DETAILED ACTION
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 .
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 1-20 of U.S. Patent No. 11,727,953. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are a broader version of the patented claims, with minor wording variations. Sample comparison is provided below.
Instant application
Patent 11,727,953
A computer-implemented method comprising:
generating a fingerprint comprising a plurality of bin samples associated with audio content, wherein each bin sample associated with a frame of the fingerprint, one of a plurality of non-overlapping frequency ranges, and a value indicative of a magnitude of energy associated with a corresponding frequency range; and
Removing from the fingerprint, a plurality of bin samples associated with a frequency sweep in the audio content.
1. A method implemented by a computing system, the method comprising: generating, by the computing system, a fingerprint comprising a plurality of bin samples associated with audio content, wherein each bin sample is specified within a frame of the fingerprint and is associated with one of a plurality of non-overlapping frequency ranges and a value indicative of a magnitude of energy associated with a corresponding frequency range; modifying the fingerprint by
(i) removing, by the computing system, from the fingerprint, a plurality of bin samples associated with a frequency sweep in the audio content; and
(ii) for each removed bin sample, inserting a new bin sample into the fingerprint, wherein inserting the new bin sample into the fingerprint comprises specifying the new bin sample within the frame associated with the removed bin sample and associating the new bin sample with a frequency region that is different from the frequency range associated with the removed bin sample; and
searching a fingerprint database for a record that matches the modified fingerprint, wherein the record specifies content information associated with the modified fingerprint.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,094,486. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are a broader version of the patented claims, with minor wording variations. Sample comparison is provided below.
Instant application
Patent 12,094,486
A computer-implemented method comprising:
generating a fingerprint comprising a plurality of bin samples associated with audio content, wherein each bin sample associated with a frame of the fingerprint, one of a plurality of non-overlapping frequency ranges, and a value indicative of a magnitude of energy associated with a corresponding frequency range; and
Removing from the fingerprint, a plurality of bin samples associated with a frequency sweep in the audio content.
1. A method implemented by a computing system, the method comprising: generating a fingerprint comprising a plurality of bin samples associated with audio content, wherein each bin sample associated with a frame of the fingerprint and with one of a plurality of non-overlapping frequency ranges and a value indicative of a magnitude of energy associated with a corresponding frequency range; and modifying the fingerprint by
(i) removing, by the computing system, from the fingerprint, a plurality of bin samples associated with a frequency sweep in the audio content and
(ii) for each removed bin sample, inserting a new bin sample into the fingerprint, wherein inserting the new bin sample into the fingerprint comprises specifying the new bin sample within the frame associated with the removed bin sample and associating the new bin sample with a frequency region that is different from the frequency range associated with the removed bin sample.
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.
Claim 10 is 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.
Claim 10 recites the limitation "the new bin sample". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5, 10-16, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of mathematical concepts as it is regarding a signal, transforming it (DFT, Hough transform, for example in claims 2-4 and 14-15), normalizing/averaging (claim 12) and removing spectral components, which is essentially specifying a mathematical relationships and calculations on data, without significantly more. This judicial exception is not integrated into a practical application because they are claimed at a high, formula-like level. The claims lack additional elements that use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception. The claim as a whole merely describe how to generally apply data manipulation in a computer environment. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, is not indicative of an inventive concept (aka “significantly more”).
Regarding claims 5 and 16, it is ineligible as it is directed toward inserting a new bin sample, which is conventional and well-understood, routine activity of generally modifying the spectral characteristics of a signal.
Regarding claim 10, it is ineligible as it is directed toward finding matching records in a database, which is conventional and well-understood, routine activity of generally comparing data.
Allowable Subject Matter
Claims 6-9 and 17-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS H MAUNG whose telephone number is (571)270-5690. The examiner can normally be reached Monday-Friday, 9am-6pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn R. Edwards can be reached at 1-(571) 2707136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS H MAUNG/Primary Examiner, Art Unit 2692
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692