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 1-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7-10, 12-14 and 19-34 of U.S. Patent No. 11832024 B2 [IDS dated 05/06/2024]. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the invention recited in claims 1, 17 and 33 of the instant application is anticipated by an obvious variant of the elements recited in patent claims 1 and 19. Also, claims 2-7 and 9 of the instant application correspond to patent claims 2, 7-10, 12-14 and 20-34. Therefore, claims of the instant application 1-48 are not patently distinct from the earlier patent claims 1, 2, 7-10, 12-14 and 19-34 and as such are unpatentable for obvious-type double patenting.
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, 2, 5, 6, 9-13, 15-18, 21, 22, 25-29, 31-34, 37, 38, 41-45, 47 and 48 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tomsen et al. (US 20020147984 A1) in view of Boston et al. (US 20040003405 A1).
Regarding claim 1, Tomsen teaches a computing device (114) comprising:
one or more processors; and memory storing instructions that, when executed by the one or more processors (one or more software and hardware components within content source 114 – see FIGs. 5 and 7), configure the computing device to:
determine a current portion of a content item being output for display (the content source determines segment of the television program being viewed using the contextual information in an information request. See 0074, 0077);
determine, based on the current portion, a plurality of supplemental assets (the content source determines one or more supplemental content items related to the segment of the television program being viewed. See 0074, 0081); and
cause output of a user interface comprising a listing of the plurality of supplemental content assets (cause output of a user interface 504 comprising a listing of supplemental content items. See FIG. 8 and 0074, 0096).
Tomsen lacks to teach determining an order of the plurality of the supplemental assets based on content items recorded by a digital video recorder and the listing of the supplemental assets based on the order. Boston teaches determining the overall rank of programs based on programs recorded by a digital video recorder 2310 and the sponsored programs, and providing to the user a list of preferred programs 2350 sorted by a display order based on the overall rank. That is, Boston teaches determining an order of the plurality of the media assets based on at least content items recorded by a digital video recorder and the listing of the media assets based on the order. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify Tomsen by determining an order of the plurality of the media assets based on at least content items recorded by a digital video recorder and the listing of the media assets based on the order as taught or suggested by Boston in order to provide to the user the listing reflecting the degree of relevance of media assets and enhance the viewing experience.
Regarding claim 2, Tomsen teaches that wherein the instructions, when executed, configure the computing device to determine, based on receiving an indication of a user- activation of a supplemental assets search function, the current portion of the content item being output for display (determine the segment of the television program being viewed using the contextual information in an information request for supplemental content initiated by the user using “FIND” button on the remote control. See 0072, 0074, 0077, 0080, 0081).
Regarding claim 5, the combination of Tomsen and Boston teaches determining the plurality of supplemental content assets by: searching, based on the current portion of the content item, for the plurality of supplemental assets (the information request 502 contains contextual information from which the content source 114 may determine the television program or segment of the television program being viewed. Based upon the contextual information, the content source 114 may search a database and return a set of search results 504. See Tomsen: 0074); and generating the listing of the plurality of supplemental assets by determining, based on data indicating whether the content item was output for display at least once from the digital video recorder, that each of the plurality of supplemental content assets is to be included in the listing (generating the list of the supplemental items based on user preference - see Tomsen: 0085, 0116; determining each of the media assets in the listing based on the recorded program is retrieved. See Boston: FIG. 24 and 0142-0144, 0148).
Regarding claim 6, the combination of Tomsen and Boston teaches determining the order of the plurality of supplemental assets based on whether the content item was recorded by the digital video recorder (determining the order of the plurality of the media assets based on whether content item was recorded by a digital video recorder. See Boston: FIG. 8 and 0074, 0096).
Regarding claim 9, Tomsen teaches determining the plurality of supplemental content assets based on a request for supplemental content, e.g., request 502, and wherein the user interface indicates a response to the request for supplemental content, e.g., search results 504. (See FIG. 5, 0070, 0074).
Regarding claim 10, Tomsen teaches determining the current portion based on receiving a request for supplemental content; and determine the plurality of supplemental content assets by: performing, using data associated with the current portion, a search for the plurality of supplemental content assets (the information request 502 contains contextual information from which the content source 114 may determine the segment of television program being viewed. Based upon the contextual information, the content source 114 may search a database for the supplemental content. See 0070, 0074).
Regarding claim 11, Tomsen teaches determining the current portion based on receiving a request for supplemental content; and determine the plurality of supplemental content assets by: performing, using data associated with the current portion, a search for the plurality of supplemental content assets via the World Wide Web (performing a search via the Internet for the supplemental content using URL associated with the segment of television program being viewed. See 0074, 0087, 0100, 0116).
Regarding claim 12, Tomsen teaches determining the current portion based on receiving a request for supplemental content; and determine the plurality of supplemental content assets by performing, using data associated with the current portion, a search for the plurality of supplemental content assets, wherein: the request for supplemental content represents a user-activation of a search function, the search function is for supplemental content pertaining to what is depicted in the current portion, and the user interface is configured to provide results of the search function (the information request 502 contains contextual information from which the content source 114 may determine the segment of television program being viewed. Based upon the contextual information, the content source 114 may search a database and return a set of search results 504 for the supplemental content. See FIG. 5, 0070, 0074).
Regarding claim 13, Tomsen teaches determining a person depicted in the current portion; and perform, based on the person, a search that results in at least one video depicting the person (e.g., search for supplemental content related to actor/actress in a portion of the television program being viewed. See 0067, 0085, 0086).
Regarding claim 15, Tomsen in view of Negi teaches determining the order of the plurality of supplemental content assets by ordering the plurality of supplemental assets from highest to lowest importance as determined based on whether the content item was recorded by a digital video recorder and based on whether the content item was output for display at least once from the digital video recorder (determining an order of the plurality of related contents, from highest to lowest degree of relevance or importance, based on a viewing history of a user or content recorded by a digital video recorder 11; and the listing of the plurality of related contents based on the order, e.g., related links 107-1 to 107-4 as shown in FIG. 3. See Negi: FIG. 3; 0047, 0050, 0067, 0069, 0074, 0075, 0117).
Regarding claim 16, the combination of Tomsen and Boston teaches determining the order of the plurality of supplemental content assets based on at least one of: video-on-demand content that was output for display, or linear content that was output for display (e.g., supplemental content related to television broadcast - see Tomsen: abstract; determining the order of the plurality of media assets based on television broadcast - see Boston: See FIG. 21).
Regarding claims 17 and 33, see rejection of claim 1.
Regarding claims 18 and 34, see rejection of claim 2.
Regarding claims 21 and 37, see rejection of claim 5.
Regarding claims 22 and 38, see rejection of claim 6.
Regarding claims 25 and 41, see rejection of claim 9.
Regarding claims 26 and 42, see rejection of claim 10.
Regarding claims 27 and 43, see rejection of claim 11.
Regarding claims 28 and 44, see rejection of claim 12.
Regarding claims 29 and 45, see rejection of claim 13.
Regarding claims 31 and 47, see rejection of claim 15.
Regarding claims 32 and 48, see rejection of claim 16.
Claims 7, 23 and 39 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tomsen et al. (US 20020147984 A1) in view of Boston et al. (US 20040003405 A1) and further in view of Hiroi et al. (US 20070168867 A1).
Regarding claim 7, the combination of Tomsen and Boston lacks to teach the feature as claimed. Hiroi teaches determining the order of the plurality of media contents based on analytics data of the portion of video, i.e., feature data for frames in video data. See 0040, 0048, 0087, 0099. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify the combination of Tomsen and Boston by determining the order of the plurality of media contents based on analytics data of the portion of content item as taught or suggested by Hiroi to present the important parts of media contents for the user to easily select for viewing.
Regarding claims 23 and 39, see rejection of claim 7.
Claims 8, 14, 24, 30, 40 and 46 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tomsen et al. (US 20020147984 A1) in view of Boston et al. (US 20040003405 A1) and further in view of McIntire et al. (US 20070250901 A1) [IDS 05/06/2024].
Regarding claim 8, the combination of Tomsen and Boston lacks to teach the features as claimed. McIntire teaches mapping to items of supplemental content with respect to metadata included in the encoding in the primary media stream for particular segment of the media stream associated with segment identifier. See 0136, 0151, 01530239, 0371. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify the combination of Tomsen and Boston by inserting, into a data stream that comprises the content, metadata associated with a current portion of the content item; and determining, based on the metadata, data associated with the current portion of the content item, wherein determining the plurality of supplemental assets based on the data as taught or suggested by McIntire for the purposes of effectively providing the annotated media stream included supplemental content to the viewer.
Regarding claim 14, the combination of Tomsen and Boston lacks to teach the features as claimed. McIntire teaches that the content item comprises an event for a sport that is between at least two entities, e.g., sporting game, and wherein the supplemental asset is associated with the sport or one of the at least two entities. See 0223, 0288. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify the combination of Tomsen and Boston by including that the content item comprising an event for a sport that is between at least two entities, and wherein one or more of the plurality of supplemental assets is associated with the sport or one of the at least two entities as taught or suggested by McIntire in order to enhance the entertainment service.
Regarding claims 24 and 40, see rejection of claim 8.
Regarding claims 30 and 46, see rejection of claim 14.
Claims 3, 19 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tomsen et al. (US 20020147984 A1) in view of Boston et al. (US 20040003405 A1) and Wiser et al. (US 9154824 B2) and further in view of Lu et al. (US 8185523 B2).
Regarding claim 3, Tomsen in combination with Boston teaches determining the order of the plurality of supplemental assets based on whether the content item was recorded by the digital video recorder and based on whether a portion of the recorded content item was output for display (See Tomsen: FIG. 8 and 0074, 0096 and Boston: FIG. 8 and 24, 0074, 0096, and 0142-0144, 0148). Both lack to teach determining the order of the plurality of supplemental assets based on second content was output for display during a broadcast of the second content. However, Wiser teaches determining the order of the plurality of programming content for display by user’s viewing habits or routine in which the viewer watched at least linear content, e.g. broadcast programming content. See col. 38, lines 19-56, col. 47, line 52 to col. 48, line 19. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify the combination of Tomsen and Boston by including the feature of determination the order of the plurality of supplemental assets according to a media content was output for display during a broadcast of the media content as taught or suggested by Wiser in order to increase effectiveness of presenting the suitable content to the user.
The combination of Tomsen, Boston and Wiser lacks to teach determining the order of the plurality of supplemental content assets by performing a regression analysis. However, Lu teaches ranking items of search result based on the relevance module using regression analysis. See 0016-0019, 0021, 0027, 0044. It would have been obvious to one of ordinary skill in the art at the time invention was made to modify the combination of Tomsen, Boston and Wiser by ranking items based on the relevance module using regression analysis as taught or suggested by Lu to take advantage of data ranking efficiently using the powerful statistical technique.
Regarding claims 19 and 35, see rejection of claim 3.
Allowable Subject Matter
Claims 4, 20, and 36 would be allowable if rewritten to overcome the non-statutory double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 1-48 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NGOC K VU whose telephone number is (571)272-7306. The examiner can normally be reached Monday & Thursday: 9AM-6PM EST; Tuesday, Wednesday & Friday: out of office.
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, NATHAN FLYNN can be reached at 571-272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NGOC K VU/Primary Examiner, Art Unit 2421
Prosecution Insights