DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/6/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/6/2026 have been fully considered but they are not persuasive regarding the written description rejection. The applicant misses the point of the rejection. The rejection explains how the applicant discloses the simplest possible species covered by the much broader genus of the claim. The Office action focuses on the only example the applicant provided in the specification for determining how segments of different versions of content items correspond to each other. The rejection is clear that the applicant has only disclosed the most simplistic way of determining a correspondence that is not descriptive for going from formats with more segments to formats with fewer segment, which would be more complicated, and it is not descriptive for formats where the encoding is completely different such as MPEG4, Flash, or any other format disclosed in paragraph 26. The Examiner cited relevant portions of section 2161.01(I) of the MPEP which explains why the applicant should not be entitled to the expansive language of the current claims.
The applicant argues that “the Office Action fails to note the use of a running time or relative position within a set of segments to determine a segment that would correspond to a paused segment in paragraph 49”. This is not true. The last Office action addressed the two examples referenced in paragraph 49. The rejection explained that the applicant did not describe anything about how they implement the meta data that is used for the “running time” example. The rejection explained how although the applicant only described how to determine a relative position for the simplest possible scenario but this is not sufficient to describe how the relative position would be determined for the more complex scenarios covered by the claims.
The applicant argues that “One of ordinary skill in the art would have understood that examples are not limited to a particular segment ratio or format as alleged in the Office Action at page 6.” The Examiner agrees with this and that is why the Examiner applied the guidance in section 2161.01(I) regarding claims which cover a broad genus without adequate description of sufficient species. Again, the rejection is clear that the applicant has only disclosed the most simplistic way of determining a correspondence that is not descriptive for going from formats with more segments to formats with fewer segment and it is not descriptive for formats where the encoding is completely different such as MPEG4, Flash, or any other format disclosed in paragraph 26.
Section 2162 of the MPEP states the following:
To obtain a valid patent, a patent application must contain a full and clear description of the invention for which a patent is sought in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The requirement for an adequate written description ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent. The grant of a patent helps to foster and enhance the development and disclosure of new ideas and the advancement of scientific knowledge. Upon the grant of a patent in the U.S., information contained in the patent becomes a part of the information available to the public for further research and development, subject only to the patentee’s right to exclude others during the life of the patent.
The applicant only disclosed a simple process that only applies to situations where a number of segments in a first stream is a smaller factor of a number of segments in a second stream. The applicant is trying to get coverage for switching between formats with more segments to formats with fewer segments and for switching between formats where the encoding is completely different such as MPEG4, Flash, or any other format disclosed in paragraph 26. It is plainly clear that the applicant did not disclose any technology for such embodiments “that ensures the public receives something in return for the exclusionary rights that are granted to the inventor by a patent” and should not receive claims which cover a scope that covers such technology. If the applicant wants to persist in challenging this rejection, the applicant needs to explain how the teachings of paragraph 49 apply to the reverse scenario where the 200 segment version switches to the 100 segment version where the 200 segment version is paused on an odd numbered segment that does not correspond to a segment of the 100 segment version and the applicant needs to explain how paragraph 49 applies to switching between MPEG4, Flash, or “any other format”.
The arguments regarding the prior art are moot in view of the new grounds of rejection. The new mapping has addressed arguments made on 9/23/2025 regarding these references.
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 1-29 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 and 15 feature the following amendment:
sending, to the second user device, a second segment of the second version, 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.
Claim 8 features the following amendment:
send, to the second user device, a second segment of the second version, 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.
The applicant is using a “wherein” clause to further modify and limit the action of “sending” by stating that a second segment is determined as part of the action of sending. The applicant did not disclose that the determination of a second segment is part of a sending action. The applicant disclosed determining a second segment of a second version and sending a second segment of the second version as discrete steps separated by other steps (see paragraphs 49 and 50 and steps 645, 650, 655, and 660 of Figure 6). There is no support for the amendment which uses a wherein clause which claims the action of determining is part of the action of sending. The applicant should claim these actions as discrete steps as disclosed.
Written Description Issue #2
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 21-29 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 sending, to the second user device, 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); 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, wherein the second version is different from the first version (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 base don a relative position of a first segment with a plurality of segments that comprise the first version of content (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.
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
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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