Detailed Action
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is in reply to the Amendment filed on 4/16/2026.
Claims 11-24 are currently pending and have been examined. The Double Patenting Rejection has been overcome by the filing of a terminal disclaimer. Applicant is invited to request a telephonic interview prior to next response, if this is believed to expedite prosecution.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 62/503,021, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. No reference is made in the specification to most of the claimed limitations, including limitations claiming “a countdown timer.”
The examiner acknowledges that the instant application claims priority from US application 15/974,554 filed on 8 May 2018, and therefore is afforded an effective filing date of 8 May 2018.
Terminal Disclaimer
The terminal disclaimer filed on 4/16/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 10805666 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejection - 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 11-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
First, it is determined whether the claims are directed to a statutory category of invention. In the instant case, claims 11-17 are directed to a process, and claims 18-24 directed to a machine. Therefore, claims 11-24 are directed to statutory subject matter under Step 1 as described in MPEP 2106 (Step 1: YES).
The claims are then analyzed to determine whether the claims are directed to a judicial exception. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong Two of Step 2A).
Claims 11 and 18 at least the following limitations that are believed to recite an abstract idea:
causing display of content, wherein the content is associated with a duration of play;
determining one or more goods or services previously associated with a preset time within the duration of play at which content related to the one or more goods or services are depicted within the content;
at the preset time during playback of the content:
causing display of one or more selectable items for selection by a user, wherein the one or more selectable items appear over a portion of the content during playback of a subset of the duration of play of the content, wherein each of the one or more selectable items represents a different executable transaction of one or more executable transactions for purchasing the one or more goods or services previously associated with the content; and
causing display of a countdown timer for at least a first selectable item of the one or more selectable items, the countdown timer as displayed indicating a limited preset duration within the content during which a first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed, wherein the countdown timer is not displayed prior to the preset time, wherein the countdown timer begins display after playback of the content has started and is displayed while playback of the content continues throughout the limited preset duration;
receiving indication of a user selection of the first selectable item displayed during playback of the content, wherein the user selection does not redirect the user from the content and does not stop playback of the content; and
responsive to receipt of the indication of the user selection and while the content continues to play and be displayed, executing the first executable transaction associated with the first selectable item, wherein the executing the first executable transaction comprises initiating purchase by the user of the first good or service associated with the first selectable item, wherein the purchase is initiated without redirecting the user from the content and without stopping playback of the content.
The above limitations recite the concept of time-limited promotional sales. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106, in that they recite commercial interactions, e.g. sales activities/behaviors, and managing personal behavior or relationships or interactions between people, e.g., following rules or instructions. Accordingly, under Prong One of Step 2A, claims 11-24 recite an abstract idea (Step 2A, Prong One: YES).
Prong Two of Step 2A is the next step in the eligibility analyses and looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or user the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In this instance, the claims recite the additional elements of:
The method being computer implemented
Video content
A display screen
A system comprising: at least one processor; and at least one memory device that stores a plurality of instructions that, when executed by the at least one processor, cause the at least one processor to perform steps
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort to monopolize the exception.
In addition, the recitations are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort to monopolize the exception.
The dependent claims also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort to monopolize the exception. For example, claims 14-17, 21-24 are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above. As for claims 12-13, 19-20 these claims are similar to the independent claims except that they recite the further additional elements of a stream object, an application or a website, a user device. These additional elements are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort to monopolize the exception. Therefore, the dependent claims do not create an integration for the same reasons.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same.
In Step 2A, several additional elements were identified as additional limitations:
The method being computer implemented
Video content
A display screen
A system comprising: at least one processor; and at least one memory device that stores a plurality of instructions that, when executed by the at least one processor, cause the at least one processor to perform steps
These additional limitations, including the limitations in the dependent claims, do not amount to an inventive concept because they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea. Therefore, the claims lack one or more limitations which amount to an inventive concept in the claims.
For these reasons, the claims are rejected under 35 U.S.C. 101.
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.
Claim Rejection – 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-
obviousness.
Claims 11-14, 16-21, 23-23 are rejected under 35 U.S.C. 103 as being unpatentable over Good et al (US 20140215529 A1), hereinafter Good, in view of Dudko (US 20190342618 A1), hereinafter Dudko.
Regarding Claim 11, Good discloses a computer-implemented method comprising:
causing display of video content on a display screen, wherein the video content is associated with a duration of play (Good: “At 231, the video display is shown. … a video is shown playing” [0028] – See Figure 2 – “Metadata uploaded with the video can also include information such as video length” [0038] – See also [0050].);
determining one or more goods or services [“shopable [sic] items”] previously associated with a preset time [“timestamp”] within the duration of play at which content related to the one or more goods or services are depicted within the video content (Good: “The entire video is scanned to identify items in the video that may be shopable items. Shopable items are items shown in the video that may be available for sale during the video pursuant to a video advertising campaign. The shopable items, upon identification, are tracked in the video via coordinates in the video frames where they appear and timestamp data identifying the progression of video frames. In other words, at any given time point in a video, the system will identify the coordinates of a zone of the shown video where each item is located at that point.” [0015] – This step is described in detail with respect to Fig. 6 in [0058-0064].);
at the preset time during playback of the video content: causing display on the display screen of one or more selectable items for selection by a user, wherein the one or more selectable items appear over a portion of the video content during playback of a subset of the duration of play of the video content (Good: “a video is shown playing that includes a shopable item 233 in the video. … The coordinates on the video display portion of the website display are touchable if the item is a saleable item. The coordinates follow the saleable item as it moves with the video. Touching the saleable item 233 indicates via the overlay to the video interactive selection system a desire to shop for or purchase the item. … receives the touchscreen or click feedback and associates it with the coordinates at the time-stamped frame in the video.” [0028] – “With activated tap zones, the shopable items in the video are saleable items. Otherwise, the system mutes or may not accept interaction at a tap zone.” [0016] – “ this tap zone is made part of an overlay on the video display window or screen so when it is touched or clicked the saleable item in the video is selected” [0038]),
wherein each of the one or more selectable items represents a different executable transaction of one or more executable transactions for purchasing the one or more goods or services previously associated with the video content (Good: “The one or more shopable items and related information about the shopable item may be placed in a tap cart for current or later viewing by the user without pausing or freezing the video playback experience or linking to another page with information about the shopable item. The tap zone selections may be whisked off to appear in a tap cart while the video continues to play. In embodiments where the tap cart is viewable simultaneously with the ongoing video playback, multiple selected shopable items can be viewed and investigated in the tap cart without pausing the video.” [0023] – “From the tap cart system, a transaction to purchase an item may occur by pushing the saleable item from the tap cart to a shopping cart” [0029]);
receiving indication of a user selection [“tap zone selection”] of the first selectable item displayed on the display screen during playback of the video content, wherein the user selection does not redirect the user from the video content and does not stop playback of the video content (Good: “The one or more shopable items and related information about the shopable item may be placed in a tap cart for current or later viewing by the user without pausing or freezing the video playback experience or linking to another page with information about the shopable item. The tap zone selections may be whisked off to appear in a tap cart while the video continues to play. In embodiments where the tap cart is viewable simultaneously with the ongoing video playback, multiple selected shopable items can be viewed and investigated in the tap cart without pausing the video.” [0023]); and
responsive to receipt of the indication of the user selection and while the video content continues to play and be displayed on the display screen, executing the first executable transaction associated with the first selectable item, wherein the executing the first executable transaction comprises initiating purchase by the user of the first good or service associated with the first selectable item, wherein the purchase is initiated without redirecting the user from the video content and without stopping playback of the video content (Good: “the shopable item may be placed in a tap cart for current … viewing by the user without pausing or freezing the video playback experience or linking to another page with information about the shopable item.” [0023] – “From the tap cart system, a transaction to purchase an item may occur by pushing the saleable item from the tap cart to a shopping cart” [0029] – “the user viewing the video has an option to simultaneously view a tap cart to investigate the selected saleable items and purchase the items if desired. … If a saleable item is selected for purchase, the user may be linked to a merchant shopping cart. The shopping cart for execution of a purchase may be hosted on the video provider website” [0068-0070]).
While Good teaches that the first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed during presentation of the good associated with the first selectable item (Good: [0023], [0029], [0068]), it does not specifically teach causing at the preset time during playback of the video content display on the display screen of a countdown timer for at least a first selectable item of the one or more selectable items, the countdown timer as displayed indicating a limited preset duration within the video content during which a first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed, wherein the countdown timer is not displayed prior to the preset time, wherein the countdown timer begins display after playback of the video content has started and is displayed while playback of the video content continues throughout the limited preset duration.
However, Dudko teaches a video-content-distribution platform (Dudko: Abstract), including causing at the preset time during playback of the video content display on the display screen of a countdown timer for at least a first selectable item of the one or more selectable items, the countdown timer as displayed indicating a limited preset duration within the video content during which a first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed, wherein the countdown timer is not displayed prior to the preset time, wherein the countdown timer begins display after playback of the video content has started and is displayed while playback of the video content continues throughout the limited preset duration (Dudko: “a certain period of time after a relevant product or service is purposely displayed on the screen and/or while SMIs are interacting with a product or service, a pop-up window appears to suggest subscribers/users to claim the reward points.” [0004] – “the pop-up window does not interrupt either the video program or the advertisement being playing on the screen.” [0022] – “the pop-up window includes a countdown timer indicating the remaining time before the pop-up window disappears from the screen.” [0029] – “a CYP pop-up 130 appears in the corner of screen 112, while the show continues to run without interruption. However, CYP pop-up 130 will only appear, i.e., be displayed for a very short time period, e.g., 3-5 seconds during which time viewer 110 needs to press/touch/swipe/click or use another form of interaction to interact with CYP pop-up 130 in order to receive the PYT rewards/bonus points associated with the Coca Cola product ” [0063]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because the results would be predictable. Specifically, Good would continue to teach: that the first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed during presentation of the good associated with the first selectable item, except that now it would also teach causing at the preset time during playback of the video content display on the display screen of a countdown timer for at least a first selectable item of the one or more selectable items, the countdown timer as displayed indicating a limited preset duration within the video content during which a first executable transaction for purchasing a first good or service associated with the first selectable item is available to be executed, wherein the countdown timer is not displayed prior to the preset time, wherein the countdown timer begins display after playback of the video content has started and is displayed while playback of the video content continues throughout the limited preset duration, according to the teachings of Dudko. This is a predictable result of the combination.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because it would result in an improved consumption of the content (Dudko: [0125]).
Regarding Claim 12, Good/Dudko teach the computer-implemented method of Claim 11, wherein the preset time is stored in a stream object that comprises at least a universally unique identifier (UUID), a source of the video content, a list of products to be presented in association with the video content, and associated start and end times within the video content for presenting information regarding each product in the list of products (Good: “a unique identification number may be assigned by the server side script to the played episode of the video.” [0022] – “Upon uploading the video, various metadata are uploaded relating to the video at 318. Some of the meta-data relates to identification of shopable items shown in the video. Metadata uploaded with the video can also include information Such as video length, format, ownership, and copyright information. … Other metadata associated with the video can also be generated by the video sweep tool described further below. For example, metadata generated by the video Sweep tool may include timestamp data for each identified shopable item.” [0038]).
Regarding Claim 13, Good/Dudko teach the computer-implemented method of Claim 11,
wherein the video content is displayed in at least one of an application or a website presented on a user device (Good: “The consumer device 114 may be used to connect to the video provider website at video provider website 116 to view the video.” [0019]), and
wherein initiating the purchase without redirecting the user from the video content comprises fully executing a purchase transaction without redirecting the user device from the application or the website to any other application or other website (Good: “the shopable item may be placed in a tap cart for current … viewing by the user without pausing or freezing the video playback experience or linking to another page with information about the shopable item.” [0023] – “From the tap cart system, a transaction to purchase an item may occur by pushing the saleable item from the tap cart to a shopping cart” [0029] – “the user viewing the video has an option to simultaneously view a tap cart to investigate the selected saleable items and purchase the items if desired. … If a saleable item is selected for purchase, the user may be linked to a merchant shopping cart. The shopping cart for execution of a purchase may be hosted on the video provider website” [0068-0070]).
Regarding Claim 14, Good/Dudko teach the computer-implemented method of Claim 11, wherein causing display of the one or more selectable items comprises causing display of at least one of an image or a description of a good or service (Good: “a video is shown playing that includes a shopable item 233 in the video. … The coordinates on the video display portion of the website display are touchable if the item is a saleable item.” [0028] – “ this tap zone is made part of an overlay on the video display window or screen so when it is touched or clicked the saleable item in the video is selected” [0038] – As illustrated in Figure 2, an image rendering of the item is displayed in the video.).
Regarding Claim 16, Good/Dudko teach the computer-implemented method of Claim 11, wherein two or more selectable items are displayed in order of appearance specified in stored data [“metadata”] associated with the video content, such that each successively displayed selectable item appears above a previously displayed selectable item (Good: “Upon uploading the video, various metadata are uploaded relating to the video at 318. Some of the meta-data relates to identification of shopable items shown in the video. … Other metadata associated with the video can also be generated by the video sweep tool … may include timestamp data for each identified shopable item.” [0038] – “an overlay on the playing video that acts like a transparent layer on top of the playing video.” [0023] – “The coordinates on the video display portion of the website display are touchable if the item is a saleable item. The coordinates follow the saleable item as it moves with the video. … receives the touchscreen or click feedback and associates it with the coordinates at the time-stamped frame in the video.” [0028] – “With activated tap zones, the shopable items in the video are saleable items. Otherwise, the system mutes or may not accept interaction at a tap zone.” [0016] – It is understood that a subsequently displayed item, according to the metadata, will ‘appear’/be interactable on the overlay layer above the video as it appears on-screen.).
Regarding Claim 17, Good/Dudko teach the computer-implemented method of Claim 11, wherein each of the one or more executable transactions are further associated in stored data with an end time during the duration of play, wherein the end time represents a time during playback of the video content at which a corresponding executable transaction is no longer available for user selection (Good: “a video is shown playing that includes a shopable item 233 in the video. … The coordinates on the video display portion of the website display are touchable if the item is a saleable item. The coordinates follow the saleable item as it moves with the video. Touching the saleable item 233 indicates via the overlay to the video interactive selection system a desire to shop for or purchase the item. … receives the touchscreen or click feedback and associates it with the coordinates at the time-stamped frame in the video.” [0028] – “With activated tap zones, the shopable items in the video are saleable items. Otherwise, the system mutes or may not accept interaction at a tap zone.” [0016] – It is understood that the end time for an item is when the particular item is no longer on-screen, such that it no longer has coordinates.).
Regarding Claims 18-21 and 23-24, the limitations of system claims 18-21 and 23-24 are closely parallel to the limitations of method claims 11-14 and 16-17, with the additional limitations of a system comprising: at least one processor; and at least one memory device that stores a plurality of instructions that, when executed by the at least one processor, cause the at least one processor to perform steps (Good: [0017]), and are rejected on the same basis.
Claims 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Good, in view of Dudko, and further in view of Miller et al (US 20080276269 A1), hereinafter Miller.
Regarding Claim 15, Good/Dudko teach the computer-implemented method of Claim 11, but do not specifically teach that the one or more selectable items appear as partially transparent over the video content.
However, Miller teaches for advertising in web-based videos (Miller: Abstract), including that the one or more selectable items appear as partially transparent over the video content (Miller: “a translucent advertisement blind 502 appears (or is rolled up) superimposed on a portion of video content window 501; in one embodiment the originally requested video continues to play without interruption.” [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because the results would be predictable. Specifically, Good/Dudko would continue to teach the one or more selectable items, except that now it would also teach that the one or more selectable items appear as partially transparent over the video content, according to the teachings of Miller. This is a predictable result of the combination.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because it would result in an improved ability to keep users from getting discouraged over the time they will need to spend looking at the advertising (Miller: [0035]).
Regarding Claim 22, the limitations of claim 22 are closely parallel to the limitations of claim 15 and are rejected on the same basis.
Response to Arguments
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive.
Claim Rejection – 35 USC §101
Applicant argues that “the claims are directed to a specific improvement in the way an interactive video interface presents and executes transactions during ongoing playback,” arguing that “prior techniques required additional user action that normally interferes with the continued delivery of the content,” and that the claims provide means “so that transactions may be executed without redirecting users or interfering with content delivery.” Applicant states that the claims “recite a particular manner of presenting time-limited executable transaction items and a countdown timer during video playback, while preserving uninterrupted playback and avoiding redirection away from the video environment.” Applicant draws reference to DDR to argue that the pending claims solve “the technological problem of conventional systems redirecting the user away from the content,” “with a specific interface architecture and playback-state transaction sequence that keeps the user within the same ongoing video experience.”
Examiner respectfully disagrees. The argued ability to present time-limited transaction items and initiate a checkout while content is being displayed without interruption is part of the abstract idea itself, as identified in the rejection above. Rather than improving the functioning of video technology, the pending claims merely invoke the additional elements as instructions to apply this abstract idea to a technological environment [MPEP 2106.05(f)]. At best, the alleged improvement of reducing interruption/redirection from presented content is a business improvement stemming solely from the abstract idea rather than a technological improvement rooted in the additional elements. Whereas DDR improves the functioning of a computer with a specific method rooted in the detailed structure of the recited additional elements, the pending claims invoke the additional elements to provide only a general linking to computer technology.
Applicant further argues that the claims “are not so profoundly abstract as to necessitate overriding the broad statutory categories of patent eligibility.”
Examiner disagrees. With reference to the rejection above, the claims are not found to recite an abstract idea outside the recited grouping of abstract ideas enumerated in MPEP 2106; rather, the claims recite limitations that provide a concept of time-limited promotional sales. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106, in that they recite commercial interactions, e.g. sales activities/behaviors, and managing personal behavior or relationships or interactions between people, e.g., following rules or instructions. Accordingly, under Prong One of Step 2A, claims 11-24 recite an abstract idea.
Claim Rejection – 35 USC §103
Applicant argues the “independent claims require: while the video content continues to play and be displayed on the display screen, executing the first executable transaction.” Applicant contends that “Good does not teach this and neither does Dudko.” Applicant argues that “as can be appreciated by almost anyone, anytime that you want to actually initiate a purchase on a platform…you are taken to an entirely different screen where you then input your credit card information and you provide your shipping information and choose shipping speed. Then, after all that, …you are directed to yet another, entirely different confirmation/thank you page.”
Examiner disagrees, and respectfully notes that Applicant is largely arguing operations not claimed, and not supported by the disclosure, e.g. separate pages for selecting shipping speed, “thank-you” page, etc. With reference to the rejection above, the combination of Good and Dudko teach the limitations of the independent claims as actually recited: Good teaches displaying a video on a screen that has a set length [0028,0038]. In this video are goods, referred to as “shopable items,” that are identified and tracked within video frames to record their coordinates and timestamp [0015]. At any given time point in the video as it is played for a user, the system allows for the corresponding displayed items to be touched by the user to express a desire to shop for the item [0028]. Each of these item may be placed in a tap cart by the user for current or later viewing “without pausing or freezing the video playback experience or linking to another page” [0023] This cart “is viewable simultaneously with the ongoing video playback… without pausing the video.” From this tap cart, the user can select to make a transaction occur [0029] Specifically, while still viewing the video, the user can “simultaneously view a tap cart to investigate the selected saleable items and purchase the items if desired” [0068]. While Good teaches that the items are displayed for a limited period of time for user selection & purchase, the rejection turns to Dudko to teach that such time-limited items within a video can be associated with a “countdown timer” [0029] indicating how long the user has to interact with such an item [0063] before it “disappears from the screen” [0029]. In other words, Good teaches that a user can add items to a cart, select a button to initiate a checkout, and “investigate the selected saleable items and purchase the items” from a screen simultaneously to the video still playing.
Applicant further argues that “no person of ordinary skill in the art would have modified Good’s merchant-shopping-cart/possible-other-website purchase path into Applicant’s claimed no-redirect, no-stop, in-player transaction flow.” Applicant argues that the rejection points to Dudko to teach “an absolutely massive new list of limitations that take up many, many lines of text and which are effectively a copy and paste of a significant portion of Applicant’s independent claims.” Applicant contends that the rejection “concludes simply by then saying that this is a predictable result of the combination,” without “providing a clear line of reasoning why one would make the combination.”
Examiner disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Good teaches all but one step of the independent claims. The alleged “massive new list of limitations” argued by Applicant is a single step of the claimed method; Applicant correctly noted that the rejection identifies the exact text of the claimed step before pointing to the portions of Dudko which teach it. Applicant incorrectly argues that the rejection “concludes” with the statement “that this is a predictable result of the combination,” neglecting the next sentence of the rejection, which provides the motivation to combine the time-limited purchasable items on-screen during a video from Good with the countdown timer for interaction with time-limited on-screen items during a video of Dudko, which Applicant overlooked: “it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because it would result in an improved consumption of the content (Dudko: [0125]).” In other words, by visually displaying the remaining time for Good’s time-limited on-screen items, a person of ordinary skill in the art would recognize that the user would be better able to consume the content, recognizing & taking advantage of the available purchase opportunity during its availability window.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bonovich et al (US20160205439A1) teaches systems for overlaying advertising and completing purchasing for items featured in a video without interrupting the video/program being watched.
Silver (US 20140195675 A1) teaches advertising overlays that do not interrupt simultaneously displayed content video streams, including providing for purchasing abilities.
Sgarglino (US 20030229893 A1) teaches advertising videos that include a timer indicating how long the advertisement will be displayed.
Avedissian et al (US 20160205431 Al) teaches video reviews of products, in which the video is time stamped for each item being reviewed and tagged for that item, such that a user can select a link to view the item, with a timer counting down to zero for when the link will not be available .
References U & V (NPL - see attached) discuss overlaying advertising messages at timestamped points in a video.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/T.J.S./Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689
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