DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 18, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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. The examiner must, however, address arguments presented by the applicant which are still relevant to references being applied.
Applicant submits that Pearson does not teach detecting or monitoring a “quiescent period.” Remarks, p. 7.
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over a combination of Pearson et al. (US 2006/0179466), Brun et al. (US 2007/0168430), and Velazquez et al. (US 2010/0138858).
As presented in claim rejections under 35 USC §103, Pearson teaches detecting that a remote is in use based on a control signal from the remote ([0025], “FIG. 1 also depicts a remote control device 132 that can communicate with the set top box 104 to allow user interaction with the system 100 during operation. The remote control device 132 can communicate with the set top box 104 via one or more infrared (IR) signals, radio frequency (RF) signals, or other wireless signals.” Fig. 1).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “comparing a duration of such quiescence to any predefined quiescence threshold,” Remarks p. 7) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11277671. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to a species or sub-genus claimed in patent claim 1, i.e., the entire scope of the patent claim 1 falls within the scope of the claim 1 of the application.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11601726. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to a species or sub-genus claimed in patent claim 1, i.e., the entire scope of the patent claim 1 falls within the scope of the claim 1 of the application.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12075131. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to a species or sub-genus claimed in patent claim 1, i.e., the entire scope of the patent claim 1 falls within the scope of the claim 1 of the application.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11277671. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to a species or sub-genus claimed in patent claim 11, i.e., the entire scope of the patent claim 11 falls within the scope of the claim 8 of the application.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11601726. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to a species or sub-genus claimed in patent claim 12, i.e., the entire scope of the patent claim 12 falls within the scope of the claim 8 of the application.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12075131. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to a species or sub-genus claimed in patent claim 8, i.e., the entire scope of the patent claim 8 falls within the scope of the claim 8 of the application.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11277671. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 is generic to a species or sub-genus claimed in patent claim 16, i.e., the entire scope of the patent claim 16 falls within the scope of the claim 14 of the application.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11601726. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 is generic to a species or sub-genus claimed in patent claim 17, i.e., the entire scope of the patent claim 17 falls within the scope of the claim 14 of the application.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12075131. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 is generic to a species or sub-genus claimed in patent claim 10, i.e., the entire scope of the patent claim 10 falls within the scope of the claim 14 of the application.
In response to Applicant’s assertion that a terminal disclaimer has previously been filed (Remarks, p. 6), the examiner notes that a terminal disclaimer has not been received.
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, 4-5, 7-8, 11, 13-14, 17-18, and 20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over a combination of Pearson et al. (US 2006/0179466), Brun et al. (US 2007/0168430), and Velazquez et al. (US 2010/0138858).
Regarding claim 1, Pearson teaches a method performed by a set-top box ([0022], “In yet another embodiment, a set top box is described and includes a processor and a computer readable medium that is accessible by the processor. A computer program is embedded within the computer readable medium. … Additionally, the computer program includes instructions to display a messaging inbox graphical user interface (GUI). The messaging inbox GUI includes one or more received email messages.”), the method comprising:
detecting that a remote is in use based on a control signal from the remote ([0025], “FIG. 1 also depicts a remote control device 132 that can communicate with the set top box 104 to allow user interaction with the system 100 during operation. The remote control device 132 can communicate with the set top box 104 via one or more infrared (IR) signals, radio frequency (RF) signals, or other wireless signals.” Fig. 1);
detecting a start of a quiescent period during which the remote is no longer in use based on the control signal not being received ([0047], Fig. 15. That is, the period of inactivity following step 1512 (read mail) and step 1524 (present mail) when PIN is not enabled.);
identifying a plurality of messages stored in a memory of the set-top box ([0024], [0027], “In a particular embodiment, during operation, the email module 128 within the set top box 104 can poll the email messaging server 120 to determine if any authorized users of the set top box 104 have any email messages. If so, the email messages can be delivered to the set top box 104….” [0039], Figs. 1, 11); and
controlling a display to display the plurality of messages ([0046], “Continuing to decision step 1512, the set top box determines whether a user has selected to read his or her email messages. … If the user has indicated that he or she would like to read the email messages, the method proceeds to decision step 1514 and the set top box determines whether PIN access is enabled for the user.” [0047], “Returning to decision step 1514, if PIN access is not enabled, the method skips the PIN entry steps and moves directly to block 1524 where the email message is presented to the user.” Fig. 15).
While Pearson teaches controlling a display to display the plurality of messages, Pearson does not expressly teach controlling a display to display the plurality of messages in order of their priority in response to the quiescent period having continued for a predefined quiescence time period.
Brun provides a teaching for displaying a plurality of messages in order of their priority ([0003], [0029], “An inbox viewer 68 enables the user to view the list of email messages stored in the inbox 64 sorted by a selected sorting criteria, such as…a ‘by priority score’ sorting criterion 74. The ‘by priority score’ sorting criterion 74 sorts the email messages by the priority scores assigned to the email messages by the action priority scorer 56.”).
In view of Brun’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Pearson to include controlling the display to display the plurality of messages in order of their priority in order to allow users to view messages in order of importance (i.e., priority) (see Brun, [0003]).
The combination teaches the limitations specified above; however, the combination does not expressly teach that controlling the display to display is in response to the quiescent period having continued for a predefined quiescence time period.
Velazquez teaches controlling a display to display a message in response to a quiescent period having continued for a predefined quiescence time period ([0013], “In some embodiments, selectable inputs (e.g., soft buttons) are provided on a television display or remote control to select a snooze feature and possibly set a snooze period. … Such EAS messages may be delayed for a selectable or predetermined time period. Additionally, in some instances, the user may elect to view the EAS message at a later time during the transmission of the applicable multimedia program, such as during a commercial or at the end of the program that was being displayed when the EAS message was initially provided. In some embodiments, user input automatically delays EAS messages until the presence of a commercial (or other part of a multimedia program such as the end of the applicable program) is detected.” [0052], “STB 221 is enabled to process user input, process EAS alert notification data, and permit a user to delay the presentation of EAS alert notification messages for configurable periods of time (i.e., snooze periods).” [0058], “As shown, method 400 includes providing (block 401) a multimedia program for display, receiving (block 403) an emergency alert, and providing (block 405) an overlay message indicative of the emergency alert for display. If a user provides input to snooze the overlaid emergency alert message (block 407 and block 413), the overlay message is temporarily no longer provided (block 409) and then after a snooze timeout or other occurrence, such as the start of a commercial, the overlay message is once again provided (block 411). If a user provides input to dismiss the overlaid emergency alert message (block 407 and block 413), the overlay message is no longer provided (block 415). If no user input is detected for dismissing or snoozing the emergency alert message, method 400 continues to provide (block 401 and block 405) the multimedia program with the overlaid message indicative of the emergency alert.” Figs. 1 and 4.).
In view of Velazquez’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the combination such that controlling the display to display is in response to the quiescent period having continued for a predefined quiescence time period. The modification would serve to enable users to prevent or minimize interruptions to programming content (see Velazquez, [0012]).
Regarding claim 8, Pearson teaches a set-top-box ([0024], “FIG. 1 indicates that the set top box 104 includes a processor 122 in which logic, such as user interface logic, can be executed.”), comprising: a remote interface that receives control signals from at least one remote ([0024], “FIG. 1 also shows that the set top box 104 can include a receiver 126, e.g., an IR/RF receiver, that is configured to receive one or more IR/RF signals from a remote control device.”); and at least one processor ([0024], “FIG. 1 indicates that the set top box 104 includes a processor 122 in which logic, such as user interface logic, can be executed.”); and at least one processor ([0024], “FIG. 1 indicates that the set top box 104 includes a processor 122 in which logic, such as user interface logic, can be executed.”) configured to perform the method of claim 1. The rejection of claim 1 under 35 USC §103 is similarly applied to the remaining limitations of claim 8.
Regarding claim 14, Pearson teaches a non-transitory computer-readable storage medium comprising computer-executable instructions for execution by a processor, that, when executed, cause the processor to perform the method of claim 1 ([0022], [0024]). The rejection of claim 1 under 35 USC § 103 is similarly applied to the remaining limitations of claim 14.
Regarding claims 4 and 17, the combination further teaches storing the plurality of messages in the memory until the remote becomes active (Pearson: [0024], [0027], “In a particular embodiment, during operation, the email module 128 within the set top box 104 can poll the email messaging server 120 to determine if any authorized users of the set top box 104 have any email messages. If so, the email messages can be delivered to the set top box 104….” [0039], “A user can navigate between the soft buttons 1104, 1106, 1108, 1110, 1112 using the remote control device 802.” Fig. 1).
Regarding claims 5 and 18, the combination further teaches wherein a content of at least one message of the plurality of messages that is displayed identifies a required action (Pearson: [0040], “FIG. 12 illustrates that the messaging view interface 1200 can include the contents of a selected email message. Further, the messaging view interface 1200 can include an inbox soft button 1202, a compose soft button 1204, a reply soft button 1206, a forward soft button 1208, and a delete soft button 1210. A user can navigate between the soft buttons 1202, 1204, 1206, 1208, 1210 using the remote control device 802.”).
Regarding claim 11, wherein the processor is configured to: store the plurality of messages in the memory until the remote becomes active (Pearson: Abstract, [0009], [0010], [0012], [0015], [0058], “If a user provides input to snooze the overlaid emergency alert message (block 407 and block 413), the overlay message is temporarily no longer provided (block 409) and then after a snooze timeout or other occurrence, such as the start of a commercial, the overlay message is once again provided (block 411). Ifa user provides input to dismiss the overlaid emergency alert message (block 407 and block 413), the overlay message is no longer provided (block 415).” Fig. 4).
Regarding claims 7, 13, and 20, the combination teaches the limitations specified above; however, the combination as presently combined does not expressly teach redisplaying at least one message of the plurality of messages until a confirmation code acknowledging the at least one message is received by the set-top box.
Velazquez teaches redisplaying at least one message until a confirmation code acknowledging the at least one message is received (Abstract, [0009], [0010], [0012], [0015], [0058], “If a user provides input to snooze the overlaid emergency alert message (block 407 and block 413), the overlay message is temporarily no longer provided (block 409) and then after a snooze timeout or other occurrence, such as the start of a commercial, the overlay message is once again provided (block 411). If a user provides input to dismiss the overlaid emergency alert message (block 407 and block 413), the overlay message is no longer provided (block 415).” Fig. 4).
In view of Velazquez’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was made redisplaying at least one message of the plurality of messages until a confirmation code acknowledging the at least one message is received by the set-top box. The modification would ensure that the user is aware of and has recognized that a message has been received.
Claims 2-3, 9-10, and 15-16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over a combination of Pearson, Brun, Velazquez, and Baluja et al. (US 2006/0235933).
Regarding claims 2, 9, and 15, the combination teaches the limitations specified above; however, the combination does not expressly teach wherein a priority of each message of the plurality of messages is designated by a service provider.
Baluja teaches wherein a priority of each message of a plurality of messages is designated by a sender ([0029], “a sender of a message may set an importance or priority level for the message. When a new message is received, assigned a ranking value, and sorted/marked, message server 104 may take the importance level set by the sender into consideration or ignore the indicator entirely.”).
In view of Baluja’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify the combination wherein a priority of each message of the plurality of messages is designated by a service provider in order to facilitate distribution of important messages to users by service providers.
Regarding claims 3, 10, and 16, the combination further teaches wherein the plurality of messages are received from the service provider (Pearson: [0027], “In a particular embodiment, during operation, the email module 128 within the set top box 104 can poll the email messaging server 120 to determine if any authorized users of the set top box 104 have any email messages. If so, the email messages can be delivered to the set top box 104”).
Claim 6, 12, and 19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over a combination of Pearson, Brun, Velazquez, and Radloff et al. (US 2006/0267995).
Regarding claims 6, 12, and 19, the combination teaches the limitations specified above; however, the combination does not expressly teach wherein the controlling the display to display the plurality of messages further comprises: displaying each message of the plurality of messages for a time that does not cause a burn-in of the display.
Radloff teaches displaying content for a time that does not cause a burn-in of a display ([0138], “The playlist transport bar may be displayed when the user issues a stop, pause, fast-forward, rewind, play, resume, or any other command that affects playback of an asset. For example, the playlist transport bar may be displayed for a predetermined period of time in response to a pause or stop command. After the predetermined period of time expires, the interactive media application may substitute other content in place of the pause or stopped media to prevent screen burn-in.”).
In view of Radloff’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was made the combination wherein the controlling the display to display the plurality of messages further comprises: displaying each message of the plurality of messages for a time that does not cause a burn-in of the display. The modification would serve to prevent potential burn-in on client displays. The modification would serve to improve the user experience.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R TELAN whose telephone number is (571)270-5940. The examiner can normally be reached 9:30AM-6:00PM.
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/MICHAEL R TELAN/ Primary Examiner, Art Unit 2426