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 .
Election/Restrictions
NO restrictions warranted at applicant’s time of filing for CONtinuation.
Priority
This application is a CONtinuation, and applicant claims domestic priority under 35 USC 120 to non – provisional application # 18/156248, filed on 01/18/2023, now US PAT # 12388832.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/15/2025, the submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Applicant’s drawings filed on 07/15/2025 have been inspected and is in compliance with MPEP 608.02.
Specification
Applicant’s specification filed on 07/15/2025 has been inspected and is in compliance with MPEP 608.01.
Claim Objections
NO claim objections warranted at applicant’s time of filing for CONtinuation.
Claim Interpretation – 35 USC 112th f
It is in the examiner’s opinion that claim[s] 1 – 20 do not invoke means for or step plus functional claim language under the meaning of the statute.
Claim Rejections - 35 USC § 112
NO rejections warranted at applicant’s time of filing for CONtinuation.
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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim[s] 1 – 5, 7 – 11, 13, 15, 17 – 20 are rejected on the ground of non-statutory double patenting as being unpatentable over claim[s] 1 – 14, 16 - 20 of U.S. Patent No.12388832 [reference patent].
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the application is the same or similar in scope, and is not distinct in any manner:
Managing process that manages a contact list on a client device that allows the user to control of access to its contacts lists, the process includes actions based on a reply to a received request to access the user contacts list. The process displays a contact lists selection options on the client device, where the selection or control module allows for multiple selections for multiple controls that allow for the contact list information to be used by a requesting network service.
Also, see the table below for claim – by – claim comparison.
Pending US Application # 19/270311
US PAT # 12388832 (reference patent)
1. A method comprising:
selecting an application from a plurality of applications stored on a computing device;
sending a request to a remote server to initiate the application on the computing device;
receiving a request from the remote server to access a contact list stored on the computing device; and
based on receiving the request from the remote server:
causing a presentation of contact access options on the computing device;
receiving a user selection to allow access to a set of contacts on the contact list;
assigning use control rules to the set of contacts, each use control rule specifying at least one remote server action limiting use of contact information for a respective contact of the set of contacts, at least one use control rule of the use control rules requiring the remote server to delete corresponding contact information on termination of the application; and
sending a response to the remote server allowing access to the set of contacts.
1. (Currently Amended) A method for a computing device, comprising:
selecting an application from a plurality of applications stored on the computing device, the application configured to communicate with contacts on a contact list stored on the computing device through a remote server;
sending a request to the remote server to initiate the application on the computing device;
receiving a request from the remote server to access the contact list stored on the computing device;
in response to receiving the request from the remote server, initiating a user interface process on the computing device, the user interface process operating locally on the computing device, wherein the user interface process comprising:
presenting a user interface window on a display of the computing device;
presenting contact access options on the user interface window;
receiving user selections to allow remote server access to a set of contacts on the contact list;
assigning use control rules to the set of contacts, each use control rule specifying at least one remote server action limiting use of contact information for a respective contact of the set of contacts, at least one use control rule of the use control rules requiring the remote server to delete corresponding contact information on termination of the application; and
sending a response to the remote server allowing access to the set of contacts.
2. The method of claim 1, further comprising:
assigning an access level for each contact in the set of contacts, the access level specifying the contact information accessible by the remote server.
2. (Currently Amended) The method of claim 1, wherein the user interface process further comprises:
comprising: assigning an access level for each contact in the set of contacts, the access level specifying the contact information accessible by the remote server.
3. The method of claim 1, wherein the contact information comprises a set of fields including at least one of a contact full name, a contact email address, a contact home address, a contact phone number, and contact personal details.
3. (Currently Amended) The method of claim 1, wherein the contact information comprises a set of fields including at least one of a contact full name, a contact email address, a contact home address, a contact phone number, and contact personal details.
4. The method of claim 3, further comprising:
prohibiting remote server access to contacts not included in the set of contacts.
4. (Original) The method of claim 3, further comprising:
prohibiting remote server access to contacts not included in the set of contacts.
5. The method of claim 2, wherein the set of contacts includes no contacts on the contact list.
5. (Original) The method of claim 2, wherein the set of contacts includes no contacts on the contact list.
7. The method of claim 1, further comprising:
presenting the contact list on the computing device; and
presenting at least one access level selection option for each contact on the contact list.
6. (Currently Amended) The method of claim 1, wherein the user interface process further comprises:
comprising: presenting the contact list on the user interface window; and presenting at least one access level selection option for each contact on the contact list.
8. The method of claim 1, wherein at least one-use control rule of the use control rules specifies allowable remote service operations involving corresponding contact information.
9. (Currently Amended) The method of claim 1, wherein at least one use control rule of the use control rules specifies allowable remote service operations involving corresponding contact information.
9. The method of claim 1, further comprising:
presenting the contact list on the computing device; and
presenting at least one-use control rule selection option for each contact in the set of contacts.
10. (Currently Amended) The method of claim 1, wherein the user interface process further comprises: comprising: presenting the contact list on the user interface window; and presenting at least one use control rule selection option for each contact in the set of contacts.
10. The method of claim 1, further comprising adding a new contact to the set of contacts, the new contact being connected, in the application, to a user associated with the user selection.
12. (Currently Amended) The system of claim 11, The medium of claim 13, wherein an option is to the operations further comprising invite inviting a new contact to the first set of contacts.
11. A machine-readable non-transitory storage medium having instruction data executable by a machine to cause the machine to perform operations comprising:
in response to a request to interact with an application:
presenting a contact list on a computing device;
accessing a user selection of a set of contacts from the contact list;
retrieving contact information for the set of contacts;
assigning use control rules to the set of contacts, the use control rules specifying remote server actions limiting use of the contact information for a respective contact of the set of contacts, at least one-use control rule of the use control rules requiring the remote server to implement a deletion of the contact information on termination of the application; and
enabling access to the contact information during a communication.
13. (Currently Amended) A machine-readable non-transitory storage medium having instruction data executable by a machine to cause the machine to perform operations in a messaging system for exchanging data over a network by:
in response to a request to interact with a communication application:
presenting a plurality of contact selection options on an electronic device, the plurality of contact selection options being associated with a contact list;
accessing a first user selection of one of the plurality of contact selection options;
filtering the contact list according to the first user selection to generate a filtered contact list;
presenting the filtered contact list on the electronic device;
accessing a second user selection of a first set of contacts for a communication from the filtered contact list;
retrieving contact information for the first set of contacts;
enabling storage of the contact information temporarily in memory;
assigning use control rules to the set of contacts, the use control rules specifying remote server actions limiting use of the contact information for a respective contact of the set of contacts, at least one use control rule of the use control rules requiring the remote server to implement a deletion of the contact information on termination of the application;
enabling access to the contact information during a communication.
13. The medium of claim 11, wherein the contact information is a subset of information stored in the contact list.
14. (Original) The medium of claim 13, wherein the contact information is a subset of information stored in the contact list.
15. The medium of claim 14, wherein presenting the one or more contact selection options further comprises presenting an option control element.
16. (Original) The medium of claim 15, wherein presenting the plurality of contact selection options further comprises presenting an option control element.
17. The medium of claim 11, wherein presenting the contact list further comprises presenting a contact selection control element.
17. (Currently Amended) The medium of claim 16, wherein presenting the filtered contact list further comprises further presenting a contact selection control element.
18. The medium of claim 11, wherein the set of contacts includes all contacts in the contact list.
18. (Original) The medium of claim 13, wherein the first set of contacts includes all contacts in the contact list.
19. The medium of claim 11, wherein the set of contacts corresponds to a null set of contacts.
19. (Original) The medium of claim 13, wherein the first set of contacts is a null set.
20. The medium of claim 15, wherein the one or more contact selection options include an add option to invite a new contact.
20. (Original) The medium of claim 13, wherein the contact selection options include an add option to invite a new contact.
Claim Rejections - 35 USC § 101
NO rejections warranted at applicant’s time of filing for CONtinuation.
Claim Rejections - 35 USC § 102
NO rejections warranted at applicant’s time of filing for CONtinuation.
Claim Rejections - 35 USC § 103
NO rejections warranted at applicant’s time of filing for CONtinuation.
Allowable Subject Matter
Claim[s] 1 – 20 contain allowable subject matter, but as allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
***The examiner notes that a reason’s for allowance can be written in the next subsequent office action, once all formal requirements as identified above have been overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANT SHAIFER - HARRIMAN whose telephone number is (571)272-7910. The examiner can normally be reached M - F: 9am to 5pm.
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/DANT B SHAIFER HARRIMAN/ Primary Examiner, Art Unit 2434
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