NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/802,812 (“the ‘812 application”) for U.S. Patent No. 10,455,073 (“the ‘073 Patent”).
Claim 1 has been amended. Claims 2-15 have been canceled. Claims 16-32 have been added. Claims 1 and 16-32 are pending.
Reissue Declaration
The Declaration By The Assignee (“Reissue Dec”) filed August 13, 2024, states,
“Independent claim 1 of the original patent 10,455,073 does not recite "execute a first application according to a request of execution by a user wherein audio generated in the first application is set to be continuously output via the speaker." Accordingly, the instant reissue amends independent claim 1 to recite these features.”
Claim Rejections - 35 USC § 251
Claims 27-32 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. Claims 27-32 are directed to a computer-readable recording medium, which is a new statutory category claimed compared with the original claims that included method and apparatus claims. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects. See MPEP §§ 1412.02(V); 1412.03.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘073 Patent
1
1
communication circuitry configured to communicate with a peripheral device
See at least col. 8, line 49-col. 9, line 22; Item 110 in Fig. 3
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
Furthermore, a review of the specification supports a § 112 ¶ 6 claim interpretation: “The term such as “module,” “unit,” “part”, and so on is used to refer to an element that performs at least one function or operation, and such element may be implemented as hardware or software, or a combination of hardware and software.” (the ‘073 Patent, col. 5, lines 20-24)
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 16-20 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “wherein audio generated in the first application is set to be continuously output via the speaker.”
Claim 30 recites, “the audio of the first application is continuously output via the speaker.”
The disclosure of the ‘073 Patent says,
“Accordingly, the user may continuously listen to music reproduced through the second peripheral device which is a car audio output device of the vehicle through the third peripheral device 200-3 which is an external device disposed at home of the user.” (the ‘073 Patent at col. 16, lines 40-44)
This is the only mention in the disclosure of something occurring “continuously.” Examiner finds that the disclosure indicating “the user may continuously listen to music reproduced through the second peripheral device” is not the same as audio being “continuously output via the speaker.” As such, Examiner finds that the limitations of “wherein audio generated in the first application is set to be continuously output via the speaker” and “the audio of the first application is continuously output via the speaker” do not have written description support in the specification.
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 1 and 30 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.
Claim 1 recites, “wherein audio generated in the first application is set to be continuously output via the speaker.”
Claim 30 recites, “the audio of the first application is continuously output via the speaker.”
It is unclear what “continuously output” means and a review of the disclosure does not provide clarity. Does “continuously output” mean the audio is played without interruption? Or does “continuously output” mean the audio is played only on the speaker (i.e., the speaker is the device currently selected as the dedicated device to play the audio).
Additionally, as per claim 1, it is not clear if the “first application” and “second application” are part of the user terminal device. Do the “first application” and “second application” reside on the user terminal device?
Clarification is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 18, 20, 21, 24, 26, 27, 31, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pub. No. 2013/0093958 to Yoshikawa (“Yoshikawa”).
1. Yoshikawa discloses a user terminal device, comprising:
[0038] “According to a preferred embodiment of the present invention, an electronic system may be provided in which a portable information terminal (hereinafter referred to as an information terminal) is connected to an electronic apparatus mounted in a vehicle that is a mobile unit. The information terminal may be a portable apparatus capable of processing information and preferably is a multifunction terminal having a communication function. For example, the information terminal may be a cellular phone, a smart phone, a palmtop personal computer, a laptop computer, a notebook computer or the like. The information terminal may implement various functions by executing applications implemented therein, including an external network connection, a voice call, and storage of audio data and video data.”
[0041] “The electronic apparatus 130 may include a television receiving function and a media play function for a CD, a DVD or the like and further includes a display and a speaker in a space within a vehicle.”
communication circuitry configured to communicate with a peripheral device;
[0039] “The electronic apparatus may be connected to the information terminal through wired or wireless data communication means so that data may be exchanged between the apparatuses…Data communication may be implemented by connection via a USB cable, short-distance wireless connection based on Bluetooth.quadrature. technology, a wireless LAN, or Wi-Fi, for example.”
a speaker configured to output audio signals; and
[0041] “The electronic apparatus 130 may include a television receiving function and a media play function for a CD, a DVD or the like and further includes a display and a speaker in a space within a vehicle.”
[0045] “an audio output unit 230 which outputs audio”
[0049] “an audio output unit 330 which outputs audio through a speaker”
a controller comprising a processor configured to:
[0045] “a control unit1 250”
execute a first application according to a request of execution by a user, wherein audio generated in the first application is set to be continuously output via the speaker; and
[0046] “The control unit 250 executes an application and/or a program stored in the program memory 260. The program memory 260 may store, for example, an application for reproducing audio data and/or image data stored in the data memory 270, an application for executing a game, an application for executing a navigation function, an application allowing a voice call, and/or an application for browsing information over the Internet through the communication unit 240.”
[0055] “In the information terminal 110, a navigation application and a music play application are being simultaneously executed… In the terminal mode, the information terminal 110 transfers image data on the music play screen that is a foreground screen and reproduced audio data to the electronic apparatus 130.”
Depending on the terminal mode, the audio will continuously output via the information terminal or the electronic apparatus.
control the communication circuitry to transmit, to the peripheral device, the audio of a second application corresponding to an audio event of the second application, if the audio event occurs while the audio of a generated in the first application is output via the speaker.
[0055] “In the information terminal 110, a navigation application and a music play application are being simultaneously executed…In the terminal mode, the information terminal 110 transfers image data on the music play screen that is a foreground screen and reproduced audio data to the electronic apparatus 130.”
[0056] “In the navigation application, when a route to a destination is set, an interrupt event of intersection guidance occurs at a certain timing in accordance with the movement of the vehicle or information terminal 110. In this case, audio output of intersection guidance interrupts the audio data being reproduced in the information terminal 110 (S202). This stops the transfer of audio data of the music play from the information terminal 110, and the audio data of intersection guidance subject to the interrupt processing is transferred to the electronic apparatus 130.”
Claims 21 and 27 recite substantially similar subject matter to that of claim 1. Therefore, claims 21 and 27 are rejected on the same basis as claim 1.
18. Yoshikawa discloses the user terminal device as claimed in claim 1, wherein the communication circuitry comprises a near field communication module, wherein the controller is configured to transmit an audio signal of the second application corresponding to the audio event to the peripheral device through the near field communication module, wherein the near field communication module comprises at least one of a Bluetooth module, an infrared data association module, a Wi-Fi module, or a Zigbee module.
[0039] “Data communication may be implemented by connection via a USB cable, short-distance wireless connection based on Bluetooth.quadrature. technology, a wireless LAN, or Wi-Fi, for example.”
Claims 24 and 31 recite substantially similar subject matter to that of claim 18. Therefore, claims 24 and 31 are rejected on the same basis as claim 18.
20. The user terminal device as claimed in claim 1, wherein the first application is a navigation application or a call application, and the second application is a music reproduction application or a video reproduction application.
[0046] “The program memory 260 stores various kinds of application software and programs…The program memory 260 may store, for example, an application for reproducing audio data and/or image data stored in the data memory 270, an application for executing a game, an application for executing a navigation function, an application allowing a voice call, and/or an application for browsing information over the Internet through the communication unit 240.”
[0048] “When two or more applications are being executed in the information terminal, for example, when a music play application and a navigation application are being executed…”
[0055] “In the information terminal 110, a navigation application and a music play application are being simultaneously executed…”
Claims 26 and 32 recite substantially similar subject matter to that of claim 20. Therefore, claims 26 and 32 are rejected on the same basis as claim 20.
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 16, 17, 19, 22, 23, 25, 28, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 2013/0093958 to Yoshikawa (“Yoshikawa”) and U.S. Pub. No. 2014/0294194 to Park et al. (“Park”).
16. Yoshikawa does not expressly disclose the user terminal device as claimed in claim 1, wherein the controller further comprises a display to display a user interface (UI) for setting a device to output the audio of the second application, wherein the UI comprises an icon of at least one device capable of outputting the audio of the second application.
While Yoshikawa discloses displaying icons for selecting applications
([0053] “In the terminal mode, image data on a display screen of the display of the information terminal 110 is transferred to the electronic apparatus 130, and the same display screen is output to the display of the electronic apparatus 130. The display shows an icon and/or a menu of an application in the information terminal 110, which may be remotely controlled from the electronic apparatus 130.”
[0048] “The start of an application may be requested by, for example, a user by selecting an icon shown on the display of the electronic apparatus 130.”),
Yoshikawa does not disclose the icons refer to devices for outputting the audio of the application.
Park discloses a user interface for displaying the devices for selection. (Park, [0057], Figs. 5 and 7B)
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to modify Yoshikawa to have its icons include peripheral devices for selection as doing so allows users to designate which peripheral devices they wish to play audio on, thereby enabling users to customize which peripheral devices are used (Park, [0076], “By providing such an interface, the conventional problem where all audios are output through one audio output unit may be resolved.”).
Claims 22 and 28 recite substantially similar subject matter to that of claim 16. Therefore, claims 22 and 28 are rejected on the same basis as claim 16.
17. Yoshikawa discloses selection of icons as discussed in claim 16.
Park discloses the user terminal device as claimed in claim 16, wherein the controller is configured to, in response to the UI comprising the icon of the at least one device capable of outputting the audio of the second application being displayed, based on at least one icon being selected, set a device corresponding to the at least one selected icon to the device to output the audio of the second application.
[0057] “In S201, the user selects one terminal based on the audio output states of the terminals in the list, for example, whether the terminals are currently outputting audios. For example, if the first terminal 100 and the second terminal 200 are provided in the list, and a sound relating to a motion picture is reproduced in the second terminal 200, the user selects the first terminal 100.”
[0058] “In S202, the audio output path control unit 132 selects the terminal selected by the user as an audio output path in accordance with the user's selection.”
See also Figs. 5 and 7B.
Claims 23 and 29 recite substantially similar subject matter to that of claim 17. Therefore, claims 23 and 29 are rejected on the same basis as claim 17.
19. Yoshikawa does not expressly disclose the user terminal device as claimed in claim 18, wherein the peripheral device to transmit the audio signal of the second application is preset.
Park discloses presetting music to be output to a speaker. [0008], [0041], [0043], Fig. 2.
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to modify Yoshikawa to have the peripheral device to transmit the audio signal of the second application be preset as doing so allows users to designate the peripheral devices prior to executing the applications, thereby enabling users to customize the order in which peripheral devices are selected to play audio (Park, [0043], [0076], “By providing such an interface, the conventional problem where all audios are output through one audio output unit may be resolved.”).
Claim 25 recites substantially similar subject matter to that of claim 19. Therefore, claim 25 is rejected on the same basis as claim 19.
30. Yoshikawa discloses the recording medium of claim 29, wherein, while the audio of the second application is being transmitted to the peripheral device, the audio of the first application is continuously output via the speaker.
[0046] “The control unit 250 executes an application and/or a program stored in the program memory 260. The program memory 260 may store, for example, an application for reproducing audio data and/or image data stored in the data memory 270, an application for executing a game, an application for executing a navigation function, an application allowing a voice call, and/or an application for browsing information over the Internet through the communication unit 240.”
[0055] “In the information terminal 110, a navigation application and a music play application are being simultaneously executed… In the terminal mode, the information terminal 110 transfers image data on the music play screen that is a foreground screen and reproduced audio data to the electronic apparatus 130.”
Depending on the terminal mode, the audio will continuously output via the information terminal or the electronic apparatus.
Information Disclosure Statement
Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
“Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO /SB /08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above.”
Notification of 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 ‘073 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.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/Stephen J. Ralis/Primary Examiner, Art Unit 3992
/Andrew J. Fischer/Supervisory Patent Examiner, Art Unit 3992
1 Where a control unit is known to include a processor. See, for example, US 20150012313 A1 to Yoshioka [0093], which shows a user terminal that includes a control unit that includes a CPU.
Prosecution Insights