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 non-statutory 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 non-statutory 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 non-statutory 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, 2, 4, 9, 10, 12, 17 and 18 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 6, 9, 13 and 16 of U.S. Patent No. 12,301,640. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is anticipated by claim 1 of the ‘640 Patent.
Claim 2 is anticipated by claim 1 of the ‘640 Patent.
Claim 4 is anticipated by claim 6 of the ‘640 Patent.
Claim 9 is anticipated by claim 9 of the ‘640 Patent.
Claim 10 is anticipated by claim 13 of the ‘640 Patent.
Claim 12 is anticipated by claim 6 of the ‘640 Patent.
Claim 17 is anticipated by claim 16 of the ‘640 Patent.
Claim 18 is anticipated by claim 16 of the ‘640 Patent.
Claims 3, 5-8, 11, 13-16, 19 and 20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 6, 9, 13 and 16 of U.S. Patent No. 12,301,640 in view of U.S. Patent Application Publication 2020/0302817 to Williams et al.
The claimed invention of Patent ‘640 do not disclose all of the claimed limitations of claims 3, 5-8, 11, 13-16, 19 and 20.
Williams et al. ‘817 teach:
As concerns claims 3, 11 and 19, the invention of claims 1, 9 and 17, further comprising: receiving additional inputs to capture additional portions of the virtual whiteboard (0148-0151-lesson plan, input file; 0151-shared whiteboard documents; lesson plan with multiple slides, documents); for each additional captured portion of the virtual whiteboard: generating a corresponding presentation slide for the presentation based on the respective additional captured portion of the virtual whiteboard (0148-0149-lesson content; 0151-slides); and inserting an additional link to the virtual whiteboard into the corresponding presentation slide (0150-lesson content…includes links to content; 0187-reference to a URL points to shared whiteboard document; Fig. 5, get links/urls; Fig. 11; Fig. 30).
As concerns claims 5, 13 and 20, the invention of claims 1, 9 and 17, further comprising: joining a virtual conference hosted by a virtual conference provider (0154-acess lesson content, presentation; Fig. 1, 3 and 4); presenting the presentation slide (0154-acess lesson content, presentation; 0161); receiving a selection of the link to the virtual whiteboard (0150-links to content accessible); in response to the selection of the link, providing access to the virtual whiteboard within the presentation slide (0150-links to content accessible, lesson plan; 0152-data accessible over network; 0153-access shared whiteboard documents; 0157-links; 0161).
As concerns claim 6 and 14, the invention of claims 5 and 13, further comprising: receiving an input to interact with the virtual whiteboard via a presentation slide (0161-retrieve content from links); and enabling user interaction with the virtual whiteboard via the presentation slide (0161-retrieve content from links, lesson plan with shared whiteboard/documents).
As concerns claims 7 and 15, the invention of claim 1 and 9, further comprising: displaying a graphical user interface ("GUI") comprising a viewport providing a view of the virtual whiteboard (Fig. 20C, 21, 22 and 26-30), representations of one or more presentation slides (Fig. 20C, 21, 22 and 26-30), and an interactive element to capture a visible portion of the virtual whiteboard (Fig. 20C, 21, 22 and 26-30; 0051; 0095; 0101-0103; 0115); generating a representation of the presentation slide (Fig. 20C, 21, 22 and 26-30; 0150); and updating the GUI to include the representation of the presentation slide (Fig. 20C, 21, 22 and 26-30; 0051; 0147; 0150); and wherein generating the presentation slide is responsive to receiving a selection of the interactive element (Fig. 20C, 21, 22 and 26-30; 0051; 0115-click on lesson step).
As concerns claims 8 and 16, the invention of claims 7 and 15, further comprising: receiving, via the GUI, one or more user inputs corresponding to the representations of the one or more presentations slides (Fig. 20C, 21, 22 and 26-30); and changing an ordering of the one or more presentations slides based on the one or more user inputs (Fig. 20C, 21, 22 and 26-30; 0115-click on lesson step for view; 0147-arrange lesson steps).
It would have been obvious to provide the claimed invention of Patent ‘640 with additional slides on an interface as taught by Williams et al. ‘817, in order to provide an expanded presentation.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 9-12 and 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite creating a slide presentation that falls under the abstract idea of “Certain methods of organizing human activity” (managing interactions between people (including social activities, teaching and following rules of instruction) (see MPEP 2106.04 (a))). Claims 1-4 are directed to a method; Claims 9-12 are directed to a machine; and Claims 17-19 are directed to a manufacture (Step 1).
The claims recite “receive an input to capture a portion of a virtual whiteboard” (this can be accomplished by a person looking at the virtual whiteboard and memorizing it”);
“generating a presentation slide for a presentation based on captured portion of the virtual whiteboard” (this can be accomplished by a person writing down on a piece of paper (“slide”) what they memorized from what was written on the virtual whiteboard)
“inserting a link to the virtual whiteboard into the presentation” (this can be accomplished by a person writing down a URL of the virtual whiteboard onto the piece of paper (slide)).
Thus the claims are directed to an abstract idea of “Certain methods of organizing human activity” (managing interactions between people (including social activities, teaching and following rules of instruction). (Step 2A).
This judicial exception is not integrated into a practical application because the claims do not provide an improvement in the functioning of a computer or an improvement to other technology or technical field. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims do not recite anything beyond generic computer elements and there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper (Step 2B).
See MPEP 2106.04 (a)
2. Performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that "with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper". 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication 2020/0302817 to Williams et al.
As concerns claim 1, a method comprising: receiving an input to capture a portion of a virtual whiteboard (0148-0151-lesson plan, input file; 0151-shared whiteboard documents);
generating a presentation slide (0148-0149-lesson content; 0151-slides) for a presentation based on captured portion of the virtual whiteboard (0151-shared whiteboard documents; Fig. 5, 805 shared whiteboard; Fig. 7, 370-shared whiteboard documents; Fig. 11);
inserting a link (0150-lesson content…includes links to content) to the virtual whiteboard into the presentation (0150-lesson content…links to content; Fig. 5, get links/urls; Fig. 11; Fig. 30).
As concerns claim 9, a system comprising: a non-transitory computer-readable medium (Fig. 1; 0054);
a communications interface (Fig. 1; 0054); and one or more processors (Fig. 1; 0054) communicatively coupled to the non-transitory computer-readable medium and the communications interface, the one or more processors configured to execute processor-executable instructions stored in the non- transitory computer-readable medium to:
receive an input to capture a portion of a virtual whiteboard (0148-0151-lesson plan, input file; 0151-shared whiteboard documents);
generate a presentation slide (0148-0149-lesson content; 0151-slides) for a presentation based on captured portion of the virtual whiteboard (0151-shared whiteboard documents; Fig. 5, 805 shared whiteboard; Fig. 7, 370-shared whiteboard documents; Fig. 11);
insert a link (0150-lesson content…includes links to content) to the virtual whiteboard into the presentation (0150-lesson content…links to content; Fig. 5, get links/urls; Fig. 11; Fig. 30).
As concerns claim 17, a non-transitory computer-readable medium comprising processor-executable instructions configured to cause a processor (Fig. 1; 0054) to:
receive an input to capture a portion of a virtual whiteboard (0148-0151-lesson plan, input file; 0151-shared whiteboard documents);
generate a presentation slide (0148-0149-lesson content; 0151-slides) for a presentation based on captured portion of the virtual whiteboard (0151-shared whiteboard documents; Fig. 5, 805 shared whiteboard; Fig. 7, 370-shared whiteboard documents; Fig. 11);
insert a link (0150-lesson content…includes links to content; 0187-reference to a URL points to shared whiteboard document) to the virtual whiteboard into the presentation (0150-lesson content…links to content; Fig. 5, get links/urls; Fig. 11; Fig. 30).
As concerns claim 2, 10 and 18, the invention of claims 1, 9 and 17 wherein the link comprises information indicating a location of the captured portion of the virtual whiteboard within the virtual whiteboard (0150-lesson content…includes links to content; 0187-reference to a URL points to shared whiteboard document; points to particular document of multiple documents that are on whiteboard).
As concerns claims 3, 11 and 19, the invention of claims 1, 9 and 17, further comprising: receiving additional inputs to capture additional portions of the virtual whiteboard (0148-0151-lesson plan, input file; 0151-shared whiteboard documents; lesson plan with multiple slides, documents); for each additional captured portion of the virtual whiteboard: generating a corresponding presentation slide for the presentation based on the respective additional captured portion of the virtual whiteboard (0148-0149-lesson content; 0151-slides); and inserting an additional link to the virtual whiteboard into the corresponding presentation slide (0150-lesson content…includes links to content; 0187-reference to a URL points to shared whiteboard document; Fig. 5, get links/urls; Fig. 11; Fig. 30).
As concerns claims 4 and 12, the invention of claims 1 and 9, further comprising: generating the link corresponding to a selected portion of the virtual whiteboard (0160-0161); and associating the link with the presentation slide (0160-0161-change view to show retrieved content).
As concerns claims 5, 13 and 20, the invention of claims 1, 9 and 17, further comprising: joining a virtual conference hosted by a virtual conference provider (0154-acess lesson content, presentation; Fig. 1, 3 and 4); presenting the presentation slide (0154-acess lesson content, presentation; 0161); receiving a selection of the link to the virtual whiteboard (0150-links to content accessible); in response to the selection of the link, providing access to the virtual whiteboard within the presentation slide (0150-links to content accessible, lesson plan; 0152-data accessible over network; 0153-access shared whiteboard documents; 0157-links; 0161).
As concerns claim 6 and 14, the invention of claims 5 and 13, further comprising: receiving an input to interact with the virtual whiteboard via a presentation slide (0161-retrieve content from links); and enabling user interaction with the virtual whiteboard via the presentation slide (0161-retrieve content from links, lesson plan with shared whiteboard/documents).
As concerns claims 7 and 15, the invention of claim 1 and 9, further comprising: displaying a graphical user interface ("GUI") comprising a viewport providing a view of the virtual whiteboard (Fig. 20C, 21, 22 and 26-30), representations of one or more presentation slides (Fig. 20C, 21, 22 and 26-30), and an interactive element to capture a visible portion of the virtual whiteboard (Fig. 20C, 21, 22 and 26-30; 0051; 0095; 0101-0103; 0115); generating a representation of the presentation slide (Fig. 20C, 21, 22 and 26-30; 0150); and updating the GUI to include the representation of the presentation slide (Fig. 20C, 21, 22 and 26-30; 0051; 0147; 0150); and wherein generating the presentation slide is responsive to receiving a selection of the interactive element (Fig. 20C, 21, 22 and 26-30; 0051; 0115-click on lesson step).
As concerns claims 8 and 16, the invention of claims 7 and 15, further comprising: receiving, via the GUI, one or more user inputs corresponding to the representations of the one or more presentations slides (Fig. 20C, 21, 22 and 26-30); and changing an ordering of the one or more presentations slides based on the one or more user inputs (Fig. 20C, 21, 22 and 26-30; 0115-click on lesson step for view; 0147-arrange lesson steps).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892. US Patent Application Publication 2019/0303880 to Hashimoto et al. disclose: 0214-converting image of whiteboard screen into a file for sharing; 0267-saves PDF file; 0093-URL assigned to whiteboard; 0094-display locations of whiteboard; 0046; 0051.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B WALSH whose telephone number is (571)272-7063. The examiner can normally be reached 7:30-3:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher L Parry can be reached at 571-272-8328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN B WALSH/Primary Examiner, Art Unit 2451
Prosecution Insights