DETAILED ACTION
Claims 1-20 are pending in this application. 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 1-20 of U.S. Patent No. 12,400,248 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are anticipated by the patented claims.
Reasons for Eligibility and Allowability Over the Prior Art
The claims are patent eligible because they do not recite any limitations directed to one of the groupings of abstract ideas identified in MPEP 2106.04. The claims are directed purely towards user interface functionality and improvements. Furthermore, the claims are not the mere instructions to apply an abstract idea on a computer because the claims recite details as to how the solution is accomplished, do not merely invoke computers as a tool to perform an existing process, and the claims apply to a particular application in the specific field of graphical user interfaces. There is no evidence that the claim recitations are well-understood, routine, and conventional. The claims do not recite insignificant extra-solution activity because the limitations are core to the solution of the invention as described in the specification. In consideration of all the factors the claims recite patent eligible subject matter.
The prior art includes Scott et al., US Patent 10,515,140 B1, which teaches a method and system for displaying items including a scroll type for the slider may be an index-type scroll, where there are preset positions for each image in the slider, or a smooth or continuous-type scroll, where there are no fixed positions for the images but does not teach wherein the scrollable listing of the plurality of icons is overlaid onto a page and remains fixed when the page is scrolled, each icon is associated with a catalog of a plurality of catalogs, and each icon is displayed with an indication of a set of items selected from a corresponding catalog.
Nitzschke, US PG Pub 2020/0184579 A1, teaches a system and method for implementing a centralized customizable operating solution but does not teach wherein the scrollable listing of the plurality of icons is overlaid onto a page and remains fixed when the page is scrolled, each icon is associated with a catalog of a plurality of catalogs, and each icon is displayed with an indication of a set of items selected from a corresponding catalog. Nitzschke teaches a landing screen that comprises a station segment select, an administration and service segment, a staff and station segment, a customizable multi-purpose segment, a customizable information and function tab segment, and a customizable main menu segment, and within the station select segment is a fixed segment and a horizontal scrollable segment. However, the overlay does not remain fixed when the page is scrolled.
Ellithorpe et al., US Patent 11,074,643 B1, teaches a method and systems for efficient product navigation and product configuration including in some embodiments the navigation panel may be fixed relative to the rest of the scrollable content in the interface so the user can always reference it without having to perform any user action, although other configurations are also contemplated. However, Ellithorpe does not teach receiving the user selection to add the item from the page that includes the plurality of items, updating the status information displayed with the selected icon in the scrollable listing of the plurality of icons to indicate that the item has been added to the set of items selected from the corresponding catalog.
Non-patent literature Chase, Chelsea teaches many different design patterns in user interface design but does not teach wherein the scrollable listing of the plurality of icons is overlaid onto a page and remains fixed when the page is scrolled, each icon is associated with a catalog of a plurality of catalogs, and each icon is displayed with an indication of a set of items selected from a corresponding catalog. The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable over the prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688
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