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 .
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 1-3, 5, 7, 8, 14 and 17 of U.S. Patent No. 12292300 in view of MacGougan et al. (PGPUB Document No. US 2016/0091323). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
The table below shows the correspondence between claim 1 of the ‘494 application and claims 1 and 8 of the ‘300 patent.
‘494 Application
‘300 Patent
(Claim 1)
A method comprising:
receiving, at a first device, location data
generating, for concurrent display at an interface of the first device, a content item and a map overlay over at least a portion of the content item, wherein the map overlay comprises a map component depicting a route of the vehicle to a destination based on the location data;
and based at least in part on determining that the location of the second device corresponding to the vehicle is within a threshold distance from the destination,
automatically adjusting a transparency of the map component from a first level of transparency to a second level of transparency that is less than the first level of transparency
such that pixels of the map component are prominently displayed against pixels of the content item displayed concurrently with the map overlay at the interface of the first device.
(Claim 1)
A method for…location data corresponding to a current location of the device;
generating for display, at a first level of transparency, a map overlay concurrently displayed over the content item at the device, wherein the map overlay comprises a depiction of at least a portion of a route and a first location of the device;
(Claim 8)
determining whether the current location is within a threshold distance from the respective reference location of a direction of the plurality of directions; and in response to determining that the current location is within the threshold distance from the respective reference location,
(Claim 1)
and automatically adjusting the transparency of the map component depicting the directional change to a third level of transparency less than the second level of transparency such that pixels of the map component depicting the directional change are prominently displayed against the pixels of the content item displayed concurrently with the map overlay at the device.
(Claim 1)
such that pixels of the map component depicting the directional change are prominently displayed against the pixels of the content item displayed concurrently with the map overlay at the device.
However, the ‘300 patent does not expressly teach but MacGougan teaches the location data corresponding to a location of a second device different from the first device, wherein the second device corresponds to a vehicle (MacGougan teaches the navigation device being a smartphone that is different from the vehicle (MacGougan: 0026)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the ‘494 application such as to implement the navigation setup of MacGougan, because this enable an added level of portability wherein the navigation devices are not confined within a vehicle.
The table below shows the correspondences between claims 2-10 of the ‘494 application and the corresponding claims of the ‘300 patent.
‘494
2
3
4
5
6
7
8
9
10
‘300
2
1
1
7
17
14
5
3
1
Claims 11-20 of the ‘494 patent are corresponding system claims to claims 1-10 of the ‘494 patent. Therefore, the claims of the ‘300 patent that correspond to claims 1-10 of the ‘494 patent similarly applies to claims 11-20 of the ‘494 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 7 of U.S. Patent No. 12292300 in view of in view of MacGougan. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
The table below shows the correspondence between claim 1 of the ‘494 application and claim *** of the ‘818 patent.
‘494 Application
‘818 Patent
(Claim 1)
A method comprising:
receiving, at a first device, location data
generating, for concurrent display at an interface of the first device, a content item and a map overlay over at least a portion of the content item, wherein the map overlay comprises a map component depicting a route of the vehicle to a destination based on the location data;
and based at least in part on determining that the location of the second device corresponding to the vehicle is within a threshold distance from the destination,
automatically adjusting a transparency of the map component from a first level of transparency to a second level of transparency that is less than the first level of transparency
such that pixels of the map component are prominently displayed against pixels of the content item displayed concurrently with the map overlay at the interface of the first device.
(Claim 1)
A method for… receiving, by the mapping application, location data from a global-positioning system corresponding to a current location
generating for display, by a mapping application, while concurrently displaying content unrelated to the mapping application, the map overlay over the
displayed content, the map overlay depicting at least a portion of a route,
(Claim 7)
determining whether the current location is within a threshold distance from the respective reference location of a direction in the plurality of directions; and in response to determining that the current location is within the threshold distance from the respective reference location,
(Claim 1)
automatically adjusting the transparency of the map component depicting the required directional change to a third level of transparency less than the second level of transparency
(Claim 1)
such that pixels of the map component depicting the required directional change are prominently displayed against the pixels of the content displayed concurrently with the map overlay.
However, the ‘818 patent does not expressly teach but MacGougan teaches the location data corresponding to a location of a second device different from the first device, wherein the second device corresponds to a vehicle (MacGougan teaches the navigation device being a smartphone that is different from the vehicle (MacGougan: 0026)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the ‘494 application such as to implement the navigation setup of MacGougan, because this enable an added level of portability wherein the navigation devices are not confined within a vehicle.
The table below shows the correspondences between claims 2-10 of the ‘494 application and the corresponding claims of the ‘300 patent.
‘494
2
3
4
5
6
7
8
9
10
‘818
1
1
1
6
6
3
4
2
1
Claims 11-20 of the ‘494 patent are corresponding system claims to claims 1-10 of the ‘494 patent. Therefore, the claims of the ‘818 patent that correspond to claims 1-10 of the ‘494 patent similarly applies to claims 11-20 of the ‘494 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H Chu whose telephone number is (571)272-8079. The examiner can normally be reached M-F: 9:30 - 1:30pm, 3:30-8:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel F Hajnik can be reached at (571) 272-7642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H CHU/Primary Examiner, Art Unit 2616
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