating mode.
Kim, Dotan-Cohen, and Newell do not explicitly disclose, but Koo discloses: a given duration (a privacy mode indication is displayed for a predetermined length of time [Koo, ¶0067]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the mode indicator in Kim to display for a predetermined length of time, such as suggested in Koo, and improve usability of the applications in that mode. The indicator would have temporarily informed the user of the current mode and free the display space for improved usability of the applications.
As per claim 9: Kim in view of Dotan-Cohen, Newell, and Koo disclose all limitations of claim 8. Furthermore, Kim discloses: wherein the operations further comprise: receiving input that is indicative of a selection of a feature that governs an appearance of the visual indication that indicates whether the computer program is executing in the private mode (the indicator per mode is set or selected by the user, wherein the mode can by representative with different features [Kim, ¶0172, 0173]).
As per claim 12: Kim in view of Dotan-Cohen, Newell, and Koo disclose all limitations of claim 8. Furthermore, Kim discloses: wherein the operations further comprise: presenting, to a user, a query requesting that the user select or specify at least two features of the visual indication to be shown while the computer program is executing in the private mode (the indicator can have a letter font/color/size [Kim, ¶0173]).
As per claim 13: Kim in view of Dotan-Cohen, Newell, and Koo disclose all limitations of claim 2. Furthermore, Kim discloses: wherein the at least two features include a font, a location, a color, or a transparency (the indicator can have a letter font/color/size [Kim, ¶0173]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of US Dotan-Cohen, Newell, Koo and in further view of US 2014/0298478 to Kim et al. (hereinafter, “Kim’478”).
As per claim 14: Kim in view of Dotan-Cohen, Newell, and Koo disclose all limitations of claim 12. Kim, Dotan-Cohen, Newell, and Koo do not explicitly disclose, but Kim’478 discloses: wherein a deviation from the at least two features indicates, to the user, that the computer program is not executing in the private mode (a user can configure multiple setting information for a tag to identify a private page [Kim’478, ¶0100]; the configured tag is displayed on the private page such that the user “may intuitionally recognize whether a current page is a normal page or a private page” [Kim’478, ¶0103] – therefore, multiple features may be distinguished in tag to identify the mode).
Thus, it would have been obvious to person having ordinary skill in the art before the effective filing date of the claimed invention to enable multiple customizations of the mode indicators in Kim, such that a mode can be intuitionally recognized by the user. This modification would have improved the security of the system by allowing users to personally define a visual mode indicator they are best accustomed with to determine if a private mode for an application is active before continuing application usage.
Claims 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Dotan-Cohen.
As per claim 15: Kim discloses: A method comprising (a mobile terminal and a method of controlling a mode switching [Kim, ¶0003]): presenting, to a user, a query requesting that the user select or specify a feature that governs an appearance of a visual indication that indicates whether a computer program is executing on a computing device in a private mode, (each of plurality of modes in the mobile device can include at least one dedicated application for that particular mode, wherein one of the modes is a private mode [Kim, ¶0125, 0128]; an indicator per mode is set or selected by a user to discriminate among the plurality of modes [Kim, ¶0170, 0172]; the indicator can include an icon, an image, a letter font/color/size, etc. [Kim, ¶0173]); and in response to a determination that the computer program is executing in the private mode, causing display of the visual indication, with the feature, such that the user is visually notified of the computer program executing in the private mode (depending on the current mode, the associated icon to that mode is displayed [Kim, ¶0176]).
Kim does not explicitly disclose “in which data generated by the computer program does not persist on the computing device”. However, Dotan-Cohen is directed to analogous art for facilitating in-private modes (IPM) in mobile computing devices [Dotan-Cohen, ¶0018]. Therefore, Dotan-Cohen discloses: in which data generated by the computer program does not persist on the computing device (upon ending an IPM session, memory allocated to support the session is deleted [Dotan-Cohen, ¶0106]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate privacy-preserving functions to the improve the security of the private mode(s) in Kim, such as temporarily allocating memory space for storage of data used during an IPM session suggested in Dotan-Cohen. The temporary storage of any data used during a private mode in Kim would have prevented and/or mitigated any sensitive data from leaking when exiting the mode.
As per claim 17: Kim in view of Dotan-Cohen discloses all limitations of claim 15. The motivation for incorporating Dotan-Cohen with Kim in claim 15 is also applicable in claim 17. Therefore, Kim in view of Dotan-Cohen discloses: instantiating a procedure that utilizes a local resource of the computing device to isolate the data generated by the computer program (a method, embodied as computer instructions, performed by an IPM handler to isolate an allocated portion of resources on a user device to provide an IPM session environment [Dotan-Cohen, ¶0101, 0103]).
As per claim 18: Kim in view of Dotan-Cohen discloses all limitations of claim 17. The motivation for incorporating Dotan-Cohen with Kim in claim 15 is also applicable in claim 18. Therefore, Kim in view of Dotan-Cohen discloses: further comprising: in response to a determination that the computer program has switches to execute in a non-private mode, terminating the procedure that utilizes the local resource of the computing device to isolate the data generated by the computer program (upon receiving an indication to end the IPM session, deleting contents in the memory allocated to support the IPM session [Dotan-Cohen, ¶0106]); and removing the visual indication from an interface of the computer program (each of the plurality of modes are discriminated through different examples, wherein multiple disclosed examples exclude the use of a visual indicator – e.g., switching from a mode utilizing the visual mode indicator to another mode not utilizing the visual mode indicator [Kim, ¶0170, 0173]).
Allowable Subject Matter
Claims 16, 19, and 20 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4, 6, 10, and 11 are not currently rejected under any prior arts.
The following is a statement of reasons for the indication of allowable subject matter:
Kim’165 (US 2012/0157165) and Kim’478 (US 2014/0298478) are considered the most relevant prior arts to the claimed invention. According to [Kim’165, ¶0172], an indicator to discriminate modes on a mobile terminal can be set or selected by a user. The mode can be an icon, background image, a letter font/color/size, or the like [Kim’165, ¶0173]. Similarly, [Kim’478, ¶0100, 0103; Fig. 3(340), Fig. 4B] also enables a user to customize an input tag to intuitionally recognize private pages of an application from normal pages of applications. A private page is analogous to a container which is created in a security mode to prevent objects within the private page from moving to normal pages [Kim’478, ¶0092-0094]. However, both Kim’165 and Kim’478 do not disclose, teach, or reasonably suggest the limitations recited in claims 4, 6, 10, 11, 16, 19, and 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10,038,727: Confidential status indicators provide visual indication to a user that a current communication session is confidential. The indicators include visual modifications, such as changes to colors, font, size, graphics to graphical elements within a graphical user interface. See col. 13, lines 51-65.
US 2018/0137264: A visual indication of a current privacy mode of a vehicle is displayed to a client computing device. See ¶0111.
US 2014/0283135: The background image or textual indication are used to provide indication that a device is operating in a secondary access mode. See ¶0014.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT B LEUNG whose telephone number is (571)270-1453. The examiner can normally be reached Mon - Thurs: 10am-7pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JUNG KIM can be reached on 571-272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
1 Cited in IDS filed April 5, 2025.
