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
Claim 1 is pending.
This action is in response to the application filed on September 09, 2025.
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a continuation of U.S. Patent Application No. 18/745,054, filed on June 17, 2024, which is a continuation application of U.S. Application Serial No. 17/225,699, filed April 08, 2021, (now U.S. Patent No.12,058,199) which is a continuation application of U.S. Application Serial No. 16/167,722, filed October 23,2018, (now U.S. Patent No. 11,005,916), which is a continuation application of U.S. Application Serial No 15/211,531, filed July 15, 2016, (now U.S. Patent No.10,148,733), which is a continuation application of U.S. Application Serial No. 14/748,949, filed June 24, 2015, (now U.S. Patent No. 9,423,930), which is a continuation application of and claiming the benefit of priority under 35 U.S.C. §120 to Application Serial No. 13/743,923, filed on January 17, 2013, (now U.S. Patent No. 9,098,517), which is a continuation of U.S. Serial No. 13/149,191, filed May 31, 2011, (now U.S. Patent No. 8,386,538), which claims priority to and incorporates by reference the entire contents of Japanese Patent Application No. 2010-132013 filed in Japan on June 9, 2010. The entire contents of the above-identified applications are incorporated herein byreference.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As per claim 1:
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites device comprising: first display unit that displays a screen that allows selection of data to be transmitted to another device; a selection receiving unit that receives selection of the data to be transmitted to the other device; a request receiving unit that receives a request to transmit the data to the other device; and a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit.
Step 1: Statutory Category: Yes.
Step 2A – Prong 1: Judicial Exception Recited: The limitations of the claim recites, “first display unit that displays a screen that allows selection of data to be transmitted to another device; a selection receiving unit that receives selection of the data to be transmitted to the other device; a request receiving unit that receives a request to transmit the data to the other device; and a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit”.
Claim 1 recites the following abstract concepts that are considered to be at least a part of the abstract idea:
Here, the examiner has found that the claims are not directed to “an improvement to computer technology," such as found by the CAFC in Enfish, but to the abstract idea itself. Examiners have been instructed to refer to the body of case law precedent in order to better identify abstract ideas by way of comparison to concepts already found to be abstract. The courts have, for instance, recognized the following computer functions to be well-understood, routine, and conventional functions when claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data. See July 2015 Update: Subject Matter Eligibility. The examiner refers to the following exemplary generically-recited computer elements and their associated functions, which are considered to be routine, conventional, and well-understood:
Generic Computer processing claimed to perform their basic functions of displaying, transmitting, receiving and storing data".
In sum, the examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim1 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 9098517 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-15 of U.S. Patent No. US 9098517 B2 (hereinafter, "Patent"), contains every element of claim 1 of the instant application (hereinafter, "Instant Applicant") and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claim 1 should have been rejected on the ground of nonstatutory obvious-type double patenting as being unpatentable over claims 1-15 of US Patent No. US 9098517 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Instant Application
Patent No US 9098517 B2
1. A mobile device comprising: a first display unit that displays a screen that allows selection of data to be transmitted to another device;
a selection receiving unit that receives selection of the data to be transmitted to the other device;
a request receiving unit that receives a request to transmit the data to the other device; and
a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit
1. A mobile device comprising: a first display unit that displays a screen that allows selection of data to be transmitted to another device;
a selection receiving unit that receives selection of the data to be transmitted to the other device;
a request receiving unit that receives a request to transmit the data to the other device; and
a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit,
wherein the screen displayed by the first display unit includes selectable data stored in the storage unit of the mobile device and selectable data stored in the device connectable to the mobile device via the network, the transmitting unit transmits the data stored in the storage unit when the selected data to be transmitted is the data stored in the storage unit of the mobile device, and acquires the data stored in the device connectable to the mobile device via the network and transmits the acquired data when the selected data to be transmitted is the data stored in the device connectable to the mobile device via the network, the mobile device further comprising a second display unit that displays the data in response to the request received by the request receiving unit, and the request receiving unit receives, as the request, a request to transmit the data and a request to display the data via the screen.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “…. 1. A mobile device comprising: a first display unit that displays a screen that allows selection of data to be transmitted to another device; a selection receiving unit that receives selection of the data to be transmitted to the other device; a request receiving unit that receives a request to transmit the data to the other device; and a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit “ in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
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)(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 Araki et al (US 20100083014 A1).
With respect to claim 1, Araki et al teaches
first display unit that displays a screen that allows selection of data to be transmitted to another device ([0064] FIG. 3, The items are specified based on items that a user needs to select content and the volume of data to be transmitted. [0017] FIG. 1 is a schematic diagram of a network configuration including a data storage device 100 and a plurality of external devices 110A and 110B . The data storage device 100 is connected to a display device 150. The data storage device 100 stores data such as contents. [0018] The display device 150 displays data received from the data storage device 100. Examples of data received from the data storage device 100 include the status information of the data storage device 100 and a list of contents);
a selection receiving unit that receives selection of the data to be transmitted to the other device ([0018] The display device 150 displays data received from the data storage device 100. Examples of data received from the data storage device 100 include the status information of the data storage device 100 and a list of contents. [0023] When receiving content from the data storage device 100 or the like, the external devices 110A and 110B transmit a carrier wave for power transmission and data to the wireless communication port of the device. Examples of the data transmitted to the wireless communication port include a device ID that specifies the data storage device 100 or the like, and a command for controlling the data storage device 100);
a request receiving unit that receives a request to transmit the data to the other device ([0023] When receiving content from the data storage device 100 or the like, the external devices 110A and 110B transmit a carrier wave for power transmission and data to the wireless communication port of the device. Examples of the data transmitted to the wireless communication port include a device ID that specifies the data storage device 100 or the like, and a command for controlling the data storage device 100); and
a transmitting unit that transmits the data, the selection of which is received by the selection receiving unit and which is stored in a storage unit of the mobile device or in a device connectable to the mobile device via a network, to the other device in response to the request received by the request receiving unit [0023] When receiving content from the data storage device 100 or the like, the external devices 110A and 110B transmit a carrier wave for power transmission and data to the wireless communication port of the device. data transmitted to the wireless communication port include a device ID that specifies the data storage device 100 or the like, and a command for controlling the data storage device 100. [0025] since the external devices 110A and 110B transmit a device ID with a command, a device identified by the device ID can be controlled by the command. Among the examples of the command for controlling a device is a request for a list of contents stored in the device. By transmitting such a command to a device such as the data storage device 100, the external devices 110A and 110B can obtain from the device a list of contents stored. [0083] The external device 110A transmits a request for the content data to the data storage device 100 (S415). The request for the content data may be transmitted as a radio input signal or may be transmitted via the network160).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HAGIWARA (US 20100117810 A1) IN-VEHICLE DEVICE AND DISPLAY CONTROL SYSTEM.
Considered for teachings related generally for displaying a plurality of screen data generated by a mobile terminal device on one display is provided. A registering unit is configured to register partial area information in which disposition information indicating disposition of each of a plurality of partial areas which are disposed on a display area of the display are associated with priority information indicating priority of each of the partial areas. A adjusting unit is configured to adjust the display area by allocating one of the screen data to one of the partial areas based on the priority information included in the partial area information when receiving a request to display the one of the screen data on the display. A display control unit is configured to display the one of the screen data allocated to the one of the partial areas on the display based on the disposition information included in the partial area information.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC M WOO whose telephone number is (571)272-4043. The examiner can normally be reached 9:00 to 5:00.
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, Tony Mahmoudi can be reached at 571-272-4078. 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.
/ISAAC M WOO/ Primary Examiner, Art Unit 2163
Prosecution Insights