Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
Referring to Applicant’s argument presented on pages 6-8 of Applicant’s Remarks alleging Barton in view of Lin fails to disclose the limitations of “sending, to a server via a second network, a request message comprising a request for information associated with the content being received at the first computing device” because, regarding Lin, a) there’s no confirmation and/or identification sent by a device other than the electronic device 100 and b) the "identification" merely refers to "address or index of content/service" and is silent as to any request for information associated with content being received at the electronic device, the Examiner respectfully disagrees. Paragraphs 0045 and 0056 disclose identification of new content is sent by portable device 200 in steps s201 and s202 to the electronic device 100 and management center 400 (seen in Figs. 2B and 5C). Therefore, Applicant’s allegation that no identification is sent by a device other than the electronic device 100 is incorrect. Furthermore, the identification referring to an address of new content is sufficient to meet the claim limitations as they are presented. The provision of identification from the portable device is done so in order to subscribe to/request new content. While the word request is not explicitly used, request is implied through the use of presenting information that causes a verification procedure to confirm and result in the subscription and acquisition of the new content. The “information associated with content” being received at the first computing device is interpreted as the “identification” information received at the portable device 200 from, for example, the identification source 700, seen to be a separate network connection than the link between portable device 200 and management center 400 or between portable device 200 and electronic device 100. The request is for the [information associated with the content/“identification” information] to be confirmed. In the event that Applicant is implying that any of the above interpretations cannot be valid because the instant application defines them differently or more specifically, these representations are not presented in the instant claims, and the current claim limitations are too broad to interpret them in a limited manner. Applicant is invited to contact the Examiner in the event there are any questions regarding narrowing the scope of these claim limitations in an effort to overcome the prior art of record.
In response to applicant's arguments against the references individually on pages 8-9 of Applicant’s Remarks regarding the rejection of claim 2, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4, 6-13, 15-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Barton US 20110181780 in view of Lin et al (hereinafter Lin) US 20140373040.
Referring to claim 1, Barton discloses a method comprising sending the content to be output on a display device associated with the second computing device instead of the first computing device (see Paragraph 0066 for disclosing a message is sent to the display of the first computing device/mobile media device comprising selectable options to output the media content on another display (e.g., television)/second computing device instead of (i.e., switch over) the mobile media device).
Barton is unclear as to detecting at least one characteristic associated with content that is being received by a first computing device via a first network, sending, to a server via a second network, a request message comprising a request for information associated with the content being received at the first computing device, receiving, from the server via the second network, the requested information, and sending, to the second computing device in response to receive the requested information, the content to be output by the display device.
Lin discloses detecting at least one characteristic associated with content that is being received by a first computing device via a first network (see Paragraphs 0030-0031, 0042, and 0056 for disclosing detecting a characteristic/identification corresponding to a new content/service (e.g., video) received in the content at the first computing device/portable device via a first network);
sending, to a server via a second network, a request message comprising a request for information associated with the content being received at the first computing device, receiving, from the server via the second network, the requested information, and sending, to the second computing device in response to receive the requested information, the content to be output by the display device (see Fig. 5c and Paragraphs 0007, 0031, and 0056 for disclosing when choosing to display content selected by a first computing device/portable device 200 on a display device 110 associated with a second computing device/electronic device 100, sending to a server/content provider 500 via a second network (interpreted as the connection between the electronic device and the content provider, seen to be different than the first network connection between the portable device and the identification source 700 and management center 400, or the connection between the portable device 200 and the electronic device 100), a request message comprising a request for information associated with the content, receiving from the content provider via the second network the requested information and sending to the electronic device the content to be output by the display device).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the provision of over-the-top services via a portable device to be displayed on a separate large screen size living room device of Lin with the system of Barton in order to provide presentation and access of contents or services for users without limiting them to accessing these content via only the portal in a conventional service model (see Lin, Paragraphs 0003-0005).
Referring to claim 2, Barton discloses sending, to the first computing device, a message comprising a selectable option to output the content on the display device of the second computing device(see Paragraph 0066 for disclosing a message is sent to the display of the first computing device/mobile media device comprising selectable options to output the media content on another display (e.g., television)/second computing device instead of (i.e., switch over) the mobile media device); and
receiving, from the first computing device, a response message indicating that the selectable option is selected (see Paragraph 0066 for disclosing a response to the options provided to the first computing device will switch the media content to be displayed on the television).
Lin discloses the request message is sent in response to receiving the response message (see Fig. 5c and Paragraphs 0007, 0031, and 0056 for disclosing when choosing to display content selected by a first computing device/portable device 200 on a display device 110 associated with a second computing device/electronic device 100, sending to a server/content provider 500 via a second network (interpreted as the connection between the electronic device and the content provider, seen to be different than the first network connection between the portable device and the identification source 700 and management center 400, or the connection between the portable device 200 and the electronic device 100), a request message comprising a request for information associated with the content, receiving from the content provider via the second network the requested information and sending to the electronic device the content to be output by the display device).
Referring to claim 4, Lin discloses the at least one characteristic indicates one or more of a source of the content (see Paragraphs 0030-0031, 0042, and 0056 for disclosing detecting a characteristic/identification corresponding to a new content/service (e.g., video) received in the content at the first computing device/portable device via a first network, the identification video content and services indicating a source/address or index of the content/service, and, based on the detected identification corresponding to a new content/service, outputting/displaying the content/service at the display device/second computing device), and wherein the at least one characteristic further indicates the source of the content based on an indication that the content comprises video content (see Lin, Paragraph 0030. Additionally, Barton additionally discloses the media content to be multimedia content in Paragraph 0065, further noting Paragraphs 0039, 0051, 0058-0059, 0062 identify the source media being played by the computing devices to be video).
Referring to claim 6, Lin discloses the request message further comprises an Internet Protocol (IP) address associated with the second computing device (see Paragraph 0031 for disclosing multiple networking options for communication between the devices of the network, many of which operate via IP, in which messages/packets contain both source and destination addresses).
Referring to claim 7, Lin discloses the IP address is associated with an account authenticated with a service provider (see Paragraphs 0006-0008 and 0052).
Referring to claim 8, Barton in view of Lin discloses the first computing device comprises a smartphone or tablet (see the disclosures cited in the rejection of claims 1 and 2 for disclosing both Barton and Lin disclose the first computing device comprises a smartphone).
Referring to claim 9, Barton discloses the second computing device comprises a set-top box and the display device comprises a television (see Paragraphs 0046-0047 and 0065-0066, further noting Lin additionally discloses this information as seen in the disclosures cited in the rejection of claims 1 and 2).
Referring to claim 10, Lin discloses the server is associated with a service provider (see Paragraphs 0026 and 0030).
Referring to claim 11, Barton discloses the content comprises at least one of: video content, streamed content, audio content, or a plurality of digital photograph files (see Paragraph 0065 for disclosing the media content to be multimedia content, further noting Paragraphs 0039, 0051, 0058-0059, 0062 identify the source media being played by the computing devices to be video). Lin also discloses the content is associated with a video (see Paragraph 0030).
Referring to claim 12, Lin discloses the requested information further identifies the content as seen in the rejection of claims 1 and 2 and Paragraph 0030.
Referring to claim 13, Barton discloses the second computing device is associated with a sound system (see Paragraph 0047).
Claim 15 is rejected on the same grounds as claim 1, further noting Barton in view of Lin discloses a device comprising one or more processors and memory (see Barton, Fig. 4) storing instructions that, when executed by the one or more processors, cause the device to perform the method as seen in the rejection of claim 1.
Claim 16 is rejected on the same grounds as claim 2.
Claim 18 is rejected on the same grounds as claim 1, further noting Lin discloses a system comprising a gateway device (see the rejection of claims 1 and 2, wherein the portable device 200 or electronic device 100 of Lin are interpretable as gateway devices) configured to perform the method as seen in the rejection of claim 1.
Claim 19 is rejected on the same grounds as claim 2.
Claims 3, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Barton US 20110181780 in view of Lin et al (hereinafter Lin) US 20140373040, and further in view of Nijim US 20120054808.
Referring to claim 3, Barton in view of Lin discloses the limitations as seen in the rejection of claim 1.
Barton in view of Lin is unclear as to requesting playback progress of the content and the content is sent to the second computing device based on the playback progress of the content.
Nijim discloses requesting playback progress of the content and the content is sent to the second computing device based on the playback progress of the content (see Paragraphs 0033-0037 for disclosing receiving, from the server, the playback progress in the form of a timestamp when the video content was stopped on a first device and sending the timestamp and the content to be displayed at the second device starting at the timestamp where/when it had been stopped at the first device).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the timestamp saving across multiple devices via a server of Nijim with the system of Barton in view of Lin in order to continue watching the video content from another device, wherein when the user presses play the content may start from the place where it was stopped previously (see Nijim, Paragraph 0010).
Claim 17 is rejected on the same grounds as claim 3.
Claim 20 is rejected on the same grounds as claim 3.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Barton US 20110181780 in view of Lin et al (hereinafter Lin) US 20140373040, and further in view of Swan et al (hereinafter Swan) US 20140013342.
Referring to claim 5, Barton in view of Lin discloses the identifying information as seen in the rejection of claim 4.
Barton in view of Lin is unclear as to a URL identifying a video service provider.
Swan discloses a URL identifying a video service provider (see Paragraph 0030 for disclosing a URL identifying the address at which the media content can be accessed, interpreted as the media/video service provider).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the system of Swan with the system of Barton in view of Lin in order to fulfill the ever-present need to offer users convenience in their viewing options, and the ever-present need to have disparate sources of content accessible by common devices (see Swan, Paragraph 0002).
Referring to claim 14, Barton in view of Lin discloses the limitations as seen in the rejection of claim 1.
Baron in view of Lin is unclear as to calling an application programming interface (API) associated with a service provider that requests an identity of the content to enable an output by the display device.
Swan discloses calling an application programming interface (API) associated with a service provider that requests an identity of the content to enable an output by the display device (see Paragraphs 0026-0031 and 0058 for disclosing calling the plug-in of the network browser (interpreted as the API) associated with a video service provider (e.g., content server) that requests an identity of video content associated with the content to enable outputting of the content on the display of a second device).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the API of Swan with the system of Barton in view of Lin in order to fulfill the ever-present need to offer users convenience in their viewing options, and the ever-present need to have disparate sources of content accessible by common devices (see Swan, Paragraph 0002).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 17 of U.S. Patent No. 12063418. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the cited patent.
Claims 1-3, 15-17, and 18-20 of the instant application are broader than claims 1, 13, and 17 of the cited patent, respectively.
Claim 4 of the instant application is broader than claim 11 of the cited patent.
Claim 5 of the instant application is broader than claim 12 of the cited patent.
Claim 6 of the instant application is broader than claim 2 of the cited patent.
Claim 7 of the instant application is broader than claim 3 of the cited patent.
Claim 8 of the instant application is broader than claim 4 of the cited patent.
Claim 9 of the instant application is broader than claim 5 of the cited patent.
Claim 10 of the instant application is broader than claim 6 of the cited patent.
Claim 11 of the instant application is broader than claim 7 of the cited patent.
Claim 12 of the instant application is broader than claim 8 of the cited patent.
Claim 13 of the instant application is broader than claim 9 of the cited patent.
Claim 14 of the instant application is broader than claim 10 of the cited patent.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS T CORBO whose telephone number is (571)270-5675. The examiner can normally be reached on Monday - Friday 11am-7pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached on 571-272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS T CORBO/
Primary Examiner, Art Unit 2424
02/18/2026