Patent Application 18143312 - MESSAGING SYSTEM WITH CIRCUMSTANCE CONFIGURATION

Title: MESSAGING SYSTEM WITH CIRCUMSTANCE CONFIGURATION FRAMEWORK FOR HARDWARE

Application Information

Invention Title: MESSAGING SYSTEM WITH CIRCUMSTANCE CONFIGURATION FRAMEWORK FOR HARDWARE
Application Number: 18143312
Submission Date: 2025-05-15T00:00:00.000Z
Effective Filing Date: 2023-05-04T00:00:00.000Z
Filing Date: 2023-05-04T00:00:00.000Z
National Class: 709
National Sub-Class: 219000
Examiner Employee Number: 79388
Art Unit: 2442
Tech Center: 2400

Rejection Summary

102 Rejections: 0
103 Rejections: 6

Cited Patents

The following patents were cited in the rejection:

Office Action Text

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 .

Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/22/2025 has been entered.

Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 10 and 11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.

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 and 3-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-11, and 15 of copending Application No. 18/220,805 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the current application are covered by the claims in the ‘805 application. The third determination limitation in each independent claim cover the exact same subject matter when considering paragraph 86 of both applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,570,682. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’682 patent and does not feature any patentably distinct limitations.
Claims 1, 3-11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,570,545. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’545 patent and does not feature any patentably distinct limitations.
Claims 1, 10, and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. 11,258,738. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’738 patent and does not feature any patentably distinct limitations.
Claims 1, 10, and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. 11,290,576. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’576 patent and does not feature any patentably distinct limitations.

Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Claims 1 and 3-11 and 13-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description Issue #1
Claims 1, 10, and 11 feature the following limitation:
receiving a pruned rule and partial decision at the first device from the server, wherein the pruned rule and partial decision are generated by the server performing operations comprising:

The use of the “wherein” clause in the claims attempts to establish that the operation of “receiving pruned rule and partial decision” includes operations performed by the server. The specification is clear however that “receiving pruned rule and partial decision” is an independent action performed by the client after the server has already performed the operations to generate the “pruned rule” and “the partial decision”. This is clearly illustrated in Figure 15. The server makes the partial decision 1510, prunes the rule 1512, and sends the partial decision and pruned rule 1514 and clearly these limitations are not disclosed as being “within” the step of receiving the partial decision and pruned rule by the client to support the claimed “wherein language”. The server sending the information happens and then the client receives the information.
The applicant’s use of a “wherein” clause to somehow claim the operations that are disclosed as being performed by two devices to cover a single device does not make any sense when considering the nature of the invention. The applicant’s disclosure is clear that the invention uses the server and client device to perform separate functions as a way of offloading processing from the client by performing some processing at the server. Trying to claim the invention in the form of a single device is clearly not contemplated by the original disclosure and contradicts the entire purpose of the applicant’s invention.

Written Description Issue #2
Claims 1, 10, and 11 feature the following limitation:
executing the second set of nodes of the pruned rule; and
configuring, by the at least one processor, the requested client feature based on the partial decision and the executed second set of nodes.

Paragraphs 85 and 86 disclose the following:

[0085] As discussed previously in conjunction FIG. 9 and FIGs 10- 13 above, FIG. 15 illustrates a client device configuration method 1500, in accordance with one example embodiment. In an embodiment, the method 1500 is executed after the method 1400 is executed. First, a client feature 910requests access (permission) (1502) to use a client device feature from the circumstance engine 912. A client feature might include, for example, prefetching data or setting maximum file size for uploading data. It is to be understood that the client features and rules are not limited to these examples and that any decision affecting execution of a client feature (e.g., encoding format, encryption) can be implemented.
[0086] The circumstance engine 912 on the client device sends the request to access the client device feature to the circumstance engine 810 (1504). The circumstance engine 810 receives the request to access the client feature and optionally determines the applicable rule for the access request (1506) from the rules 816. In one embodiment, the applicable rule has a plurality of nodes. For example, rules 1000, 1100, 1200, and 1300 each have a plurality of nodes, as described above. Each feature has a rule associated with that feature as stored in the rules 816 in a table or other format. The rules 816 are not limited to the rules 1000 - 1300 but include any number of rules including, but not limited to, the example properties listed below in any combination or subset thereof. The device lookup service 814 then looks up the type of device sending the request (1508) and requests device capabilities from the device and/or data bank 818/918. The circumstance engine 810 determines nodes that can be executed and that cannot be executed based on device capabilities received and executes the rule based on the received device capabilities data from the Device Lookup Service 814 (e.g., type of device) (1510). For information unavailable to the circumstance engine 810, the circumstance engine 810 prunes the rule (1512) and sends a partial decision and pruned rule (undetermined nodes) to the circumstance engine 912 (1514) to use local data (e.g., bandwidth) to complete the decision. For example, in the rule 1100, the circumstance engine 810 executes the node 1106 to generate a partial decision and prunes the rule 1100 to remove the executed node 1106 to generate a pruned rule including any nodes that cannot be executed. The circumstance engine 810 then sends the result of node 1106 as the partial decision and a pruned rule 1100 that contains nodes 1104 and 1108, which can be determined by the circumstance engine 912 on the device. The circumstance engine 912 on the client device then runs (1516) the pruned rule based on the partial decision and local data and provides access to the client feature. The client feature 910 then configures and executes the feature based on the final decision reached.

The applicant did not disclose the sequence claimed where nodes of a pruned rule are executed and then a feature is configured based on the partial decision and the executed nodes of the pruned rule. Instead, the second to last sentence of paragraph 86 states that the circumstance engine on the client device “runs” the pruned rule “based on the partial decision” while also providing access to the client feature. The use of the word “and” shows that running the pruned rule and providing access are two separate concepts that are not tied together by the applicant’s use of language in paragraph 86.
The applicant does not define what it means to “run” the pruned rule “based on the partial decision and local data”. The pruned rule is explicitly defined as not having the nodes that were executed to reach the “partial decision” so it is not clear what the relationship is between the pruned rule and the partial decision referenced in the second to last sentence of paragraph 86. The final sentence of paragraph 86 states that the client feature 910 then configured and executes the feature based on “the final decision reached” but the applicant does not define any “final decision reached”. The applicant does not define any “final decision”. Therefore, the final limitation is clearly not supported because the feature is disclosed as configured based on this undefined “final decision” and not based on both of “the partial decision and the executed set of nodes” as claimed. The applicant’s final two limitations clearly are not supported by the original language in paragraph 86 and the original language is incoherent and vague so it is not possible to discern exactly what the applicant intended to cover.

The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Claims 1, 3-11, and 13-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 10, and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: It is not clear how in the second “determining” limitation of the server operations, how a “set of nodes” which are executable instructions can include “hardware capabilities” and “real-time device capabilities” because such concepts are properties that pertain to client devices and not entities which themselves can be executed. If the applicant is attempting to relate the capabilities of a client device with the execution of particular nodes, then the claims should explicitly define this relationship.

Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

Claim(s) 1, 5, 9-11, 15 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al.
As to claim 11, Momchilov teaches a first client device (user device), comprising: a memory that stores instructions; and one or more processors configured by the instructions to perform operations comprising: transmitting a request to access a feature on a first device (ref. no. 601) to a server (col. 19, lines 28-43, Figure 6 could be implemented by a server such as MDM server); receiving a pruned rule (agent app and other applications) and partial decision (cookie) at the first device from the server, wherein the pruned rule and partial decision are generated by the server performing operations comprising: determining an applicable rule for the access request, the applicable rule having a plurality of nodes (MDM server determines rules which include “nodes” for generating a cookie and “nodes” related to the app); determining nodes that can be executed, from the plurality of nodes (code for analyzing device ID, code for analyzing enterprise ID, and code for generating cookie are “nodes”), a first set of nodes that can be executed a the server and a second set of nodes that cannot be executed (code of app is not executed at MDM server); executing the first set of nodes that can be executed to reach a partial decision for the applicable rule (step 603); and pruning the applicable rule to remove executed rules (step 605, the client agent app does not include the functionality that is used to generate the cookie. The applicant provides no technical definition of “pruning an applicable rule”. The applicant does not provide a limiting definition of a node. By not providing the code that generates the cookie to the client, Momchilov is “pruning a rule” in the same manner as disclosed by the applicant in paragraph 86. Just as the applicant’s invention executes some code at the server and some code at the client, Momchilov executes some code at MDM server and the rest at the client); executing the second set of nodes of the pruned rule (Figure 8); and configuring the requested client feature based on the partial decision and the executed second set of rules (Figure 8); however, Momchilov does not explicitly teach that the second set of nodes includes real-time device capabilities and first device hardware capabilities.
Chan teaches a program that can be provided to a user that executes nodes including real-time device capabilities and hardware capabilities (paragraph 85 and 86).
It would have been obvious to one of ordinary skill in the client server art at the time of the applicant’s filing to combine the teachings of Momchilov regarding executing some nodes of a rule at a server and some nodes at a client with the teachings of Chan regarding executing different aspects of a program based on capabilities because such would further the customization taught by Momchilov regarding providing apps to clients.
As to claims 1 and 10, they are rejected for the same reasoning as claim 11.
As to claims 5 and 15, see paragraphs 33-35 of Chan and Momchilov where the steps for generating the cookie are done before the steps for providing the application (see Figure 6).
As to claims 9 and 19, see paragraph 11 of Chan, image resolution is texture level and video frame-rate is frames per second.

Claim(s) 3 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al. in further view of U.S. Patent Application Publication Number 2019/0311544 by Kayo et al.
As to claims 3 and 13, the Momchilov-Chan combination teaches the subject matter of claims 1 and 11 however they do not explicitly teach a rule for determining an image resolution in an augmented reality application.
Kayo teaches an applicable rule that determines an image resolution in an augmented reality application for a client device (paragraph 116).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to combine the teachings of Chan regarding managing image resolution at a client device with the teachings of Kayo regarding image resolution rules for augmented reality because augmented reality could be a user application whose parameters could be managed, mentioned broadly in paragraph 11 of Chan.

Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al. in further view of U.S. Patent Application Publication Number 2014/0032427 by Gannon.
As to claim 4, the Momchilov-Chan combination teaches claim 1 however the Momchilov-Chan combination does not explicitly teach pruning rules that cannot be executed due to lack of data.
Gannon teaches it is obvious to prune rules to remove nodes that cannot be executed due to lack of data (paragraph 323).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s filing to combine the teachings of Chan and Momchilov regarding rules with the teachings of Gannon regarding pruning rules because rules regarding particular data are useless if there is no such data.

Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al. in further view of U.S. Patent Application Publication Number 2013/0328878 by Stahl.
As to claims 6 and 16, the Momchilov-Chan combination teaches prioritizing some rules (paragraph 33-35 of Chan) including the reduction of image resolution based on battery life (paragraph 11 of Chan) however the Momchilov-Chan combination does not explicitly teach a non-priority node of co-processor availability.
Stahl teaches a rule regarding altering image resolution based on co-processor availability (paragraph 36).
It would have been obvious to those of ordinary skill in the art at the time of the applicant’s filing to combine the teachings of Chan regarding prioritizing rules regarding image resolution of battery life with the teachings of Stahl regarding adjusting image resolution based on coprocessor availability because a those of ordinary skill would recognize that a device will not display any image without power regardless of co-processor availability.

Claim(s) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al. in further view of U.S. Patent Application Publication Number 2020/0349426 by Luo et al.
As to claims 7 and 17, the Momchilov-Chan combination teaches the applicable rule using a deep learning model (paragraph 43 of Chan) and a node including co-processor allocation (Figure 4 of Chan); however the Momchilov-Chan combination does not explicitly teach that the rule determines a model input size in a deep learning model.
Luo shows that it would be obvious to use hardware capacity when determining a model input size for a deep neural network (paragraph 94).
It would have been obvious to one of ordinary skill in the mobile application management art at the time of the filing to combine the teachings of Chan regarding the use of neural networks with the teachings of Luo regarding determining a model input size because such a determination maximizes efficiency for the neural network (see paragraph 94 of Luo).

Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 10,924,554 to Momchilov in view of U.S. Patent Application Publication Number 2018/0081417 by Chan et al. in further view of U.S. Patent Application Publication Number 2020/0349426 by Luo et al. in view of U.S. Patent Application Publication Number 2021/0149190 by Johnson et al.
As to claims 8 and 18, the Momchilov-Chan combination teaches maintaining frames per second for feature (paragraph 11 of Chan); however the Momchilov-Chan-Lue combination does not explicitly teach using a deep neural network for body segmentation.
Johnson teaches using a deep neural network for body segmentation (paragraph 63).
It would have been obvious to one of ordinary skill in the mobile application management art at the time of the filing to combine the teachings of Chan regarding deep learning with the teachings of Johnson regarding body segmentation because such information could be useful to the image processing applications of Chan.

Conclusion

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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2442