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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/8/2026 has been entered.
Claim Status
Claims 1-3, 5-12, and 15-20 are pending in this Office Action.
Claims 1, 9, and 18 are amended.
Claims 4 and 13-14 are cancelled.
Response to Arguments
The objections to the drawings are withdrawn based on Applicant’s amendments.
The terminal disclaimer filed on 1/8/2026 is approved. The double patenting rejection is withdrawn based on the terminal disclaimer.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12, at lines 2-5, recites “and further comprising buffering, at the second device, the control signal such that the second instruction is extracted by the second device simultaneously with the second device receiving the transformed media stream”. The examiner suggests to delete this limitation because claim 9 already includes “buffering, at the second device, the control signal such that the second instruction is extracted by the second device simultaneously with the second device receiving the transformed media stream”.
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.
Claims 18-20 are rejected under 35 U.S.C. 112(a) as based on a disclosure which is not enabling.
The disclosure does not enable one of ordinary skill in the art to practice the invention of claims 18-20 without receiving, at the first device, the control signal; transforming, at the first device, the media stream to generate the transformed media stream based on the first instruction contained in the control signal; and receiving, at the second device, the control signal, which are critical or essential to the practice of the invention but not included in the claims. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
These steps are essential to the invention because the second device would not be able to perform the step of “buffering, at the second device, the control signal such that the second instruction is extracted by the second device simultaneously with the second device receiving the transformed media stream” without these steps being included. Further par. 170 and Fig. 5 and 6A-6C show that these steps are critical to the claimed invention.
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.
Claims 1-3, 5-8, 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1, at line 8, recites “the first control instruction”. The claim previously recites a control signal (line 4) and a first instruction (line 6), however the claim does not previously recite “a first control instruction”. It is not clear if “the first control instruction” is referring to the control signal of line 4, the first instruction of line 6, or a first control instruction. Therefore, it is not clear what the scope of the claim is.
Claims 2-3 and 5-8 are rejected as being dependent on indefinite claim 1.
Claim 10, at line 1, recites “the controller is further configured to”, which suggests the claims previously recite the controller being configured to do some function. However, claims 9 and 10 do not previously recite the controller being configured in any way. Therefore, the scope of the claim is unclear, rendering the claim indefinite.
Claims 18-20 are rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
Claim 18 recites “a step of generating, by a controller, a control signal containing a first instruction corresponding to a first device and a second instruction corresponding to a second device” and then describes what the first instruction and the second instruction are configured to do. It then recites a step of “buffering, at the second device, the control signal such that the second instruction is extracted by the second device simultaneously with the second device receiving the transformed media stream”. However, essential steps are omitted between these steps, amounting to a gap between the steps. The omitted steps are:
receiving, at the first device, the control signal;
transforming, at the first device, the media stream to generate the transformed media stream based on the first instruction contained in the control signal; and
receiving, at the second device, the control signal.
These steps are essential to the invention because the second device would not be able to perform the step of “buffering, at the second device, the control signal such that the second instruction is extracted by the second device simultaneously with the second device receiving the transformed media stream” without these steps being included. Further par. 170 and Fig. 5 and 6A-6C show that these steps are critical to the claimed invention.
Claims 19-20 do not include the missing steps and are therefore rejected for the reasons given above with respect to claim 18.
Allowable Subject Matter
Claims 9, 11-12, and 15-17 are allowed.
Claims 1-3, 5-8, 10, and 18-20 would be allowable if the above 35 U.S.C. 112(a) and 112(b) rejections were to be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Boyd whose telephone number is (571)270-0676. The examiner can normally be reached Monday - Friday 9am-5pm PST.
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/ALEXANDER BOYD/Examiner, Art Unit 2424
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