DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendment to the claims has overcome the first written description issue presented in the previous office action.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive. Regarding the written description issue #2 from the previous office action, which is maintained, the applicant’s arguments are not persuasive. The applicant’s explanation only takes into account the pause scenarios where the version with more segments happens to align with the version with the smaller segments but those of ordinary skill would recognize that if the 200 segment version stopped at the 43rd segment rather than the 40th segment, for example, there would be no clear correspondence between that segment and the 100 segment version. The applicant’s disclosure and remarks do not account for how such a pause at an odd number segment of the 200-segment version would be handled. The applicant was clearly not in possession of the scope of the claimed invention, as repeatedly explained in the proceeding office actions. If the applicant wants to argue that there was some obvious way to handle such a scenario then the applicant needs to be clear about what would have been obvious on the record. The applicant has disclosed one simple example of how to accomplish the invention, but this simple example does not provide a description of how to completely implement the inverse example argued by the applicant because the applicant’s explanation only accounts for situations where the segments line up (pause on even number of larger version). The applicant did not describe how to implement switching between more complicated formats disclosed. The previous office actions have explained that the written description rejection will be withdrawn if the applicant clearly claims the embodiment that is described where the invention switches from a smaller data version to a larger data version.
Regarding the prior art rejection, the applicant’s arguments regarding Roy are related to Roy’s use of the term “segment”. The Examiner agrees that Roy does not use the term “segment” in the same manner as the applicant’s claims. The rejection takes this into account. The applicant does not provide a technical definition of the term “segment” in their disclosure; it is described as an allotment of data representing a version of the content. Roy shows this concept, as in Figure 4, the different “segments” that correspond to each other in the different versions, have different quantities of data representing each “segment”. These different quantities of data read on the applicant’s disclosed concept of a “segment” in that each version will have different quantities of data and thus the higher definition versions will have more segments of data for a corresponding version. The Examiner cannot find anything disclosed differently from a technical perspective about how the applicant implements their segment versus what Roy has disclosed regarding versions of content which each have different quantities of data representing the version. The different quantities of data read on the applicant’s disclosed concept of a “segment” even if Roy uses the term “segment” differently.
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 1-26 and 28-30 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.
Claims 1, 8, and 15 feature the following limitations:
wherein the second segment is determined based on a relative position of the first segment with a plurality of segments that comprise the first version of the content item.
Section 2161.01(I) of the MPEP states the following:
The written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349, 94 USPQ2d at 1170. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Id. at 1349, 94 USPQ2d at 1170-71; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46, 76 USPQ2d 1724, 1730-33 (Fed. Cir. 2005); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997)("The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus.").
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand the inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.
The applicant is claiming a broad genus of determining a second segment of a second version corresponds to a first segment of a first version. The applicant has not disclosed species sufficient to support a claim to the functionally-defined genus of determining a segment of a second version of a content item corresponds to a segment of a first version of the content item. This is evident from the final sentence of paragraph 35 of the applicant’s disclosure. The applicant has disclosed the simplest possible scenario where the version with less segments has paused on one device and a different device resumes with a version with more segments but the applicant has not disclosed anything about the inverse of that scenario which is more complicated because the segments may not line up; the version with more segments could be paused on a segment that does not directly correspond to a segment in the version with fewer segments.
The applicant disclosed two examples of determining a corresponding segment in paragraph 49. The first example relies on matching a running time stored in meta data associated with a segment content file that is not otherwise described, rendering this example incomplete with respect to the guidance given in section 2161.01(I) of the MPEP. Specifically, the applicant fails to describe, in any manner, how the function of using meta data associated with a segment content file to determine a correspondence between segments in different versions of a content item is performed. The second example, which is based on a “relative position”, is only applicable to scenarios where the first version of the data has a smaller number of segments that is a factor of the number of segments in the second version of the data. This is described in the final sentence of paragraph 35 of the disclosure. If the situation were reversed, where the version with more segments was paused, the applicant’s specification fails to explain what happens when any pause indication indicates an odd number segment was last played. Specifically, if the 41st segment of 200 segments is identified by the first user device there is no corresponding segment in the version with only 100 segments. The applicant’s description of how corresponding segments are determined only covers one simple scenario where the first version played has half the segments of the second version played, after the pause.
This glaring problem is apparent to anyone reading the disclosure. The applicant is claiming a genus which covers species that cover both the simple version switch species and the more complicated version switch species. The applicant did not provide any disclosure of how this more complicated species would be performed and there is no way to infer what how the applicant’s invention would handle the more complicated solution based on the applicant’s simplistic description of the simplest possible species.
The first sentence of paragraph 49 states that “the content distribution system may determine a fragment or segment of the selected version of content that corresponds to the paused segment or fragment of the originally delivered version of the content”. The following sentences of paragraph 49 make it clear that a correspondence between the versions would have to be identified in order to know how to match a corresponding segment from one version to another. Paragraph 35 disclosed storing “links or references” between corresponding segments but this is not in the context of the process disclosed in paragraph 49. There is no explanation of how such “links or references” are defined when segments to not match up in simple 1 to 1 ratio as shown in ref. no. 319 of Figure 3.
The applicant’s claim covers a variety of formats such a “MPEG4, FLASH, or any other format” (see paragraph 26) but the applicant’s simplistic example does not provide any disclosure of how it is determined which segments in MPEG4 correspond to which segments in a FLASH format or “any other format”. Those reading the claims in light of the disclosure will recognize that the applicant’s disclosed simplest species solution is not sufficient for the complexity covered by the claimed invention in light of more complicated species covered by the disclosure. There is no evidence that a correspondence between segments of MPEG4, FLASH, or “any other format” fits with the simplistic 1:2 or 1:1 ratios that are disclosed. The applicant has not demonstrated any evidence that they provided any consideration for the complexity of how the invention would operate in light of the scope the broad genus claimed.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19, and 21-30 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication Number 2009/0259711 by Drieu et al. in view of U.S. Patent Application Publication Number 2008/0141303 by Walker et al. in further view of U.S. Patent Application Publication Number 2011/0176496 by Roy et al.
As to claim 1, Drieu teaches a method comprising: receiving, by a computing device and from a first user device, a first request for a content item (paragraph 30, content viewer initiates access of content); beginning to send, to the first user device, a first version of the content item (paragraph 5, the content can be streamed from a remote location); receiving, from the first user device an indication to stop the sending of the first version of the content item (paragraphs 30 and 5), and an identification of a first segment of the first version (paragraph 30, state information, including playhead position, is sent to remote location, paragraph 24 explains playhead position includes last played frame/segment); receiving, from a second user device, a second request to resume delivery of the content item (paragraph 34, ref. nos. 603); selecting the content item for the second user device (paragraph 34, ref. no. 604); and determining a second segment of the content item, wherein the second segment is determined based on a relative position of the first segment with a plurality of segments that comprise the version of the content item sent to the first device (paragraph 34); and sending, to the second user device, the second segment of the version (paragraph 34); however Drieu does not explicitly teach storing a plurality of versions of the content, determining capabilities of a user device, selecting a version of content that is compatible with the second user device from the plural versions of content, and selecting a segment of content of a second version based on the position of a first segment of the first version.
Walker teaches storing multiple versions, that comprise different video formats (paragraph 113), of a content item at a storage device (paragraph 131); based on determining that one user device is different than another user device (paragraphs 284, 289, and 301, the system identifies devices in the same manner disclosed by the applicant with respect to step 630 disclosed in paragraph 48 of the applicant’s disclosure), determining capabilities of a variety of user devices that could include a first device and a second device that is different from the first device (paragraph 113) and selecting, from a plurality of versions of the content item, a second version of the content item that is compatible with the second user device (paragraph 113); and sending the second version of the content item to the second user device (paragraph 113).
It would have been obvious to one of ordinary skill in the media streaming art at the time of the applicant’s invention to combine the teachings of Drieu regarding providing content to types of different devices with presumably different capabilities (see display devices in Figures 1 and 2) with the teachings of Walker regarding storing multiple versions of the content item and providing the different versions based on the capabilities of the device because Walker teaches the same types of content provided to the same types of devices as Drieu so the benefits of providing a version of content specific to each type of device in Drieu are evident for the same reasons discussed in paragraph 131 of Walker; however the Drieu-Walker combination does not explicitly teach sending, to the second user device, the second version of the content item, wherein the sending the second version begins with a second segment, of the second version, that is selected based on a position of the first segment within a set of segments of the first version.
Roy teaches a method of determining a second segment of a second version of content based on a relative position of a first segment with a plurality of segments that comprise the first version of content, wherein a set of segments of the first version and a set of segments of the second version comprise different quantities of segments (Figure 4 and paragraphs 22, 23, 27, and 28).
It would have been obvious to one of ordinary skill in the media streaming art at the time of the applicant’s invention to combine the teachings of the Drieu-Walker combination regarding providing content to different devices in versions for the particular device with the teachings of Roy regarding selecting a segment from one version of the content that corresponds a segment of another version of content because Roy shows how streaming to the same types of devices as both Drieu and Walker (see paragraph 21 of Roy) can seamlessly switch between segments of different versions while playing a content item. All of Drieu, Walker, and Roy stream to the same types of devices and Walker and Roy describe managing the same types of version formats so Walker and Roy provide solutions for the devices shown in Drieu, when the requesting devices might require different formats and thus a sending step would be “based on the correspondence” between the versions. The Examiner cannot find anything of the applicant’s disclosure of this claim (paragraphs 47-51) that covers a description of technology that could be found patentable over the teachings of these references.
As to claims 8 and 15 they rejected for the same reasoning as claim 1.
As to claims 4, 11, and 18, see paragraph 113 of Walker.
As to claims 5, 12, and 19, see paragraph 218 and 219 of Walker.
As to claims 7, 14 and 21, see paragraph 157 of Walker.
As to claim 22, see paragraphs 131, 157, and 204 of Walker.
As to claim 23, see paragraph 131 of Walker and Figure 4 of Roy.
As to claim 24, see paragraph 30 of Drieu.
As to claims 25 and 26, see paragraphs 22, 23, 27, and 28 of Roy.
As to claim 27, see paragraphs 27 and 28 and Figure 4 of Roy.
As to claim 28, see paragraph 113 of Walker.
As to claim 29, paragraphs 284, 289 and 301 of Walker teach using a header to identify a piece of user equipment which qualifies as the claimed “device name”. Paragraph 48 of the applicant’s disclosure does not provide any description of these terms that would limit their interpretation.
As to claim 30, see paragraphs 22, 23, 27, and 28 of Roy. The technical nature of claimed segment is not described by the applicant other than to say it is some quantity of data. Roy uses the term “segment” differently as allotments of data of different quality streams that correspond to each other. Roy teaches the applicant’s concept of “segments” in that each stream depicted in Figure 4 will have different groupings of data that correspond to each other, with there being more segments of data for the higher quality streams. This is the concept the applicant has disclosed even if Roy uses the term “segment” to cover a different concept.
Claims 2, 3, 9, 10, 16 and 17 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication Number 2009/0259711 by Drieu et al. in view of U.S. Patent Application Publication Number 2008/0141303 by Walker et al. in further view of U.S. Patent Application Publication Number 2011/0176496 by Roy et al. in further view of U.S. Patent Number 7,774,817 by Gupta.
As to claims 2, 9, and 16, the Drieu-Walker-Roy combination teaches the subject matter of claims 1, 8, and 15 however the Drieu-Walker-Roy combination does not explicitly teach the management of user descriptions claimed.
Gupta teaches a method of receiving, from the first user device, a user description corresponding to a content segment of the content item (ref. nos. 278 and 280 in Figure 6); and storing, by the computing device, the user description in association with the content segment of the content item, wherein the description is stored remotely from the first user device (col. 7, lines 29-63).
It would have been obvious to one of ordinary skill in the content distribution art at the time of the invention to combine the teachings of the Drieu-Walker-Roy combination regarding allowing a user to switch devices when consuming content with the teachings of Gupta regarding allowing users to attach descriptions to content because such descriptions enhance the content for other users. There is nothing precluding the commentary in Gupta from being stored in the same storage device as the versions disclosed by Walker. Those of ordinary skill would recognize that various devices can be adapted to store data.
As to claims 3, 10, and 17, the Drieu-Walker-Roy combination teaches the subject matter of claims 1, 8, and 15 however the Drieu-Walker-Roy combination does not explicitly teach descriptions searchable by keywords corresponding to content.
Gupta teaches a method of receiving, from the second user device, a user description corresponding to a content segment of the content item (col. 5, line 64-col. 6, line 11); and based on receiving, from one of a plurality of other user devices, a request for the content item that corresponds to keywords associated with the user description, causing output of the content segment of the content item (col. 6, lines 12-43).
It would have been obvious to one of ordinary skill in the content distribution art at the time of the invention to combine the teachings of the Drieu-Walker-Roy combination regarding allowing a user to switch devices when consuming content with the teachings of Gupta regarding allowing a user supplied description to be keyword searchable because such a technique would allow the user of Drieu to find content easier.
Claims 6, 13, and 20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication Number 2009/0259711 by Drieu et al. in view of U.S. Patent Application Publication Number 2008/0141303 by Walker et al. in further view of U.S. Patent Application Publication Number 2011/0176496 by Roy et al. in further view of U.S. Patent Application Publication Number 2011/0087795 by Puri et al.
As to claims 6, 13, and 20, the Drieu-Walker-Roy teaches the subject matter of claims 1, 8, and 15 however the Drieu-Walker-Roy does not explicitly teach determining a type of network for transmission of the content and selection of an appropriate network.
Puri teaches a method of determining a type of network through which a content item is to be sent to a user device (Figure 2); and determining a transmission protocol in accordance with the determined type of network (Figure 3 and 4), wherein the determining a version of the content item is further based on the transmission protocol (paragraph 30, the invention transcodes the data within the transport protocol).
It would have been obvious to one of ordinary skill in the content distribution art at the time of the invention to combine the teachings of the Drieu-Walker-Roy regarding allowing a user to switch devices when consuming content with the teachings of Puri regarding the determination of a transport protocol based on the network of the user device because user devices can use various networks that need different transport protocols.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
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