DETAILED ACTION
Notice of 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 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.
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Claim 1 of the instant application is provisionally rejected on the ground of nonstatutory double patenting as being obvious over claim 4 of copending Application No. 19/343,657 (reference application, published in PG Pub 2026/0093434 A1) in view of Acharya et al. (United States Patent US 7,434,166 B2), hereinafter referenced as Acharya.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding Claim 1 of the instant application, Claim 4 of 19/343,657 discloses “A control method for a display system including a first device, a second device, and a display device that establishes first communication with the first device via a wired cable” (Page 18, Claim 1, Lines 1 – 4), “that is configured to communicate with the second device, and that is configured to display an image in a display region” (Page 18, Claim 1, Lines 4 – 6 (lines of claim)), “wherein the first device and the display device are configured to communicate with each other [ ]” (Page 18, Claim 1, Lines 2 – 4), “the first device does not store an application program” (Page 18, Claim 4, Line 3 (line of claim)), “and the display device when information from the second device requesting a second communication between the second device and the display device is received [ ] while a first image is being displayed in the display region, transmits, to the first device via the network or the wired cable, information indicating that the second communication was requested” (Page 18, Claim 1, Lines 11 – 17 (lines of claim)), “and when information indicating that the second communication was accepted is received from the first device via the network or the wired cable, establishes the second communication” (Page 18, Claim 1, Lines 18 – 22). However, Claim 4 of 19/343,657 describes a program and/or application for controlling communication that is later stored in the first device (Page 18, Claim 4, Lines 3 – 6), but fails to explicitly disclose communication “via a network” and where “the second device stores the application program”.
In a similar field of endeavor, Acharya teaches a first device 127 and display device 110 communicating via a network 150 and wire LAN 151 (Figure 1). Also, Acharya teaches a display system where components run programs to achieve sharing/display between devices (Column 16, Lines 32 – 40).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide communication “via a network” because one having ordinary skill in the art would want to allow a display device to be accessed by multiple devices (Figure 1, Items 121, 123, 125, and 127). In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide where “the second device stores the application program” because one want to allow mirroring control from different network devices.
Regarding Claim 5, Claim 4 of 19/343,657 and Acharya disclose/teach everything claimed as applied above (See Claim 1). Specifically, refer back to the rejection of the method of Claim 1 of the instant application and notice that method of Claim 1 is performed by the combined device of Claim 4 of 19/343,657 and Acharya for the same reasoning made in the rejection of Claim of the instant application above.
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 (i.e., changing from AIA to pre-AIA ) 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 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 – 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Acharya.
Regarding Claim 1, Acharya discloses “A control method for a display system including a first device (Figure 1, Item 127 ‘desktop computer’, and Column 3, Line 55), “a second device” (Figure 1, Item 121 ‘PDA’, and Column 3, Line 56), “and a display device” (Figure 1, Item 110 ‘projector’, and Column 3, Line 52), “that establishes first communication with the first device via a wired cable” (Figure 1, Item 148 ‘wired connection’, and Column 4, Lines 6 – 9), “that is configured to communicate with the second device” (Column 3, Lines 62 – 67), “and that is configured to display an image in a display region” (Figure 5, Item 540 (Notice that an image is displayed in a display to which projector 110 is directed.)), “wherein the first device and the display device are configured to communicate with each other via a network” (Figure 1, Item 150 ‘wireless access point’, and Column 3, Line 62 through Column 4, Line 3), “the first device does not store an application program” (Column 16, Line 36 - 37 (Notice that the first device of the desktop computer does not store the low-speed mirroring program.)), “the second device stores the application program” (Column 16, Lines 37 – 38 (Notice that the second device stored the low-speed mirror program.)), “and the display device when information from the second device requesting a second communication between the second device and the display device is received by the application program while a first image is being displayed in the display region, transmits, to the first device via the network or the wired cable, information indicating that the second communication was requested” (Figure 5 (Notice that generic user B, which signifies a second of any of portable computing devices 221, 223, 225, and 227, makes a communication request of the same projector at step 550 via the low-speed mirror program of said second device while the projector 110 projects a first image in a projection area at step 540, information indicating that the second communication was requested is received such that step 560 occurs.)), “and when information indicating that the second communication was accepted is received from the first device via the network or the wired cable, establishes the second communication” (Figure 5, Steps 570 and 580 (Notice that when the information of “(A)” indicating that the second communication was accepted is received by the first device (Generic User A) via the wireless network or wired cable, the second communication is established by step 580.)).
Regarding Claim 2, Acharya discloses everything claimed as applied above (See Claim 1). In addition, Acharya discloses “wherein the display system includes a third device configured to communicate with the display device” (Figure 1, Item 123 ‘computing device’, and Column 3, Line 62 through Column 4, Line 1 (Notice that computing device 123 provides a third device the communicates with projector 110 through links in a wireless network.)), “the third device stores the application program” (Column 16, Lines 37 – 38 (Notice that the third device stores the low-speed mirror program.)), “and the display device further when information from the third device requesting a third communication between the third device and the display device is received by the application program while the first image is being displayed in the display region, transmits information indicating that the third communication was requested to one [ ] of the first device and the second device” (Figure 5 (Notice that another user other than generic B and A (Column 9, Lines 11 – 14), which signifies a third of any of portable computing devices 221, 223, 225, and 227, makes a communication request of the same projector at step 550 via the low-speed mirror program of said third device while the projector 110 projects a first image in a projection area at step 540, information indicating that the third communication was requested is received such that step 560 occurs. Notice that the claim is met at least with respect to the alternative “or” condition.)), “and when the display device receives information from the first device [ ] indicating that the third communication was accepted, establishes the third communication” (Figure 5, Steps 570 and 580 (Notice that when the information of “(A)” indicating that the third communication was accepted is received by the first device (Generic User A) via the wireless network or wired cable, the third communication is established by step 580.) Notice that the claim is met at least with respect to the alternative “or” condition.).
Regarding Claim 3, Acharya discloses everything claimed as applied above (See Claim 1). In addition, Acharya discloses “wherein the display system includes a third device configured to communicate with the display device” (Figure 1, Item 123 ‘computing device’, and Column 3, Line 62 through Column 4, Line 1 (Notice that computing device 123 provides a third device the communicates with projector 110 through links in a wireless network.)), “the third device stores the application program” (Column 16, Lines 37 – 38 (Notice that the third device stores the low-speed mirror program.)), “and the display device further when the third device requests a third communication between the third device and the display device is received by the application program while a second image based on image data transmitted from the second device is displayed in the display region, transmits, to the first device, information indicating that the third communication was requested to the first device” (Figure 5 (Notice that another user other than generic B and A (Column 9, Lines 11 – 14), which signifies a third of any of portable computing devices 221, 223, 225, and 227, makes a communication request of the same projector at step 550 via the low-speed mirror program of said third device while the projector 110 projects a second image (Column 9, Lines 11 – 14) via generic user B who initially has control before a next user other than generic user A) in a projection area at step 540, information indicating that the third communication was requested is received such that step 560 occurs.)), “and when information indicating that the third communication was accepted, establishes the third communication” (Figure 5, Steps 570 and 580 (Notice that when the information of “(A)” indicating that the third communication was accepted is received by the first device (Generic User A) via the wireless network or wired cable, the third communication is established by step 580.)).
Regarding Claim 5, Acharya discloses everything claimed as applied above (See Claim 1). Specifically, refer back to the disclosure of the system of Acharya providing for the method of Claim 1 and notice that the same system of Acharya meets the limitations of the display device of Claim 5.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In the prior art of record, it has been shown to provide for the limitations of Claim 1 (See above) from which Claim 4 is dependent. However, it has not been shown in the prior art of record to provide for the combination of the limitations of Claims 4 and 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M BUTCHER whose telephone number is (571)270-5575. The examiner can normally be reached on Monday – Friday from 6:30 AM to 3:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ke Xiao, can be reached at (571) 272 - 7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN M BUTCHER/Primary Examiner, Art Unit 2627 July 23, 2026
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