NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 19/357,470 (“the ‘470 application”) for U.S. Patent No. 9,832,619 (“the ‘619 Patent”).
Claims 1-19 have been canceled. Claims 20-39 have been added. Claims 20-39 are pending.
Priority
The ‘470 application is a continuation reissue of application 18/073,649 (“the ‘649 application”), now RE50668, which is a reissue of 16/410,575 (“the ‘575 application”), now RE49367. The ‘470 application is a reissue of the ‘619 Patent, which has an effective filing date of July 21, 2015, which is after March 16, 2013. Therefore, the ‘470 application is being examined under the first inventor to file provisions of the AIA .
Reason for Reissue and Declaration
This is a broadening reissue application. The Declaration By The Assignee (“Reissue Dec”) filed October 14, 2025, is a copy states,
“The instant reissue is being filed at least because the original patent claims less than the patentee had the right to claim. Accordingly, the instant reissue adds new claim 20 so as to claim a previously-unclaimed embodiment directed to a server (as opposed to the electronic device of claim 1 of the patent) for providing message-related content to an electronic device.”
Specification
The specification is objected to. It should be amended to add that the ‘575 application is now RE49367 and the ‘649 application is now RE50668.
35 USC 251 Rejection – Defective Declaration
The reissue declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414. The error statement indicates that the claims are being corrected by adding claims directed to a previously-unclaimed embodiment directed to a server (as opposed to the electronic device of claim 1 of the patent) for providing message-related content to an electronic device. However, new claims 20-39 are not directed to a server. Claims 20-29 are directed to an electronic device; claims 30-38 are directed to a method; claim 39 is directed to a computer readable recording medium.
Claims 20-39 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Signature on Declaration
Additionally, per MPEP 1410.01, the reissue declaration “must be signed by a party authorized to act on behalf of the assignee of the entire interest and may not be signed by the patent practitioner of record.” The signature of Minjeong Kang must be accompanied by a title or an indication that they have the authority to act on behalf of the assignee. Minjeong Kang is not listed under the patent practitioners associated with customer number 23373.
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 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) (“§ 112(f)”) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under § 112(f):
(A) the claim limitation uses the term “means” 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;
(B) the term “means” 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
(C) the term “means” or the generic placeholder is not modified by sufficient structure for performing the claimed function.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f), is rebutted when the claim limitation recites sufficient structure to entirely perform the recited function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure to entirely perform the recited function.
Claim limitations in this application that use the word “means” are being interpreted under § 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” are not being interpreted under § 112(f), 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 § 112(f), 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 limitations are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘619 Patent
1
20
processor configured to
determine whether the received message includes an inquiry,
in response to the received message being determined as including the inquiry, control the display based on the inquiry to display a plurality of recommended application icons, which enable execution of corresponding application programs, and
transmit the at least one response message comprising a content corresponding to at least one of the application programs to the another electronic device
See at least col. 3, lines 35-40; col. 21, line 30-col. 22, line 30; Figs. 11-13 and associated descriptions
2
21
processor is further configured to
mark the received message in response to the received message being determined as including an inquiry, and provide the application programs through the plurality of recommended application icons in response to the marked received message being selected
See at least col. 7, lines 48-54; col. 8, lines 36-col. 10, line 41
3
22
processor is further configured to
obtain the application programs based on relational data between a user of the another device and a user of the electronic device
See at least col. 18, lines 15-26; Fig. 11D
4
24
processor is further configured to
control the display to display the plurality of recommended application icons based on a user input requesting the application programs in response to a settings menu being set to manually recommend the application programs, display the plurality of recommended application icons based on a user input indicated in the received message in response to the settings menu being set to semi-automatically recommend the application programs, and display the plurality of recommended application icons without a user input when the electronic device obtains the application programs by recognizing the received message in response to the settings menu being set to automatically recommend the application programs
See at least Figs. 19-20; 25A and related descriptions
5
25
processor is further configured to
obtain the application programs based on types of words included in the message, relations among the words, and meanings of the words
See at least col. 19, lines 22-41
6
26
processor is further configured to
obtain the application programs based on a relation between a user of the electronic device and a user of the another electronic device, which is set based on a user input
See at least col. 2, lines 20-23
7
29
processor is further configured to
extract keywords from the received messages and obtain content related to each of the keywords in order of descending priority of the keywords
See at least col. 17, line 54-col. 18, line 2
Table 1: Identification of Corresponding Structure
A review of the ‘619 specification shows that claims 20-29 and 39 are computer-implemented limitations requiring programming/software. For example, see 41:65-43:25 and Figs. 56 and 57 of the ‘619 Patent discussing software and applications for implementing the invention.
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
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 20-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of RE49367 and claims 20-39 of RE50668. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 is missing the phrase “that have different categories from each other” and “together with a plurality of recommended images stored on the electronic device.” See the table provided below for comparison. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 20 of the ‘470 Application
Claim 20 of RE50668
Claim 1 of RE49367
An electronic device providing a message service, the electronic device comprising:
An electronic device providing a message service, the electronic device comprising:
An electronic device providing a message service, the electronic device comprising:
a communicator configured to exchange a message with another electronic device;
a communicator configured to exchange a message with another electronic device;
a communicator configured to exchange a message with another electronic device;
a display configured to display a message service screen;
a display configured to display a message service screen;
a display configured to display a message service screen;
a processor configured to:
a processor configured to:
a processor configured to:
control the display to display a message received from the another electronic device, a message input by the electronic device, and at least one response message generated by the electronic device, all together on the message service screen,
control the display to display a message received from the another electronic device, a message input by the electronic device, and at least one response message generated by the electronic device, all together on the message service screen,
control the display to display a message received from the another electronic device, a message input by the electronic device, and at least one response message generated by the electronic device, all together on the message service screen,
determine whether the received message includes an inquiry,
determine whether the received message includes an inquiry,
determine whether the received message includes an inquiry,
in response to the received message being determined as including the inquiry, control the display based on the inquiry to display a plurality of recommended application icons, which enable execution of corresponding application programs, and
in response to the received message being determined as including the inquiry, control the display based on the inquiry to display a plurality of recommended application icons, which enable execution of corresponding application programs, together with a plurality of recommended images stored on the electronic device, and
in response to the received message being determined as including the inquiry, control the display based on the inquiry to display a plurality of recommended application icons, which enable execution of corresponding application programs that have different categories from each other, together with a plurality of recommended images stored on the electronic device, and
transmit the at least one response message comprising a content corresponding to at least one of the application programs to the another electronic device.
transmit the at least one response message comprising a content corresponding to at least one of the application programs to the another electronic device.
transmit the at least one response message comprising a content corresponding to at least one of the application programs to the another electronic device.
Table 2: Claim Comparison for Double Patenting
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art of record, alone or in combination, disclose the following:
a communicator configured to exchange a message with another electronic device,
control the display to display a message received from the another electronic device, a message input by the electronic device, and at least one response message generated by the electronic device, all together on the message service screen,
determine whether the received message includes an inquiry,
in response to the received message being determined as including the inquiry, control the display based on the inquiry to display a plurality of recommended application icons, which enable execution of corresponding application programs, and
transmit the at least one response message comprising a content corresponding to at least one of the application programs to the another electronic device.
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘619 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
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Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992 /ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights