NON-FINAL REJECTION, FIRST DETAILED ACTION
Status of Prosecution
The present application, 18/750,778 filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The application claims is a continuation of application 17/559,459 (now US Patent 12,056,342) filed Dec. 22, 2021 which is in turn a continuation of 15/978119 (now US Patent 11,237,711), filed on May 12, 2018 which in turn claims priority to provisional application 62/514,608, filed on June 2, 2017.
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.
Claims 1-25 are pending. Claims 1, 24 and 25 are independent.
Double Patenting Rejection
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, 24 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 12,056,342.
Instant Application, 18/750,778
Patented Parent Application, 17/559,459,
(US Patent 12,056,342)
A method comprising:
at a device including a display and one or more input devices:
displaying, on the display, a media browsing user interface for a first user;
while displaying the media browsing user interface, receiving, via the one or more input devices, an input that corresponds to a request to display a different view of the media browsing user interface; and
in response to the input, concurrently displaying, within the media browsing user interface, a plurality of representations of containers of media items including a representation of a first media container and a representation of a second media container, wherein:
in accordance with a determination that the first media container meets engagement criteria for the first user, wherein the engagement criteria for a respective media container include a criterion that other users with whom the first user has a predetermined relationship have engaged with media in the respective media container, displaying an engagement marker for the representation of the first media container to indicate that users with which the first user has the predetermined relationship have engaged with one or more media items in the first media container;
1. A method comprising:
at a device including a display and one or more input devices:
displaying, on the display, a media engagement user interface that includes a plurality of representations of containers of media items for which a first user has met engagement criteria, wherein engagement of the first user with the plurality of containers of media items are visible to other users that have a predetermined relationship to the first user, wherein displaying the media engagement user interface includes concurrently displaying, on the display:
a representation of a first media container; and
a representation of a second media container;
while displaying the media engagement user interface, displaying, on the display, an engagement indicator relative to the first media container indicating that the first user is currently listening to the first media container;
detecting, via the one or more input devices, a sequence of one or more inputs that corresponds to a request to hide the engagement indicator indicating that the first user is currently listening to the first media container, wherein the request to hide the engagement indicator selects a hide affordance displayed within the media engagement user interface, and wherein the hide affordance is associated with the first media container currently being listened to by the first user; and
in response to detecting, via the one or more input devices, the sequence of one or more inputs that corresponds to the request that selects the hide affordance to hide the engagement indicator indicating that the first user with is currently listening to the first media container, changing an appearance of the representation of the first media container without changing the appearance of the representation of the second media container, wherein the change to the representation of the first media container includes not displaying the engagement indicator relative to the first media container to other users with the predetermined relationship to the first user.
in accordance with a determination that the first media container does not meet the engagement criteria for the first user, displaying the representation of the first media container without displaying an engagement marker for the representation of the first media container;
in accordance with a determination that the second media container meets engagement criteria for the first user, displaying an engagement marker for the representation of the second media container to indicate that users with which the first user has the predetermined relationship have engaged with one or more media items in the second media container; and
in accordance with a determination that the second media container does not meet the engagement criteria for the first user, displaying the representation of the second media container without displaying an engagement marker for the representation of the second media container.
5. The method of claim 1, further comprising:
after not displaying the engagement indicator relative to the first media container to other users with the predetermined relationship to the first user:
detecting subsequent engagement of the first user with one or more of the containers of media items; and
in response to detecting the subsequent engagement of the first user with the one or more containers of media items, updating an order of the plurality of representations of containers of media items based on one or more of frequency of engagement and recency of engagement.
The main differences between the instant application’s claim 1 and the reference patent’s claim 1 is that the reference patent’s engagement indicator, which is “indicating that the first user is currently listening to the first media contained,” is hidden in contrast to the instant application’s claim 1’s engagement marker, which is a “representation of the first media container to indicate that users with which the first user has the predetermined relationship have engaged with one or more media items in the first media container.” Examiner asserts that listening to media is patentably indistinct in this instance to engaging with the media items.
The remainder of instant claim 1 that is not precisely matched up with claim 1 of the reference application is taught by dependent claim 5, which teaches that the engagement marker/indicator is not displayed when the engagement criteria is not met.
Similar rejections are made to the other independent claims 24 and 25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES T TSAI whose telephone number is (571)270-3916. The examiner can normally be reached M-F 8-5 Eastern.
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/JAMES T TSAI/ Primary Examiner, Art Unit 2147