DETAILED ACTION
I. Introduction
This Office action addresses U.S. reissue application number 18/640,631 (“’631 Reissue Application” or “instant application”), having a filing date of 19 April 2024. Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The instant application is a reissue of U.S. Patent 8,170,394 (“’394 patent”) titled “MULTIMEDIA PLAYER DISPLAYING OPERATION PANEL DEPENDING ON CONTENTS”, which issued on 1 May 2012 with claims 1-9 (“issued claims”). The application resulting in the ‘394 patent was filed on 23 August 2006 and assigned U.S. patent application number 11/508,209 (“’209 application”).
II. Other Proceedings
On 13 October 2017, applicant Maxell, Ltd. filed a complaint1 against Blackberry Corporation and BlackBerry Ltd., alleging infringement of the claims of several patents, including the ‘394 patent. The litigation was dismissed on 22 April 2019.
On 15 October 2018, BlackBerry Corporation filed a petition for Inter Partes Review (“IPR”)2 of claims 2-9 of the ‘394 patent. On 29 March 2019, the Patent Trial and Appeal Board (“PTAB”) issued a Decision Granting Institution of the IPR. The IPR was terminated on 29 April 2019 following a joint motion to terminate the proceeding due to settlement.
On 30 March 2022, applicant Maxell, Ltd. filed a complaint3 against Lenovo Group, Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC, alleging infringement of the claims of several patents, including the ‘394 patent. The litigation was dismissed on 29 June 2023.
On 28 April 2022, the U.S. International Trade Commission (“USITC”) instituted an investigation 4 (see Fed. Reg. Vol. 87, No. 86, pages 26373-4, 4 May 2022), based upon a complaint, filed by applicant Maxell, Ltd., alleging violations of section 337 of the Tariff Act of 1930 by Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC, by reason of infringement of certain claims of several patents, including claims 2, 4, 5, 7, and 8 of the ‘394 patent. The investigation was terminated on 23 September 2022.
On 16 August 2022, the U.S. International Trade Commission (“USITC”) instituted an investigation5 (see Fed. Reg. Vol. 87, No. 161, pages 51445-6, 22 August 2022), based upon a complaint, filed by applicant Maxell, Ltd., alleging violations of section 337 of the Tariff Act of 1930 by Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC, by reason of infringement of certain claims of several patents, including claims 2, 4, 5, 7, and 8 of the ‘394 patent. The investigation was terminated on 26 July 2023.
On 18 August 2022, Motorola Mobility LLC filed a petition for Inter Partes Review (“IPR”)6 of claims 2-9 of the ‘394 patent. On 24 February 2023, the PTAB issued a Decision Granting Institution of the IPR. On 23 June 2023, Petitioner and Patent Owner filed a joint motion to terminate the IPR due to a license agreement. On 7 July, after joinder with IPR2023-00316, the PTAB issued an order terminating the proceedings with respect to petitioner Motorola Mobility LLC.
On 17 October 2022, the U.S. International Trade Commission (“USITC”) instituted an investigation 7 (see Fed. Reg. Vol. 87, No. 203, page 64110, 21 October 2022), based upon a complaint, filed by applicant Maxell, Ltd., alleging violations of section 337 of the Tariff Act of 1930 by VIZIO Inc., by reason of infringement of certain claims of several patents, including claims 2, 4, 5, 7, and 8 of the ‘394 patent. The investigation was terminated on 1 October 2023.
On 3 March 2023, VIZIO, Inc. filed a petition for Inter Partes Review (“IPR”)8 of claims 2-9 of the ‘394 patent, along with a petition for joinder to IPR2022-01348. On 6 July 2023, the PTAB issued a decision granting institution of IPR and the motion for joinder. The IPR was terminated on 13 September 2023 following a joint motion to terminate the proceeding due to settlement.
III. Priority
The ‘209 application claims priority to Japanese application JP 2005-248576, filed 30 August 2005. The Office notes that the priority claim has not been perfected through the filing of a certified English language translation of the Japanese priority document, which would establish enablement and written description support for the claims, as well as establishing the precise priority date for any given feature/limitation/claim. See MPEP §§ 216 and 2136(a)(II).
As a reissue application, the instant application is entitled to the priority date of the ’394 patent, the patent being reissued. That being the case, applicants are entitled to a priority date of 30 August 2005, the effective filing date of the ‘209 application, to the extent that the claims are fully supported by the foreign priority application. The priority dates will be determined on a claim-by-claim basis as necessary.
Because the effective filing date of the instant application is not on or after March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the earlier ‘First to Invent’ provisions will apply.
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 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.
IV. Claim Construction
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances where applicants have included lexicographic definitions, either express or implied. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which Applicants are acting as their own lexicographer. See MPEP § 2111.01(IV).
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which would invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
appreciation term
With respect to the claim limitation “appreciation term”, this limitation is not explicitly defined in applicant’s disclosure, although the specification does include the following:
“FIG. 13 shows examples of the attributes and language analysis results. Information on data added digital broadcasting includes up-to-date news, weather forecast and the like. These contents have a nature of an appreciation term and it is difficult to consider that these contents are referred to after, e.g., one month. In this embodiment, therefore, a content appreciation term is set beforehand in accordance with record days and times and information on the contents.” (emphasis added)
In addition, during original prosecution, in response to a rejection9 under 35 U.S.C. § 112(b) (citing the limitation “appreciation term of said digital contents”), applicant amended10 the claim to read “appreciation term indicating a life span of said digital contents.”
In view of this information, the Office will construe the term “appreciation term” as meaning “a length of time that a given digital content remains relevant to and accessible by a user.”
reproducer and output unit
With respect to the claimed “output unit”, the Office notes that the only “output unit” disclosed is the data input/output control unit 2 in the drawing figures. With respect to the claimed “reproducer”, this term does not appear anywhere in applicant’s disclosure.
However, it is also noted that all of the independent claims except for claim 1 include a reproducer for reproducing the content after it has been decoded, and an output unit to output the reproduced content as outputted video content.
Also relevant is the output portion of the drawing Figures, reproduced herein:
PNG
media_image1.png
256
484
media_image1.png
Greyscale
Given the claim limitations and contents of applicant’s disclosure, the Office will construe the claimed reproducer as analogous to the disclosed Image Rendering Unit 7. Since the claimed output unit outputs the reproduced digital video content, it is construed as a final stage of Image Rendering Unit 7, producing the output signal representing the “outputted digital video content”, represented in the drawing Figures as the arrow leaving Image Rendering Unit 7, and labeled “Image Output”.
The Office also notes that over the course of several IPRs and US International Trade Commission investigations, the proper construction of several claim terms was at issue.
distinct panels (claim 2)
mutually different (claim 4)
mutually differing functions (claim 7)
These limitations were incorporated into the claims to overcome a rejection11 wherein the prior art taught a panel having several buttons, and whereby in different situations, a subset of buttons were available for selection, with the remaining “unusable” buttons grayed out or otherwise disabled.
It has been argued that these limitations should be construed to require that all buttons and functions of the respective panels are “mutually different”, while applicant has argued that properly construed, the limitations would allow some buttons and/or functions to be common between the panels, as long as there is at least one button/function on each panel that the other panel does not include.
It has been also argued that applicant’s remarks12 supporting the claim amendment amounted to an express disavowal of claim scope, such that all buttons and functions of the panels must be mutually exclusive, because applicant “clearly and unmistakenly argu[ed] that the alleged invention comprises ‘operation panels’ having no shared buttons or functions.”13 However, upon review of the applicant’s remarks filed with the amendment of 8 December 2011, there appears to have been no such argument made, and so no express disavowal of claim scope.
It is also noted that at the same time the limitations at issue were incorporated into the claims, new dependent claims were also added14, including the limitations that “all the buttons are mutually different from each other” (claim 16, emphasis added, issued as claim 5), and “all the buttons of the linear content operation panel and the interactive content operation panel, provide mutually differing functions from each other” (claim 19, emphasis added, issued as claim 8). These dependent claims seem to reflect the scope that has been argued should be accorded to their respective parent claims.
In view of the dependent claims cited above, the doctrine of claim differentiation supports a broader interpretation. The Federal Circuit has pointed out that “[i]t is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous.”15 Were the limitations here to be accorded the narrower interpretation, however, dependent claims 5 and 8 would indeed be rendered “void, meaningless, or superfluous.”
The Office therefore adopts the broader construction, that some buttons and/or functions can be common between the panels, as long as there is at least one button/function on each panel that the other panel does not include, and not requiring that all buttons and functions of the panels must be mutually exclusive.
All remaining claim limitations will be construed in accordance with their plain and ordinary meaning.
V. Preliminary Amendment
Applicant’s preliminary amendment, filed 19 April 2024, has been received and entered into the record.
Applicant has amended claims 2, 4, and 7, and added new claims 10-102. Claims 1-102 are now pending in the application.
VI. Specification
The specification is objected to for the following informalities:
At col. 4, lines 14-15, the specification includes the following: “…when the flat becomes ‘0’, the linear content operation panel A4 is displayed.”
It is assumed that “flat” should be “flag”.
Appropriate correction is required.
In addition, the portion of the specification describing Fig. 13 with respect to the appreciation term, at col. 5, lines 30-46, this disclosure seems to be limited to the behavior of the system when interactive content (as opposed to linear content) is received and rendered. It is disclosed that if the contents are within the appreciation term, the data broadcasting is not displayed but instead the linear content operation panel is displayed. It is also disclosed that if the contents are within the appreciation term, the data broadcasting is displayed with the interactive content operation panel.
Applicant may have intended that at lines 37-38, if contents are outside the appreciation term, data broadcasting is not displayed but instead the linear content panel is displayed.
VII. Claim Rejections – 35 U.S.C. § 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 2-102 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.
With respect to independent claims 2, 4, 7, 20, 31, 51, 62, 82, and 93, these claims include the limitation that the linear content operation panel and the interactive content operation panel are displayed with the same outputted digital video content. There is no support in applicant’s disclosure for this limitation.
In particular, applicant’s specification discloses that the linear content operation panel A4 is displayed “[d]uring reproduction of linear contents” (emphasis added; see col. 3, lines 45-51), while it is also disclosed that the interactive content operation panel A5 is displayed “[d]uring reproduction of interactive contents” (emphasis added, see col. 3, lines 52-57).
There is no disclosure supporting the claimed display of the linear content operation panel and the interactive content operation panel with the same digital video content.
In addition, independent claims 2, 4, 7, 20, 31, 51, 62, 82, and 93 also include the limitation that “during concurrent display of the outputted digital video content with the linear content operation panel, the attribute information is used for graphically indicating an amount of the outputted digital video content a user has watched.” There is no support in applicant’s disclosure for this limitation.
In particular, while it is disclosed that there is attribute information associated with digital content, and Fig. 13 illustrates the attribute “View History (Image)” having exemplary content of “80% Done”, there is no disclosure that this constitutes an amount of outputted video a user has watched (as opposed to simply an indication of how much of the program has elapsed, particularly since this information is disclosed as being applicable to digital broadcast content.)
In addition, there is no supporting disclosure of the display of this attribute information on the display, graphically or otherwise. At col. 3, lines 7-9, it is disclosed that Fig. 13 is “an illustrative diagram showing digital content attributes”, but does not disclose that this attribute information is displayed to the user. See col. 5, lines 30-45, discussing the attribute information of Fig. 13, but failing to include any discussion of the “View History” attribute, nor the display of any attribute information to the user.
Independent claims 2, 4, 7, 20, 31, 51, 62, 82, and 93 also include the limitation that “a broadcast receiver for receiving broadcast content is not provided in the digital content reproducing apparatus and in one of the plurality of display states the content recorded by the data recorder is alternately displayed with the linear content operation panel and the interactive content operation panel, the one of the plurality of display states corresponding to a reproduction state in which broadcast content is not displayed in the display and the content recorded by the data recorder is reproduced to be alternately displayed with the linear content operation panel and the interactive content operation panel in the reproduction state.” There is no support in applicant’s disclosure for this limitation, and particularly for the alternate display of the linear content operation panel and the interactive content operation panel while content recorded by the data recorder is reproduced.
In their statement of support, applicant cites Fig. 7 and the corresponding passages in the specification. Therein, however, the only supporting disclosure for this entire limitation is that the broadcast receiving unit 1 is not provided (see col. 4, line 58 through col. 5, line 2).
Dependent claims 3, 5, 6, 8-19, 21-30, 32-50, 52-61, 63-81, 83-92, and 94-102 include the same deficiencies as their respective independent claims, and are likewise rejected.
Further regarding claims 11, 22, 33, 42, 53, 64, 73, 84, and 95, these claims include the limitation that the size of the linear content operation panel is different from the size of the interactive content operation panel. There is no support in applicant’s disclosure for this limitation.
The only disclosure regarding the sizes of the respective panels is at col. 2, lines 6-23, where it is explicitly disclosed that the plurality of user operation interfaces are of the same size. In their statement of support for the new limitation, applicant has cited Figs. 2-4, and col. 4, lines 25-27. However, the specification passages cited fail to disclose any information with respect to the size of the respective panels, and Figs. 3 and 4, providing illustrations of the respective panels, fail to include any scale with which the relative sizes could be judged. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.").
Regarding claims 13, 24, 35, 44, 55, 66, 75, 86, and 97, these claims include the limitation of a browser connected to the output unit. There is no support in applicant’s disclosure for this limitation.
Specifically, given the above-discussed construction of the “output unit”, this unit is limited to the output of “reproduced digital video content”. The only disclosure of any kind regarding a browser is a sublabel “browser” within Content Decode Unit 6. There is no disclosure, however, that the browser is “connected to the output unit” (nor could it be, as only hardware components can be “connected”, whereas the common understanding of a “browser” is that it is a software application16), only that it is, apparently, resident within Content Decode Unit 6.
Regarding claims 16, 27, 38, 47, 58, 69, 78, 89, and 100, these claims include the limitation that the network connector includes an ethernet connection to connect the digital content reproducing apparatus to the Internet. There is no support in applicant’s disclosure for this limitation.
While applicant’s disclosure does include network connection units in some of the drawings, having the additional sublabel “Ether”, there is no explicit disclosure of the use of an ethernet connector, and no disclosure at all regarding connection to the Internet.
In their statement of support, applicant cites Fig. 5 (including the aforementioned network connection unit), and col, 4, lines 37-43. However, this portion of the specification discloses only a connection to “a network”, and makes no mention of an ethernet connector, nor a connection to the Internet.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-102 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, under the current construction and understanding of the claim limitation “appreciation term”, it appears that the final two limitations may be reversed, which would render the claim indefinite.
Specifically, it is claimed that when receiving interactive contents and the content is within the appreciation time, the operation panel display unit displays the linear content operation panel, and that when receiving interactive contents and the content is outside the appreciation term, the operation panel display unit displays the interactive content operation panel.
It seems, based upon the best understanding of the disclosed invention, as if when receiving interactive content that is within the appreciation term, the interactive content operation panel should be displayed.
If this is not the case, further explanation in applicant’s response would be helpful in understanding the scope of claim 1.
With regard to independent claims 2, 4, 7, 20, 31, 51, 62, 82, and 93, these claims include limitations regarding a “broadcast receiver” and “broadcast content.” However, none of the independent claims include a broadcast receiver, and claims 2, 4, 7, 20, 51, and 82 explicitly include the limitation that a broadcast receiver is not provided. In the absence of a broadcast receiver, there is no broadcast content received, and so reference to such broadcast content renders the claims indefinite.
Further with regard to independent claims 2, 4, 7, 12, 20, 31, 51, 62, 82, and 93, these claims include the limitations “the first area” and “the second area” in the “display the outputted digital video content…” and the “alternatively display the outputted digital video content…” limitations. There is no antecedent basis for these terms. Applicant may have been referring to the “first display area” and “second display area” in the “a display…” limitation.
In addition, the “alternatively display…” limitation refers to the previously displayed “linear operation panel.” There is no antecedent basis for this term. Applicant may have been referring to the “linear content operation panel.”
Additionally, regarding claims 2, 4, 7, 12, 20, 23, 34, 51, 54, 65, 74, 82, 85, and 96, these claims include the limitation “the interactive content operation panel being displayed within the same bottom half where the linear operation panel was previously displayed” in the “alternatively display…” limitation. This renders the claims indefinite.
Specifically, the display of the linear content operation panel and the interactive content operation panel are claimed as alternatives, meaning that there is no sequence of display required, and in fact were only interactive content to be received, the linear content operation panel would never be displayed, meaning there would be no “previously displayed” linear operation panel.
Additionally, since the claims are directed to a digital content reproducing apparatus, including any implied or express ordering of steps (i.e., displaying one type of content and panel after another) would render the claims indefinite, since it is unclear whether the claim would be infringed by an apparatus capable of carrying out the claimed method steps, or if the actual execution of the method steps would be necessary for infringement.
Dependent claims 3, 5, 6, 8-19, 21-30, 32-50, 52-61, 63-81, 83-92, and 94-102 include the same deficiencies as their respective independent claims, and are likewise rejected.
Regarding claim 12, this claim includes the limitation “wherein alternatively displaying the outputted video content together with the interactive operation panel and the linear content operation panel includes…” There is no antecedent basis for this limitation.
Parent claim 2 instead includes the limitation “alternatively displaying the outputted video content concurrently with the interactive content operation panel and the linear content operation panel includes…”
Further regarding claim 12, this claim includes the limitation “the interactive operation panel.” There is no antecedent basis for this limitation.
Applicant may be referring to the “interactive content operation panel.”
Regarding claims 13, 24, 35, 44, 55, 66, 75, 86, and 97, these claims include the limitation of a browser connected to the output unit.
The only support for a browser is a sublabel on “Content Decode Unit 6” in the drawings. There is no mention of a browser in applicant’s specification.
It is initially noted that the commonly understood meaning of the term “browser” is a software application that runs on a computer17. There is nothing in applicant’s disclosure that would lead one to a different construction of the term.
Given this, a “browser” (i.e., software) cannot be “connected” to an “output unit” (i.e., hardware). Furthermore, given the above-discussed construction of the term “output unit”, the output unit’s only interface is with the reproducer, since it is claimed that it “outputs the reproduced digital video content.” This renders the claims indefinite.
Regarding claims 15, 26, 37, 46, 57, 68, 77, 88, and 99, these claims include the limitation that the functions of the linear content operation panel include the option to forward the outputted digital video content, and the option to play the digital video content. This renders the claims indefinite.
The option to “play” content would inherently require the content to move “forward.” Applicants may have intended to use the term “fast forward”, as is commonly used and explicitly disclosed at col. 3, line 50.
With respect to claims 19, 30, 50, 61, 81, and 92, these claims include the limitation that the broadcast receiver is a component that receives content via terrestrial television signals or broadcast television waves. This renders the claims indefinite.
As discussed above, none of the independent claims include a broadcast receiver, and some of the claims explicitly include the limitation that a broadcast receiver is not provided. In the absence of a broadcast receiver in the independent claims, including limitations with respect to a (non-existent) broadcast receiver in the dependent claims renders the claims indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12, 23, 34, 43, 54, 65, 74, 85, and 96 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, the claims include the limitation that the interactive content operation panel is displayed in the same bottom half where the linear content operation panel was previously displayed. This limitation already exists in the respective parent claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
VIII. Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR § 1.175 and MPEP § 1414) because on page 2, applicant has checked the box indicating that the original patent was filed under 37 CFR § 1.46 by the assignee. However, the original patent application was filed on 23 August 2006, which was prior to the AIA . Therefore, the original application could not have been filed under § 1.46 by the assignee. This renders the reissue declaration defective.
A new reissue declaration is required in response to this Office action.
IX. Rejections under 35 U.S.C. § 251
Claims 1-102 are rejected as being based upon a defective reissue declaration under 35 U.S.C. § 251 as set forth above. See 37 CFR § 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
X. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 4, 51, and 62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,470,379 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 3 of U.S. Patent 11,470,379 includes all of the limitations of instant claims 4, 51, and 62, with the exception of certain features (e.g., content decoder, reproducer, output unit, etc.) that would be inherent in a digital content reproducing system as in claim 3, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 4, 51, and 62 are therefore obvious over reference claim 3 in view of LaJoie.
Claims 7, 82, and 93 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,470,379 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 6 of U.S. Patent 11,470,379 includes all of the limitations of instant claims 7, 82, and 93, with the exception of certain features (e.g., content decoder, reproducer, output unit, etc.) that would be inherent in a digital content reproducing system as in claim 3, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 7, 82, and 93 are therefore obvious over reference claim 6 in view of LaJoie.
Claims 4, 51, and 62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,812,091 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 1 of U.S. Patent 11,812,091 includes all of the limitations of instant claims 4, 51, and 62, with the exception of certain features (e.g., reproducer, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 1, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 4, 51, and 62 are therefore obvious over reference claim 1 in view of LaJoie.
Claims 7, 82, and 93 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,812,091 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 7 of U.S. Patent 11,812,091 includes all of the limitations of instant claims 7, 82, and 93, with the exception of certain features (e.g., reproducer, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 7, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 7, 82, and 93 are therefore obvious over reference claim 7 in view of LaJoie.
Claims 48, 59, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,812,091 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 14 of U.S. Patent 11,812,091 includes all of the limitations of instant claims 48, 59, and 70, with the exception of certain features (e.g., reproducer, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 14, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 48, 59, and 70 are therefore obvious over reference claim 14 in view of LaJoie.
Claims 79, 90, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,812,091 in view of U.S. Patent 5,850,218 to Mike L. LaJoie et al. (“LaJoie”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 17 of U.S. Patent 11,812,091 includes all of the limitations of instant claims 79, 90, and 101, with the exception of certain features (e.g., reproducer, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 17, certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29), and the claimed viewing history attribute information.
LaJoie, however, discloses the display of a program information banner, including information such as program name, running time, elapsed time, etc. (see elapsed time 176 on Fig. 8, and col. 5, lines 10-22).
It would have been obvious to a POSITA at the time of the invention to maintain and display information such as running time and elapsed time to a user, so that they can determine how much of the current program has already been rendered and how much remains.
Instant claims 79, 90, and 101 are therefore obvious over reference claim 17 in view of LaJoie.
Claims 28 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,924,502. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 1 of U.S. Patent 11,924,502 includes all of the limitations of instant claims 28 and 39, with the exception of certain features (e.g., content decoder, etc.) that would be inherent in a digital content reproducing apparatus as in claim 1, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 28 and 39 are therefore obvious over reference claim 1.
Claims 48, 59, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,924,502. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 4 of U.S. Patent 11,924,502 includes all of the limitations of instant claims 48, 59, and 70, with the exception of certain features (e.g., content decoder, etc.) that would be inherent in a digital content reproducing apparatus as in claim 4, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 48, 59, and 70 are therefore obvious over reference claim 4.
Claims 79, 90, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,924,502. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 6 of U.S. Patent 11,924,502 includes all of the limitations of instant claims 79, 90, and 101, with the exception of certain features (e.g., content decoder, etc.) that would be inherent in a digital content reproducing apparatus as in claim 6, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 79, 90, and 101 are therefore obvious over reference claim 6.
Claims 79, 90, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over either of claims 3 or 13 of U.S. Patent No. 11,974,007. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claims 3 and 13 of U.S. Patent 11,974,007 both include all of the limitations of instant claims 79, 90, and 101, with the exception of certain features (e.g., output unit, etc.) that would be inherent in a digital content reproducing apparatus as in either of claims 3 or 13, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 79, 90, and 101 are therefore obvious over reference claims 3 and 13.
Claims 28 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,219,202. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 1 of U.S. Patent 12,219,202 includes all of the limitations of instant claims 28 and 39, with the exception of certain features (e.g., input unit, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 1, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 28 and 39 are therefore obvious over reference claim 1.
Claims 48, 59, and 70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,219,202. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 2 of U.S. Patent 12,219,202 includes all of the limitations of instant claims 48, 59, and 70, with the exception of certain features (e.g., input unit, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 2, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 48, 59, and 70 are therefore obvious over reference claim 2.
Claims 79, 90, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,219,202. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 4 of U.S. Patent 12,219,202 includes all of the limitations of instant claims 79, 90, and 101, with the exception of certain features (e.g., input unit, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 4, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 79, 90, and 101 are therefore obvious over reference claim 4.
Claims 48, 59, and 70 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending application 19/005,119. This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims under examination are obvious over the reference claims.
Reference claim 2 of copending application 19/005,119 includes all of the limitations of instant claims 48, 59, and 70, with the exception of certain features (e.g., input unit, output unit, etc.) that would be inherent in a digital content reproducing apparatus as in claim 2, and certain features (e.g., data recorder) that would have been obvious to include (see ‘394 patent, col. 1, lines 21-29).
Instant claims 48, 59, and 70 are therefore obvious over reference claim 2.
XI. 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.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. § 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR § 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2-17, 19-28, 30-39, 41-48, 50-59, 61-70, 72-79, 81-90, and 92-101 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over U