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
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent Nos. 12,323,670; 11,812,109; and 11,310,561. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of patent 12,323,670 includes the additional limitations of "a speaker configured to output sound when the incoming communication is received" and “without outputting the sound by the speaker”. Accordingly, instant application’s claim 1 is broader than patented claim 1, therefore, obvious over patent claim 1.
Similar analysis applies to the claims 1 of issued patents 11,812,109 and 11,310,561 in the chain of continuity.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujimoto, USPGPUB 2014/0373102 (hereinafter “Fujimoto”). Fujimoto reference is of record and is cited on the IDS received on 05/14/2025
Regarding claim 1, Fujimoto discloses a mobile terminal (Figs. 1, 5, 14, 16, 18, smartphone 200/200A) configured to send information to an external display apparatus (Figs. 1, 5, 16, ¶¶ [81]-[98], [136], Television 100), the mobile terminal comprising:
a communication interface configured to receive incoming communication (Fig. 14, 205);
a sensor configured to detect whether the mobile terminal is placed with a screen of the mobile terminal facing down or not while the mobile terminal is away from a user’s hand (As shown in Figs. 1 and 18 ¶ [86]); and
a processor programmed to communicate with the external display apparatus television (201 / 206, ¶¶ [82]- [87]),
wherein the processor is configured to:
in response to receiving the incoming communication while the mobile terminal is placed with the screen facing down, change the information related to the incoming communication based on the sensor detecting that the mobile terminalis placed with the screen facing down (Fig. 5, S5, and corresponding description; Fig. 16, S5, and corresponding description); and
send the changed information related to the communication to the incoming communication to the external display apparatus (Fig. 5, S5, and corresponding description; Fig. 16, S5, and corresponding description).
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R MARANDI whose telephone number is (571)270-1843. The examiner can normally be reached Monday-Friday 8-7 ET flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan J Flynn can be reached at 571-272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R MARANDI/Primary Examiner, Art Unit 2421
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