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 .
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 1-20 of U.S. Patent No. 11,803,349. Although the claims at issue are
not identical, they are not patentably distinct from each other because claims of the instant application are generally broader than the claims of the parent Patent with wording variations. For example, claim 1 of parent includes limitation regarding transmitting, via the first computing device to a third computing device associated with a metadata service provider distinct from the media content service, a request for an audio setting specific to the first audio item, wherein the audio setting includes one or more of an equalization setting, a phase setting, or a volume setting that provides a suggested listening experience specific to the first audio item; after receiving the data and after transmitting the request via the first computing device to the third computing device, receiving, via the first computing device, the audio setting from the third computing device, wherein the data and the audio setting are received from different devices, and
wherein the data is received separately from the audio setting; and causing, via the first
computing device, the playback device to play the first audio item according to the audio setting.
Similarly claim 1 of the instant application includes transmitting, to a settings server, metadata
for the first audio content item, receiving, from the settings server, a first audio setting for the
first audio content based on the transmitted metadata, causing the second media playback device
to play the first audio content item according to the received first audio setting, receiving a
command to cause the second media playback device to stream a second audio content item from
a first streaming audio service, receiving, from the first streaming audio service, a second audio
setting for the second audio content item, and causing the second media playback device to
stream the second audio content item according to the received second audio setting. The claim
14 of the instant application also includes wherein the first audio setting includes one or more of
an equalization setting, a phase setting, or a volume setting that provides a suggested listening
experience specific to the first audio content item.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-18 of U.S. Patent No. 10,061,556. Although the claims at issue are
not identical, they are not patentably distinct from each other because claims of the instant
application are generally broader than the claims of the parent Patent with wording variations.
For example, claim 1 of parent includes limitation regarding receiving, via the playback device
over the one or more networks from the first computing device, one or more audio settings
associated with the first media item, the one or more audio settings corresponding to the first
media item and the one or more characteristics of the playback device. Similarly the instant
application's claim 1 includes receiving, from the settings server, a first audio setting for the first
audio content based on the transmitted metadata, causing the second media playback device to
play the first audio content item according to the received first audio setting, and claim 7
includes wherein the received first audio setting is further based on the one or more
characteristics of the second media playback device.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-30 of U.S. Patent No. 9,367,283. Although the claims at issue are not
identical, they are not patentably distinct from each other because claims of the instant
application are generally directed to similar subject matter as the claims of the parent Patent with
wording variations. For example, claim 1 of parent includes limitation regarding identifying,
via the computing device, an audio setting that corresponds to (i) the media item and (ii) one or
more characteristics of the playback device; causing, via the computing device, the source
computing device to transmit metadata associated with the media item to the playback device,
wherein the metadata indicates the identified audio setting; and causing, via the computing
device, the playback device to play the media item according to the identified audio setting.
Similarly the instant application's claim 1 includes receiving, from the settings server, a first
audio setting for the first audio content based on the transmitted metadata, causing the second
media playback device to play the first audio content item according to the received first audio
setting, and claim 7 includes wherein the received first audio setting is further based on the one
or more characteristics of the second media playback device.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. 11,853,184. Although the claims at issue are
not identical, they are not patentably distinct from each other because claims of the instant
application are generally directed to similar subject matter as the claims of the Patent with
wording variations. For example, the claims of the Patent are also directed toward applying
sound profiles such as equalization from external source based on audio content being played.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. 11,429,502. Although the claims at issue are
not identical, they are not patentably distinct from each other because claims of the instant
application are generally directed to similar but broader subject matter as the claims of the Patent
with wording variations. For example, the claims of the Patent are also directed toward applying
sound profiles such as equalization from external source based on audio content being played.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-29 of U.S. Patent No. 11,327,864. Although the claims at issue are
not identical, they are not patentably distinct from each other because claims of the instant
application are generally directed to similar but broader subject matter as the claims of the Patent
with wording variations. For example, the claims of the Patent are also directed toward applying
sound profiles such as equalization from external source based on audio content being played,
and adjusting the settings in the profile to generate a modified sound profile.
Response to Arguments
Applicant’s arguments, see pages 9-11, filed April 17, 2026, with respect to non-statutory double patenting and 35 USC § 103 rejections have been fully considered and are persuasive. The 35 USC § 103 rejection of claims 1-20 has been withdrawn but, the non-statutory double patenting is maintained.
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 GERALD GAUTHIER whose telephone number is (571)272-7539. The examiner can normally be reached 8:00 AM to 4:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CAROLYN R EDWARDS can be reached at (571) 270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GERALD GAUTHIER/Primary Examiner, Art Unit 2692
July 7, 2026
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