DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 4-6 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. These claims are essentially the claims 2-4 (See claims filed 9/16/2020 of application 17/023,344) that had been previously rejected under the same statutes in the parent case (See office action 12/01/2020) and since had been amended to obviate the rejection.
Claims 4 and 5 recite limitations that the playback device receives an indication that the computing device detected the tone. Applicant’s specification does not provide detail on the playback device receiving an indication that the tone/signature has been detected by the computing device.
Claim 6 recites limitations directed to discontinuing transmission of the audio tone based on receiving an indication that the computing device receives an indication that the computing device detected the audio tone. Applicant’s specification does not provide detail on the playback device receiving an indication that the tone/signature has been detected by the computing device. Further, Applicants specification does not provide detail on discontinuation of the transmission of the tone.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 4-6, 10, 12-13, 15, and 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Dragt (US 2010/0223138).
Claim 1
Dragt teaches a playback device comprising (Tone Data Source 210 or mobile device 205 or 110 in Fig. 2; [0025], Examples of mobile devices include, but are not limited to, cellular phones, iPhones, smart phones, personal digital assistants (PDA's), pagers, digital audio players, handheld portable computing devices, digital tablets, laptop computers. etc. [0087] Examples of data sources include a personal computer, a mobile device, a data source similar to the data source 120 described above with reference to FIG. 1; [0094], In other embodiments of the invention, the data source 210 may receive tone data in a broadcast stream, such as a radio or television broadcast stream, and the data source may output the tone data as a tone in the audio output of the data source 210. For example, a television broadcast signal may include embedded tone information that is output by one or more speakers of a television as part of the audio output of the received television broadcast signal.):
a network interface (for example, 244 of Fig. 2); at least one first processor (241); data storage (242) comprising at least one non-transitory computer-readable medium; and program instructions stored on the data storage that are executable by the at least one processor [0208 - 0209] such that the playback device is configured to:
establish, via the network interface, a communication path with a computing device (for example mobile device such as 205 of Fig. 2 via network 230; [0201] At block 1025, which may be optional in various embodiments of the invention, a request for a tone may be received by the tone transmission device 105 from a mobile device, such as the mobile device 110 shown in FIG. 1. A request for a tone may be received in a wide variety of different manners as desired in various embodiments of the invention. For example, a request for a tone may be received via one or more suitable networks, for example, a cellular network, radio frequency network, Bluetooth network, Wi-Fi network, local area network, wireless network, etc.);
receive, from the computing device over the communication path, an indication to begin transmitting an audio tone that encodes identifying information for the playback device ([0087] In certain embodiments, tone data and/or tones may be communicated from a data source 210 to a mobile device 205 in response to the receipt, from the mobile device 205, of a request for the tone data and/or tones. [0090], For example, the host module 247 may facilitate and/or control the receipt, from a mobile device 205, of a request for tone data 245, the processing of the received requests to access the tone data 245, and/or the communication of tone data 245 to the mobile device 205. [0116] At block 440, the received tone may be processed by the mobile device 320 in order to extract one or more location identifiers included in the received tone. The one or more location identifiers may identify one or more data sources),
wherein the identifying information, when detected in the audio tone by the computing device, causes the computing device to update a graphical user interface of the computing device to include a representation of the playback device ([0049] Additional information associated with a tone may be utilized by a mobile device 110 for a wide variety of different purposes as desired in various embodiments of the invention…. the additional information may facilitate the display of information that allows a user of the mobile device to order, purchase, or reserve the product or service. [0169] [0169] Additionally, as desired in various embodiments, the mobile device 750 may display at least a portion of the additional information 765 to a user of the mobile device 750 via one or more suitable output devices, for example, a display… The mobile device 750 may also be utilized to communicate user preferences and/or other user input information associated with the tone 745 and/or the additional information 765. For example, a user may enter a rating for a product, radio show, television show, etc. that is associated with the tone 745, and the input rating information may be communicated to one or more other entities, such as, an information source 760, 775, a distributor of a product, a manufacturer of a product, a retailer of a product, a broadcaster of a show, etc. Examiner notes the display is updated with content associated with the representation of the playback device, i.e. the radio show or television show the playback device is playing); and
based on the received indication, begin transmitting the audio tone that encodes identifying information for the playback device ([0094] a data source 210 may be operable to output a tone for receipt by the first mobile device 205…The data source 210 may output the tone via one or more suitable output devices 249, for example, one or more speakers. Examiner notes the tone data sources function as tone transmission devices; [0024] As used herein, the term "tone transmission device" may be any device, system, apparatus, or combination thereof that facilitates the communication of a tone to a mobile device.).
Claim 4
Dragt teaches the playback device of claim 1, further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: after beginning to transmit the audio tone, receive an indication that the computing device detected the audio tone (for example 1045 of Fig. 10).
Claim 5
Dragt teaches the playback device of claim 4, wherein the program instructions that are executable by the at least one processor such that the playback device is configured to receive an indication that the computing device detected the audio tone comprise program instructions that are executable by the at least one processor such that the playback device is configured to receive, from the computing device via the communication path with the computing device, the indication that the computing device detected the audio tone ([0204] At block 1045, which may be optional in various embodiments of the invention, an indication that the tone was received by the mobile device 110 may be received by the tone transmission device 110 from the mobile device 110. The indication of receipt of the tone may be received in a similar manner as that utilized to receive a request for a tone or an indication that a tone may be received by the mobile device 110. [0205], The communication of the indication of receipt to another entity or system may be facilitated via any number of suitable networks as desired in various embodiments, for example, a local area network, wide area network, cellular network, the Internet, a Bluetooth enabled network, a Wi-Fi network, a radio frequency network, etc.).
Claim 6
Dragt teaches the playback device of claim 4, further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: based on receiving the indication that the computing device detected the audio tone, discontinue transmitting the audio tone (See output tone at 430 and receive tone at 435 of Fig 4A and process ends in Fig. 4B; Similarly output tone at 1040, and receive indication at 1045 and process ends in Fig. 10).
Claim 10
Dragt teaches the playback device of claim 1, wherein the identifying information in the audio tone is modulated about a carrier frequency ([0139] The incorporation of a tone into the broadcast stream may include the insertion of the tone into the broadcast stream utilizing a wide variety of different techniques and/or methods, for example, modulation, the insertion of a digital packet of information that includes the tone, the transmission of the tone in a separate channel or carrier signal, etc.).
Claim 12
Dragt teaches the playback device of claim 1, wherein the audio tone is outside a human audible frequency range ([0023], it may be desirable to have the tone be produced at a frequency range that is not detectable by the naked ear).
Claim 13
Dragt teaches the playback device of claim 12, wherein the audio tone is a first audio tone, the playback device further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: while transmitting the first audio tone, play back a second audio tone that is inside the human audible frequency range ([0194], Additionally, in certain embodiments, one or more tones may be utilized to directly communicate information between a transmitting device and a receiving device. For example, a message may be communicated directly to a receiving device via a plurality of tones. [0023], Tones in accordance with embodiments of the invention may have a wide variety of different frequencies and/or amplitudes as desired. For example, in some embodiments, a tone may be a sound wave that is within a range that may be detected by the human ear, for example, a sound wave with a frequency between approximately 20 hertz and approximately 20 kilohertz. In such an example embodiment of the invention, it may be desirable to have the tone be produced at a frequency range that is not detectable by the naked ear for at least a significant portion of the human population (e.g., a frequency range of 17 kilohertz-20 kilohertz).).
Claim 15
This claim recites substantially the same limitations as those provided in claim 1 above, and therefore it is rejected for the same reasons.
Claim 20
This claim recites substantially the same limitations as those provided in claim 1 above, and therefore it is rejected for the same reasons.
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 2-3, 7-9, 11, 14, and 16-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Dragt (US 2010/0223138) in view of Kent et al. (U.S. Patent Application Publication 2012/0214416).
Claim 2
Dragt teaches the playback device of claim 1, but may not clearly detail further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: after beginning to transmit the audio tone, receive, from the computing device, a command related to playback of audio content.
Kent teaches after beginning to transmit the audio tone, receive, from the computing device, a command related to playback of audio content ([0172] In another embodiment, sound wave signals may be used to create a custom interface for another device. For example, a television could provide information on the remote control user interface over sound waves to another device. The device could then use that information to create a user interface on the device's screen that the user could interact with for controlling the television. Once a connection is established, data may be exchanged between the device and the television using sound wave signals or a data network.)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the features of Kent to the system disclosed by Dragt, because doing so would have allowed proximally located devices to conveniently communicate with each other, create and sustain a connection, and exchange information ([0009] of Kent).
Claim 3
The combination teaches the playback device of claim 2, further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: based on receiving the command related to playback of audio content, retrieve the audio content from an audio source ([0121] of Kent, Once the connection between the two mobile devices 10 has been established, for example the two mobile devices 10 are joined in the same group 510, the mobile devices 10 may begin sending data back and forth. [0168] Similar to radio stations, in other embodiments, televisions may also be used to send additional data to their viewers' devices. For example, a television channel may send additional sound waves, in addition to the speech and music content. These sound waves may include additional information about the television presentation or commercial. ); and play back the audio content ([0168] of Kent, Similar to radio stations, in other embodiments, televisions may also be used to send additional data to their viewers' devices. For example, a television channel may send additional sound waves, in addition to the speech and music content. These sound waves may include additional information about the television presentation or commercial. For example, a food channel may send along the recipe or website URL for the current recipe being presented on the channel. A television commercial for a product may send information on the product, a website URL, or a coupon. [0172] In another embodiment, sound wave signals may be used to create a custom interface for another device. For example, a television could provide information on the remote control user interface over sound waves to another device. The device could then use that information to create a user interface on the device's screen that the user could interact with for controlling the television. Once a connection is established, data may be exchanged between the device and the television using sound wave signals or a data network.).
Claim 7
Dragt teaches the playback device of claim 1, further comprising program instructions stored on the data storage that are executable by the at least one processor such that the playback device is configured to: after beginning to transmit the audio tone, receive, from the computing device, configuration information for the playback device ([0179] At block 845, the received tone may be processed by the mobile device 750 in order to extract one or more location identifiers included in the received tone. The one or more location identifiers may identify one or more data sources and/or one or more memory locations at the one or more data sources at which additional information associated with the received tone is stored…A location identifier for a memory location may be communicated to a data source and utilized by the data source to identify additional information associated with a tone that is stored at the data source.). However, Dragt may not clearly detail based on the received configuration information, update a configuration of the playback device.
Kent teaches based on the received configuration information, update a configuration of the playback device ([0172] In another embodiment, sound wave signals may be used to create a custom interface for another device. For example, a television could provide information on the remote control user interface over sound waves to another device. The device could then use that information to create a user interface on the device's screen that the user could interact with for controlling the television. Once a connection is established, data may be exchanged between the device and the television using sound wave signals or a data network.).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the features of Kent to the system disclosed by Dragt, because doing so would have allowed proximally located devices to conveniently communicate with each other, create and sustain a connection, and exchange information ([0009] of Kent).
Claim 8
The combination teaches the playback device of claim 7, wherein the program instructions that are executable by the at least one processor such that the playback device is configured to receive, from the computing device, the configuration information comprise program instructions that are executable by the at least one processor such that the playback device is configured to receive, from the computing device via the communication path with the computing device, the configuration information ([0205] of Dragt, The communication of the indication of receipt to another entity or system may be facilitated via any number of suitable networks as desired in various embodiments, for example, a local area network, wide area network, cellular network, the Internet, a Bluetooth enabled network, a Wi-Fi network, a radio frequency network, etc.).
Claim 9
The combination teaches the playback device of claim 7, wherein the configuration information comprises network configuration information ([0097] of Kent, Still yet other embodiments may be used for other connections, such as a Virtual Private Network, where the credentials should only be known by those in that location. Still other embodiments may be used to configured and initiate other transport mediums, such Bluetooth and Ultra-wideband just to name a few.).
Claim 11
Dragt teaches the playback device of claim 1, except wherein the identifying information comprises a model of the playback device.
Kent teaches wherein the identifying information comprises a model of the playback device (Kent also details inclusion of identifier data in the communication, including information about the mobile device as well as elements such as a MAC address; para 50; see also the details of the data in the database depicted in Fig. 5 of Kent).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the features of Kent to the system disclosed by Dragt, because doing so would have allowed proximally located devices to conveniently communicate with each other, create and sustain a connection, and exchange information ([0009] of Kent).
Claim 14
Dragt teaches the playback device of claim 1, except wherein computing device is installed with a controller application configured to control media playback by the playback device.
Kent teaches wherein computing device is installed with a controller application configured to control media playback by the playback device ([0172] In another embodiment, sound wave signals may be used to create a custom interface for another device. For example, a television could provide information on the remote control user interface over sound waves to another device. The device could then use that information to create a user interface on the device's screen that the user could interact with for controlling the television. Once a connection is established, data may be exchanged between the device and the television using sound wave signals or a data network.)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the features of Kent to the system disclosed by Dragt, because doing so would have allowed proximally located devices to conveniently communicate with each other, create and sustain a connection, and exchange information ([0009] of Kent).
Claim 16
This claim recites substantially the same limitations as those provided as combination in claims 2 and 3 above, and therefore it is rejected for the same reasons.
Claim 17
This claim recites substantially the same limitations as those provided in claim 7 above, and therefore it is rejected for the same reasons.
Claim 18
This claim recites substantially the same limitations as those provided in claim 8 above, and therefore it is rejected for the same reasons.
Claim 19
This claim recites substantially the same limitations as those provided in claim 9 above, and therefore it is rejected for the same reasons.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11,729,568. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are generally broader than the Patent with wording variations. Sample comparison is provided below.
Instant Application
Patent 11,729,568
1.A playback device comprising: a network interface;
establish, via the network interface, a communication path with a computing device;
receive, from the computing device over the communication path, an indication to begin transmitting an audio tone that encodes identifying information for the playback device,
wherein the identifying information, when detected in the audio tone by the computing device, causes the computing device to update a graphical user interface of the computing device to include a representation of the playback device; and
based on the received indication, begin transmitting the audio tone that encodes identifying information for the playback device.
16. A first computing device comprising: a network interface…
establish, via the network interface, a communication path with the second computing device;
receive, from the second computing device over the communication path, an indication to begin transmitting an audio tone comprising modulated frequencies that encode identifying information for the first computing device,
wherein the identifying information, when detected in the audio tone by the second computing device, causes the second computing device to update a graphical user interface of the second computing device, wherein the updated graphical user interface of the second computing device includes a representation of the first computing device; and
based on the received indication, begin transmitting the audio tone comprising modulated frequencies that encode identifying information for the first computing device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS H MAUNG whose telephone number is (571)270-5690. The examiner can normally be reached Monday-Friday, 9am-6pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn R. Edwards can be reached at 1-(571) 2707136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS H MAUNG/Primary Examiner, Art Unit 2692
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692