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 .
DETAILED ACTION
Claims 21-40 are pending.
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 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/7/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Nonstatutory 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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Pat. 12,289,353. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are directed to substantially similar methods, systems, and media. For example, contrast instant claim 21 and claim 1 of ‘353:
‘353 Claim 1
Instant claim 21
A method comprising:
A method comprising
obtaining an indication of a collaboration control for a collaborator of a document, the collaboration control indicating an edit permission for a document layer of a graphical design of the document in relation to the collaborator;
generating a set of collaboration control data for the document, the set of collaboration control data including the collaboration control indicating the edit permission for the document layer of the graphical design of the document in relation to the collaborator;
based on an input, by the collaborator, to the document layer of the graphical design of the document, determining, using the set of collaboration control data, whether to enable an edit to the document layer of the graphical design of the document; and
based on an input, by a collaborator of a document, to a document layer of a graphical design of the document, determining, using an edit permission for the collaborator, whether to enable an edit to the document layer of the graphical design of the document;
in accordance with determining to disable the edit to the document layer of the graphical design of the document, initiating a new document layer of the graphical design in the document in which the collaborator is enabled to provide edits.
and in accordance with determining to disable the edit to the document layer of the graphical design of the document, initiating a new document layer of the graphical design in the document in which the collaborator is enabled to provide edits.
Further, remaining instant claims 22-40 correspond with subject matter disclosed by claims 2-17 of ‘353. Therefore, if a patent were to be granted, it may result in an improper timewise extension of the “right to exclude” of the subject matter and may lead to possible harassment by multiple assignees.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21, 24-29, 31-33, 35-37, 39, and 40 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Wang et al (US Pub. No. 2010/0070882), hereafter, “Wang.”
As to claim 21, Wang discloses a method comprising:
based on an input, by a collaborator of a document, to a document layer of a graphical design of the document, determining, using an edit permission for the collaborator, whether to enable an edit to the document layer of the graphical design of the document ([0045]-[0047], particularly, “In this step, the selecting a layer of the page by a user may include: the docbase management system allocates a layer other than layers allocated to other users to the user; or the user establishes a new layer; or the user initiatively selects a layer of the page which is existing in the docbase management system and is allowed to be edited.” See also [0071]); and
in accordance with determining to disable the edit to the document layer of the graphical design of the document, initiating a new document layer of the graphical design in the document in which the collaborator is enabled to provide edits ([0045]-[0047], particularly, “the docbase management system allocates a layer other than layers allocated to other users to the user” and further [0071], particularly, “Suppose UserA selects to edit layer LayerMIndex of page M, then UserB is prohibited to select layer LayerMIndex of page M when selecting a layer for editing; instead, UserB has to select another layer of page M to edit or create a new layer to edit, or the docbase management system allocates another layer to UserB.”).
As to claims 32 and 37, they are rejected by a similar rationale by that set forth in claim 21’s rejection.
As to claim 24, Wang discloses generating a set of collaboration control data for the document, wherein the set of collaboration control data includes, for the document layer of the graphical design of the document, collaboration controls corresponding with a plurality of collaborators ([0047]-[0049], see also [0071]-[0072]).
As to claim 25, Wang discloses the set of collaboration control data includes, for the document layer of the graphical design of the document, an indication of ownership of the document layer of the graphical design ([0047]-[0049], see also [0071]-[0072]).
As to claim 26, Wang discloses the set of collaboration control data includes collaboration controls for collaborators for a plurality of document layers of the graphical design of the document ([0047]-[0049], see also [0071]-[0072]).
As to claims 27 and 35, Wang discloses the input comprises an addition of an object to the document layer of the graphical design of the document, a modification of an object in the document layer of the graphical design, or a removal of an object in the document layer of the graphical design ([0047]-[0049], see also [0071]-[0072]).
As to claim 28, Wang discloses the input comprises an access of the document layer of the graphical design ([0047]-[0049], see also [0071]-[0072]).
As to claims 29 and 36, Wang discloses determining whether to enable the edit to the document layer of the graphical design of the document comprises: accessing a set of collaboration control data for the document; based on a collaboration control indicating the edit permission, in the set of collaboration control data, for the collaborator and that corresponds with the document layer of the graphical design, determining that editing is disabled ([0047]-[0049], see also [0071]-[0072]).
As to claim 31, Wang discloses obtaining an indication of a collaboration control for the collaborator of the document, the collaborator control indicating the edit permission for the document layer of the graphical design of the document in relation to the collaborator ([0047]-[0049], see also [0071]-[0072]).
As to claim 33, Wang discloses Implementing the collaboration control in association with the collaborator for the particular layer of the graphical design of the document comprises including an indication of the collaboration control and an indication of the collaborator in metadata associated with the particular layer of the graphical design of the document ([0047]-[0049], see also [0071]-[0072]).
As to claim 39, Wang discloses detecting an input, by the collaborator of the document, in association with another document layer of the graphical design of the document; referencing another collaboration control designated for the collaborator in association with the another document layer of the graphical design of the document, the another collaboration control indicating the collaborator is enabled to provide edits in association with the another document layer of the graphical design of the document; and based on the another collaboration control, permitting a new collaborator- provided edit corresponding with the another document layer of the graphical design of the document ([0047]-[0049], see also [0071]-[0072]).
As to claim 40, Wang discloses detecting an input, by another collaborator of the document, in association with the document layer of the graphical design of the document; referencing another collaboration control designated for the another collaborator in association with the document layer of the graphical design of the document, the another collaboration control indicating the another collaborator is enabled to provide edits in association with the document layer of the graphical design of the document; and based on the another collaboration control, permitting a new collaborator- provided edit corresponding with the document layer of the graphical design of the document ([0047]-[0049], see also [0071]-[0072]).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 22-23 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Workiva (Workiva. “Advanced Permissions.” WorkivaSupport, 22 May 2023, https://support.workiva.com/hc/en-us/articles/360036000311-Advanced-permissions. Accessed 5 Oct. 2023. Pages 1-5; cited on IDS).
As to claims 22 and 34, Wang discloses the parent claim but does not disclose providing, for display via a permission control panel, a set of collaborators and a corresponding set of collaborators control selectors used to indicate edit permissions for a document layer of the graphical design of the document. However, Workiva discloses providing, for display via a permission control panel, a set of collaborators and a corresponding set of collaborators control selectors used to indicate edit permissions for a document layer of a graphical design of the document (Pages 2-3, screenshot, Vertical columns (e.g. “Kathleen Karlsen” among others reading on “a set of collaborators”; page 2’s screenshot more clearly indicates this and that it is not limited to single users, e.g. “Enter the user or group name into the text box and select them from the list.”) “Editor” status reading on claimed “edit permissions for a document layer” and “You can click a column or row header to select the entire row or column and assign permissions to the entire selection.”)
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to combine the teachings of Wang and Workiva in order to provide greater control and awareness to users of the system so that collaborative control over documents may be more efficiently handled.
As to claim 23, the teachings of Wang and Workiva as combined for the same reasons set forth in claim 22’s rejection further disclose obtaining an indication of a collaboration control for the collaborator based on a selection of the collaboration control via a collaborator control selector of the permission control panel (Wang, [0047]-[0049], see also [0071]-[0072] and Workiva, Page 3, particularly, “You can adjust individual section permissions for one user by selecting a cell and clicking a permission icon in the toolbar, or right-clicking a cell and selecting a permission level from the menu. You can also double-click a cell to cycle through the four permission levels.”)
Claim 30 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over DeMaris et al (US Pub. No. 2017/0285901; cited on IDS), hereafter, “DeMaris.”
As to claim 30 and 38, Wang discloses the parent claim but does not disclose providing a notification indicating that editing is disabled for the document layer of the graphical design. However, DeMaris discloses providing a notification indicating that editing is disabled for the document layer of the graphical design ([0029], particularly, “Thus, if the user 104 does not have the required permissions, and tries to edit the metadata corresponding review status with drag and drop input, the computing device 102 may present a notification that the user 104 does not have permission to make this change (and the update may be denied).”) Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to combine the teachings of Wang with DeMaris in order to provide a system that can keep user apprised of their privileges in a system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J DAILEY whose telephone number is (571)270-1246. The examiner can normally be reached 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Umar Cheema can be reached on 571-270-3037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J DAILEY/ Primary Examiner, Art Unit 2458
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