DETAILED ACTION
This non-final action replies to application, filed July 16, 2024, that is a broadening reissue application of 13/313375, now U.S. Pat. 9,026,669 (“the ’669”) with a co-filed amendment that amends specification for cross reference to related applications for priority, cancels claims 1-2, adds claims 3-12. A subsequent amendment filed June 24, 2025 amends claim 3, 5, and 8, cancels claim 6 and adds claim 15 and 16. Claims 3-5 and 7-16 are pending.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
APPLICATION DATA SHEET/FILING RECEIPT
The Applicant Data Sheet filed with the present reissue application filed on July 16, 2024 (hereinafter the “2024 ADS”) is objected to because although it states this application is a continuation of 17/705047 (as copied below), but it does not also identify this application as a reissue of 13/313,375, now 9,026,669. Applicant is asked to resubmit the ADS with the corrections to identify this application as both a continuation of 17/705047 and as a reissue of 13/313,375.
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Amendment
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b)-(g).
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under § 1.821(e)).
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim….
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added…
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The Amendment filed June 24, 2025 proposes amendments to claims that do not comply with 37 CFR 1.173 (b)-(g), which sets forth the manner of making amendments in reissue applications. The cited amendment fails to use proper claim markings for new claims 3, 8 and 11 since enclosing omitted text in brackets is only for amending an original claim rather than a new claim in a reissue. See 37 CFR 1.173(b)(2) and (d)(2). A new claim underlines its limitations in entirety; while, a subsequent amendment to a new claim also remains entirely underlined with no enclosing brackets of omitted text since changes in a reissue are indicated by appropriate claim markings relative to patent under reissue. See 37 CFR 1.173(g).
Reissue Application Declaration and 35 USC 251
Excerpt from MPEP 1412.03 IV (emphasis added herein):
A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that "the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim" is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment "alternative" to, and "unrelated" to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. "[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period" regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.
See also the following cases which pertain to broadened reissues:
In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.)
In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.)
In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was executed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.)
In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pending reissue prosecution even if the additional broadening occurs beyond the two year limit.).
Excerpt from MPEP 1412.03 V (emphasis added herein):
For any broadening reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. See 37 CFR 1.175(b). A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.
Claims 3-5 and 7-16 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. Claims 3 and 8 and their respective dependent claims are improperly broadened herein in this reissue beyond the two-year statutory period as highlighted in table discussing step 1 in RECAPTURE rejection discussed elsewhere herein where facts therein are relied on herein in conjunction with facts below to show timing of recapture herein is beyond two-year statutory period. Essentially, there is no intent in record to broaden that was unequivocally indicated in the reissue application or its parent reissue application 17/705047 within the two years from the patent grant. The ‘669 patent under reissue herein was published on May 05, 2015 (see ‘669 (45)).
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The instant reissue application was filed on July 16, 2024 with an amendment that broadens due to omission of limitations of ‘669 as presented in noted table below relied on herein. A subsequent amendment was filed June 24, 2025 that amends claims 3, 5, and 8 and adds claims 13-16. Also, the parent reissue 17/705047 was filed on March 25, 2022. The amendments at issue herein that broaden the claims of ‘669 in this reissue application is beyond the two year statutory period. The parent reissue application with its co-filed amendment was also filed beyond the two year statutory period. Thus, the facts in record, as detailed herein, show that the instant reissue and parent reissue applications were each filed beyond the two year statutory period. Thus, the claims herein have been improperly broadened beyond the two year statutory period. Therefore, the applicant is statutorily barred from broadening claims in this reissue.
The reissue application declaration by assignee, filed on July 16, 2024, for this application is defective because it fails to specify at least one pending claim and relies on an impermissible error, for this reissue. See 37 CFR 1.175 and MPEP § 1414. A reissue application declaration by the assignee (PTO/AIA /06) is defective since the error statement states in-part, “One error is the omission of a claim directed to a receiver that receives the data package to depacketize and decode the data packet at least in part upon data reassembled by the receiver” that fails to specify at least one pending claim. Also, the error statement regards an impermissible error, in this case, as similarly stated in 17/705047 that “The claimed subject matter in the new claims does not claim the system nor the steps performed by the system as set forth in the reasons for allowance in the 9,026,669 Patent.” The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action. See 37 CFR 1.175 and MPEP § 1414. MPEP 1414 II.(B) states in part: “In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original patent claim, and how it renders the original patent wholly or partly inoperative or invalid.” The error statement fails to specify a word, phrase or expression in an identified patent claim and how it renders the patent inoperative or invalid. Instead, the noted statement in the declaration, in this case, appears to be a general summary of a claim that does not identify a pending claim and it does not identify a limitation that is presently added or removed in a specified pending claim that renders the patent inoperative or invalid. Also, the statement regards an impermissible error for reasons noted above and in improper recapture discussion below. See MPEP 1414 II. (C). See 37 CFR 1.175 and MPEP § 1414. See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011).
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 3-5, and 7-16 are rejected as being based upon a defective reissue application declaration by the inventor 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. See 37 CFR 1.175 and MPEP § 1414.
Recapture
Claims 3-5 and 7-16 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application (e.g. surrender-generating limitation). Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Below are the pertinent findings of fact relevant to this rejection:
12/07/2011
The 13/313375 application (hereafter the ‘375 application) was filed having claims 7-8 pending after a subsequent amendment.
02/27/2014
A first official non-final action was mailed objecting to claims 7-8, rejecting the claim 7 as indefinite, rejecting claim 7 as anticipated by 2006/0288395 (DiLorenzo) and rejecting claim 8 as obvious over DiLorenzo in view of Pat 6876901 (DiLorezo2).
08/19/2014
Applicant filed an amendment/reply to amend claims 7-8 and to add new claims 9-14. The applicant amends claim 7 and asserts “As per claim 7, the Examiner contends that DiLorenzo discloses a system for transferring a plurality of data sources using a single data transfer stream comprising: centralized storage means for said plurality of data sources (DiLorenzo, para[0018,0024]… DiLorenzo is directed to a system for distributing content from multiple media content providers. DiLorenzo combines the content into one or more composite data streams, and conveys the composite data streams to a plurality of receiver systems via a data communications network. One or more composite data streams can be upconverted and uplinked to a satellite system for reception by satellite radio receivers. Intermediary service providers might also be used to receive the composite data streams, either via satellite or land-based communications lines, and format the data as needed for use by one or more associated end-user devices. In DiLorenzo the end user 46 include the televisions and receiver boxes of cable TV subscribers, satellite TV subscribers and/or the in-room entertainment systems located in hotel rooms (paragraph [22]).
In contrast in the disclosed invention the end user of the system is a receiving unit 4… The end user in the claimed system as set forth in claim 7 far exceed the relatively passive end user 46 of DiLorenzo, namely the televisions and receiver boxes of cable TV subscribers, satellite TV subscribers and/or the in-room entertainment systems located in hotel rooms. DiLorenzo does not disclose packetized and combined data sources into a single data transfer stream including all the channels. Therefore, DiLorenzo does not disclose each and every element of claim 7 as amended and cannot be held to anticipate the claim.” (emphasis added herein).
In summary, claims 7 was amended to recite: “A system for transferring a plurality of data sources using a single data transfer stream comprising: a network operating center (NOC) including a centralized storage for said plurality of data sources; and an editing processor means for editing said plurality of data sources; a communication link for transferring said edited plurality of data sources; a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream; and, a plurality of receivers for receiving and processing said single data transfer stream communicated to the packetizing and combining processor in each one of the plurality of transmission servers, the plurality of receivers reversing the cyclic packetizing and combining performed in a corresponding one of the transmission servers, by selecting packets from a data package corresponding to a requested channel and reassembling these packets into the whole, original channel data enables fast channel switching in the corresponding receiver without any need to change a tuning or receiving frequency.”
01/12/2025
An allowability notice was mailed with an examiner’s amendment cancelling new claims 9-14 and stating reasons for allowance of “The prior art taken alone or in combination fails to teach or suggest the claimed system for transferring a plurality of data sources using a single data transfer stream comprising: a network operating center including a centralized storage for said plurality of data sources; and an editing processor for editing said plurality of data sources; a communication link for transferring said edited plurality of data sources; a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream; and a plurality of receivers for receiving and processing said single data transfer stream communicated to the packetizing and combining processor in each one of the plurality of transmission servers, the plurality of receivers reversing the cyclic packetizing and combining performed in a corresponding one of the transmission servers, by selecting packets from a data package corresponding to a requested channel and reassembling these packets into the whole original data, enables fast channel switching in the corresponding receiver without any need to change a tuning or receiving frequency.”
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” See MPEP §1412.02(I).
Regarding step 1 of the three-step process we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Upon review of the new independent claim 3 of the present reissue application in comparison to claims 1-2 of ‘669 Patent, the Examiner finds that the Applicant through the June 24, 2025 Amendment herein has broadened the claims by omitting the following limitations in claim 1: “transferring a plurality of data sources using”, “a network operating center (NOC)”, “and an editing processor for editing said plurality of data sources”, “a communication link for transferring said edited plurality of data sources”, “a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream”, “transfer”, “communicated to the packetizing and combining processor in each one of the plurality of transmission servers”, “the cyclic packetizing and combining performed in a corresponding one of the transmission servers”, “enables fast channel switching in the corresponding receiver without any need to change a tuning or receiving frequency”, as similarly shown in table below. Although the comparison in table regards claim 3 herein, claim 8 also omits the above bolded limitations.
Claim 3 herein, as amended on 6/24/2025
Claim 1 of ’669 Patent
A system for processing a single data stream having one or more data packages, the system comprising:
A system for transferring a plurality of data sources using a single data transfer stream comprising:
a receiving unit capable of receiving the single data stream, the receiving unit comprises: a receiver capable of reversing the one or more data packages by depacketizing the received single data stream into depacketized data, decoding the depacketized data to provide a sequence of plurality of channel data packets corresponding to a requested channel, and reassembling the sequence of received plurality of channel data packets into a plurality of original channel data packets,
a data storage, and an operating system.
a network operating center (NOC) including a centralized storage for said plurality of data sources; and an editing processor for editing said plurality of data sources;
a communication link for transferring said edited plurality of data sources;
a plurality of transmission servers communicated to the communication link;
a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream; and,
a plurality of receivers for receiving and processing said single data transfer stream communicated to the packetizing and combining processor in each one of the plurality of transmission servers, the plurality of receivers reversing the cyclic packetizing and combining performed in a corresponding one of the transmission servers, by select packets from a data package corresponding to a requested channel and reassembling these packets into the whole, original channel data enables fast channel switching in the corresponding receiver without any need to change a tuning or receiving frequency.
Regarding step 2, Examiner finds that some of the broadening aspects relate to subject matter surrendered during prosecution of the 13/313375 application leading to the original claims of ‘669 Patent. The Examiner finds that the Applicant through their June 24, 2025 Amendment in this reissue has broadened the claims by omitting limitations relating to the surrendered subject matter during examination of the ‘375 application as now particularly recited, that regards language added into independent claim 1 and concurrently argued by Applicant in the reply filed Aug. 19, 2014 amendment in 13/313375 application. As noted above in the findings of fact, the Applicant asserted the prior art does not disclose the added/argued limitations (DiLorenzo does not disclose each and every element of claim 7 as amended and cannot be held to anticipate the claim.” (emphasis added herein)) of “an editing processor for editing said plurality of data sources”, “a communication link for transferring said edited plurality of data sources”, “a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream”, “communicated to the packetizing and combining processor in each one of the plurality of transmission servers” and “the cyclic packetizing and combining performed in a corresponding one of the transmission servers” that was concurrently added into independent claim 7 in the noted Aug. 2014 amendment during examination of ‘375 Application as present in issued claims 1-2 in ‘669 patent. It is emphasized that Applicant added these limitations and concurrently argued in their response that the applied reference(s) do not anticipate the invention as amended limitation relating to the now omitted features with consideration of the Comparison of claim 3 herein as compared to issued claim 1 in ‘669 Patent) was a distinguishing limitation over the applied art (e.g., a surrender-generating limitation). As noted above, Applicant argued these features in their response/amendment during examination. Thus, the noted limitations “an editing processor for editing said plurality of data sources”, “a communication link for transferring said edited plurality of data sources”, “a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream”, “communicated to the packetizing and combining processor in each one of the plurality of transmission servers” and “the cyclic packetizing and combining performed in a corresponding one of the transmission servers” in issued claims 1-2 in ‘669 regards subject matter surrendered during prosecution of the '375 Application leading to the original ‘669 Patent. From prosecution of ‘375 Application, the noted limitations regarding surrendered subject matter must be recited in present claims to avoid improper recapture.
Regarding step 3, Examiner further determines, to the extent there is narrowing limitation(s) herein as compared to ‘669 claims, the narrowing limitation(s) do not materially narrow the surrendered subject matter such that they are not directed to the surrendered subject matter.
Thus, in summary, the Examiner specifically finds that claims 3 and 8 (and their dependent claims) have eliminated noted limitations through amendment in this application for which the claims of the original Patent were allowed. The June 2025 Amendment herein attempts to improperly recapture surrendered subject matter explicitly surrendered during prosecution of ‘375 Application leading to the ‘669 Patent since an amended/argued limitation during examination of ‘375 Application is eliminated in this reissue application that coincidently regards subject matter relied on during prosecution of parent application to obtain the original patent. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. In re Mostafazadeh, 98 USPQ2d 1639 (Fed Cir 2011), In re Youman, 102 USPQ2d 1862 (Fed Cir 2012). Next, there is no narrowing feature added by the preliminary amendments herein that materially narrows relative to the surrender-generating limitation. Specifically, independent claims 3 and 8 (and their associated dependent claims) herein have omitted the above noted surrendered subject matter as recited in issued claims 1-2 of ’669. While to the extent there is/are added or narrowed element(s) herein that are not present in ‘669 claims, those element(s) is/are not directed to the noted surrendered subject matter. If surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See MPEP 1412.02 (I)(C). Stated another way, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See Id.
In view of the forgoing, the Applicant has attempted in the June 2025 Amendment herein to improperly recapture subject matter explicitly surrendered during prosecution of the ‘375 Application leading to the ‘669 Patent for reasons stated above.
Claim Rejections - 35 USC § 112
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 4-5 and 9-11 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.
Claims 4 and 9 recites the limitation "the header" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 3-5 and 7-16 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 9,026,669. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams are directed to the same invention. For instance, lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of US 9,026,669 (the ‘669) into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other for the following reason: in comparing Claims 1-2 of U.S. ‘669 to Claim 3 of the instant application (hereinafter IA) where the centralized storage of ‘669 is the recited data storage herein and where the network operating center of ‘669 involves the operating system herein, the Claims 1-2 of ‘669 are an obvious variant that contain substantially the same subject matter that overlaps method of IA as shown in table below in (bolded text in ‘669 is omitted herein).
Claim 3 herein, as amended on 6/24/2025
Claim 1 of ’669 Patent
A system for processing a single data stream having one or more data packages, the system comprising:
A system for transferring a plurality of data sources using a single data transfer stream comprising:
a receiving unit capable of receiving the single data stream, the receiving unit comprises: a receiver capable of reversing the one or more data packages by depacketizing the received single data stream into depacketized data, decoding the depacketized data to provide a sequence of plurality of channel data packets corresponding to a requested channel, and reassembling the sequence of received plurality of channel data packets into a plurality of original channel data packets,
a data storage, and an operating system.
a network operating center (NOC) including a centralized storage for said plurality of data sources; and an editing processor for editing said plurality of data sources;
a communication link for transferring said edited plurality of data sources;
a plurality of transmission servers communicated to the communication link;
a packetizing and combining processor at each of said one or more transmission servers for cyclically packetizing and combining said plurality of data sources into a single data transfer stream; and,
a plurality of receivers for receiving and processing said single data transfer stream communicated to the packetizing and combining processor in each one of the plurality of transmission servers, the plurality of receivers reversing the cyclic packetizing and combining performed in a corresponding one of the transmission servers, by select packets from a data package corresponding to a requested channel and reassembling these packets into the whole, original channel data enables fast channel switching in the corresponding receiver without any need to change a tuning or receiving frequency.
Claim 8 herein contain similar limitations to claim 3 herein. Thus, for same reasons as claim 1 of ‘669 is an obvious variant of claim 3 herein, claim 8 is obvious variant of claims 1-2 of ‘669 where the process of claim 8 is obvious variant of process performed by system in claims of ‘669. Further, dependent claims 2-5, 7 and 9-16, as amended herein, is each an obvious variant for similar reasons as claim 3 and 8.
Claims 3-5 and 7-16 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 9,742,882. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams are directed to the same invention. For instance, lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of US 9,026,669 (the ‘669) into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other for the following reason: in comparing Claims 1-10 of U.S. ‘882 to Claim 3 of the instant application (hereinafter IA) where the centralized storage of ‘882 is the recited data storage herein and where the network operating center of ‘882 involves the operating system herein, the Claims 1-10 of ‘882 are an obvious variant that contain substantially the same subject matter that overlaps method of IA as shown in table below in (bolded text in ‘882 is omitted herein).
Claim 3 herein, as amended on 6/24/2025
Claim 1 of ’882 Patent
A system for processing a single data stream having one or more data packages, the system comprising:
A system for transferring a plurality of data sources using a single data transfer stream comprising:
a receiving unit capable of receiving the single data stream, the receiving unit comprises: a receiver capable of reversing the one or more data packages by depacketizing the received single data stream into depacketized data, decoding the depacketized data to provide a sequence of plurality of channel data packets corresponding to a requested channel, and reassembling the sequence of received plurality of channel data packets into a plurality of original channel data packets,
a data storage, and an operating system.
a network operating center (NOC) including a centralized storage for the plurality of data sources; and an editing processor for editing the plurality of data sources;
a communications link for transferring the edited plurality of data sources;
a plurality of transmission servers communicated to the communication link; a packetizing and combining processor at each of the plurality of transmission servers for cyclically packetizing and combining the plurality of data sources into a single data transfer stream; and,
a plurality of receiving units for receiving, transmitting and processing the single data transfer stream communicated to the packetizing and combining processor in each one of the plurality of transmission servers, the plurality of receiving units reversing the cyclic packetizing and combining performed in a corresponding one of the transmission servers, by selecting packets from a data package corresponding to a requested channel and reassembling these packets into a whole, original channel data enables fast channel switching in a corresponding one of the plurality of receiving units without any need to change a tuning or receiving frequency.
Claim 8 herein contain similar limitations to claim 3 herein. Thus, for same reasons as claim 1 of ‘882 is an obvious variant of claim 3 herein, claim 8 is obvious variant of claims 1-2 of ‘882 where the process of claim 8 is obvious variant of process performed by system in claims of ‘669. Also, claims 3 and 7 of ‘882 recite similar limitations as claim 1 of ‘882. Thus, for similar reasons regarding claim 1, claims 3 and 7 of ‘882 are also obvious variants of claim 3 and 8 herein. Further, dependent claims 2-5, 7 and 9-16, as amended herein, is each an obvious variant for similar reasons as claim 3 and 8.
Claims 3-5 and 7-16 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 5-8 of copending Application No. 17/496258. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams are directed to the same invention. For instance, lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of US 9,026,669 (the ‘669) into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other for the following reason: in comparing Claims 5-8 of copending Application No. 17/496258 to Claim 3 of the instant application (hereinafter IA) where the centralized storage of copending Application No. 17/496258 is the recited data storage herein and where the network operating center and operating system of copending Application No. 17/496258 involves the operating system herein, the Claims 5-8 of copending Application No. 17/496258 are an obvious variant that contain substantially the same subject matter that overlaps method of IA as shown in table below.
Claim 3 herein, as amended on 6/24/2025
Claim 5 of 17/496258, as amended on06/13/2024
A system for processing a single data stream having one or more data packages, the system comprising:
A system for transferring a plurality of data sources using a single data transfer stream comprising:
a receiving unit capable of receiving the single data stream, the receiving unit comprises: a receiver capable of reversing the one or more data packages by depacketizing the received single data stream into depacketized data, decoding the depacketized data to provide a sequence of plurality of channel data packets corresponding to a requested channel, and reassembling the sequence of received plurality of channel data packets into a plurality of original channel data packets,
a data storage, and an operating system.
a network operating center (NOC) including a centralized storage for said the plurality of data sources, and an editing processor for editing said the plurality of data sources, wherein the plurality of data sources is assembled into one or more channel data packets;
a communication link for transferring the one or more channel data packets said edited plurality of data sources;
a plurality of transmission servers connected to the communication communicating link; and
a cyclic processor configured to produce a data package taking a portion of data from each of the one or more channel data packets and packetizing the portion of data into a packetized data package, wherein the packetized data package comprises a data package header for continuously appending the packetized data package into a single data transfer stream, and wherein the cyclic processor repeats a cycle production of the packetized data package,
a plurality of receiving units for receiving and processing the single data transfer stream, wherein each of the plurality of receiving units comprises a receiver for receiving the single data transfer stream, and
an operating system for depacketizing the single data transfer stream by selecting at least one data packet from the packetized data package corresponding to a requested channel, decoding a selected data packet, and reassembling the selected data packet into a whole, original channel data for enabling a fast channel switching in a corresponding one of the plurality of receiving units without any need to change a tuning or receiving frequency.
Claim 8 herein contain similar limitations to claim 3 herein. Thus, for same reasons as claim 5 of copending Application No. 17/496258 is an obvious variant of claim 3 herein, claim 8 is obvious variant of claim 5 of copending Application No. 17/496258 where the process of claim 8 is obvious variant of process performed by system in claims 5-8 of copending Application No. 17/496258. Further, dependent claims 2-5, 7 and 9-16, as amended herein, is each an obvious variant for similar reasons as claim 3 and 8 herein.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the 9,026,669 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
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/MARK SAGER/Primary Examiner, Art Unit 3992
Conferees:
/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992