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 .
Response to Amendment
Receipt is acknowledged of the amendment filed 2/28/2025. Claim 1 has been canceled. Claims 2-21 have been added. Claims 2-21 are pending and an action on the merits is as follows.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-14 and 16-20 of U.S. Patent No. 10,461,955 (hereinafter ‘955). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding Claim 2 of the Instant Application (hereinafter IA) recites: A method for preventing media viewing interruptions, the method comprising:
([Patent ‘955 claim 1] “A method for preventing media viewing interruptions, the method comprising:”)
determining, at a control circuitry, a current playback of a media asset;
([Patent ‘955 claim 1] “… receiving at control circuitry, selection of a media asset for playback…” is similar in that the claimed determination is made by the reception action of Patent ‘955.)
determining, at the control circuitry, a time period for the current playback of the media asset;
([Patent ‘955 claim 1] “… determining, with the control circuitry, a time period for playback of the media asset…”)
in response to the determination of the current playback of the media asset, receiving, at the control circuitry, operation status information of an operation being performed by a network-connected device;
([Patent ‘955 claim 1] “… responsive to the selection of the media asset, receiving, at the control circuitry, from a network-connected device in a home of the user, operation status information of an operation being performed by the network-connected device...)
determining, at the control circuitry, a time period to perform the operation and an end time for performance of the operation; ([Patent ‘955 claim 1] “… determining, with the control circuitry, a time period to perform the operation, a start time for performance of the operation, and an end time for performance of the operation…”)
determining, at the control circuitry, that the end time for performance of the operation coincides with any point within the time period for the current playback of the media asset;
([Patent ‘955 claim 1] “… determining that the end time for performance of the operation precedes completion of the time period for the playback of the media asset”)
determining, at the control circuitry, based on the operation status information, that the operation can be extended to terminate after completion of the time period for the current playback of the media asset without the operation triggering a condition on the network-connected device; and
([Patent ‘955 claim 1] “…determining, with the control circuitry, based on the operation status information and the respective operation procedure, whether the operation can be extended to terminate after completion of the time period for the playback of the media asset without the operation triggering the condition on the network-connected device”…)
in response to determining that the operation can be extended, transmitting, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device.
([Patent ‘955 claim 1] “… in response to determining that the operation can be extended, transmitting, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device…”)
Regarding Claim 12 of the Instant Application (hereinafter IA) recites: A system for preventing media viewing interruptions, the system comprising: control circuitry configured to:
([Patent ‘955, claim 11] “A system for preventing media viewing interruptions, the method comprising:… control circuitry configured to:…”)
determine, at a control circuitry, a current playback of a media asset;
([Patent ‘955, claim 11] “… receive selection of a media asset for playback…” is similar in that the claimed determination is made by the reception action of Patent ‘955.)
determine, at the control circuitry, a time period for the current playback of the media asset;
([Patent ‘955 claim 11] “… determine a time period for playback of the media asset…”)
in response to the determination of the current playback of the media asset, receive, at the control circuitry, operation status information of an operation being performed by a network-connected device;
([Patent ‘955 claim 11] “… responsive to the selection of the media asset, receive from a network-connected device in a home of the user, operation status information of an operation being performed by the network-connected device...)
determine, at the control circuitry, a time period to perform the operation and an end time for performance of the operation;
([Patent ‘955 claim 11] “… determine a time period to perform the operation, a start time for performance of the operation, and an end time for performance of the operation…”)
determine, at the control circuitry, that the end time for performance of the operation coincides with any point within the time period for the current playback of the media asset;
([Patent ‘955 claim 11] “… determine that the end time for performance of the operation precedes completion of the time period for the playback of the media asset”)
determine, at the control circuitry, based on the operation status information, that the operation can be extended to terminate after completion of the time period for the current playback of the media asset without the operation triggering a condition on the network-connected device; and
([Patent ‘955 claim 11] “…determine, based on the operation status information and the respective operation procedure, whether the operation can be extended to terminate after completion of the time period for the playback of the media asset without the operation triggering the condition on the network-connected device”…)
in response to determining that the operation can be extended, transmit, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device.
([Patent ‘955 claim 11] “… in response to determining that the operation can be extended, transmit a command to the network-connected device to extend the operation currently performed by the network-connected device…”)
Regarding claims 3 and 13 of the IA, corresponding claims 2 and 12 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 4 and 14 of the IA, corresponding claims 3 and 13 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 5 and 15 of the IA corresponding claims 4 and 14 respectively of Patent ‘955 recites substantially similar claim limitations with differences being related to the neutral condition which is claimed in the Patent ‘955 as relating to the command for an operation that is non-detrimental. Similarly, the lack of requiring a user response as claimed in the IA is similarly claimed by Patent ‘955 as extending the operation to terminate after completion of the time period for the playback of the media asset without triggering a condition, which would require user to receive notification and thus require a user response to the received notification.
Regarding claims 6 and 16 of the IA, corresponding claims 6 and 16 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 7 and 17 of the IA, corresponding claims 7 and 17 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 8 and 18 of the IA, corresponding claim 1 and 11 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 9 and 19 of the IA, corresponding claim 8 and 18 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 10 and 20 of the IA, corresponding claims 9 and 19 respectively of Patent ‘955 recites substantially similar claim limitations.
Regarding claims 11 and 21 of the IA, corresponding claims 10 and 20 of Patent ‘955 recites substantially similar claim limitations, wherein the second claim limitations regarding the notification is substantially similar to the presentation of the notification in claims 1 and 11 respectively of Patent ‘955.
Claims 2-7, 9-17 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-15 and 17-20 of U.S. Patent No. 10,979,244 (hereinafter Patent ‘244). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding Claim 2 of the Instant Application (hereinafter IA) recites: A method for preventing media viewing interruptions, the method comprising:
([Patent ‘244 claim 1] “A method for preventing media viewing interruptions, the method comprising:”)
determining, at a control circuitry, a current playback of a media asset;
([Patent ‘244 claim 1] “… receiving selection of a media asset for playback…” is similar in that the claimed determination is made by the reception action of Patent ‘244.)
determining, at the control circuitry, a time period for the current playback of the media asset;
([Patent ‘244 claim 1] “… determining a time period for playback of the media asset…”)
in response to the determination of the current playback of the media asset, receiving, at the control circuitry, operation status information of an operation being performed by a network-connected device;
([Patent ‘244 claim 1] following reception of the selection of the media asset for playback “… receiving, …, operation status information of an operation being performed by the network-connected device...”)
determining, at the control circuitry, a time period to perform the operation and an end time for performance of the operation;
([Patent ‘244 claim 1] “… determining a time period to perform the operation, a start time for performance of the operation, and an end time for performance of the operation…”)
determining, at the control circuitry, that the end time for performance of the operation coincides with any point within the time period for the current playback of the media asset;
([Patent ‘244 claim 1] “… determining that the end time for performance of the operation precedes completion of the time period for the playback of the media asset …”)
determining, at the control circuitry, based on the operation status information, that the operation can be extended to terminate after completion of the time period for the current playback of the media asset without the operation triggering a condition on the network-connected device; and
([Patent ‘244 claim 3] “… determining based on the operation status information and the respective operation procedure, whether the operation can be extended to terminate after completion of the time period for the playback of the media asset …”)
in response to determining that the operation can be extended, transmitting, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device.
([Patent ‘955 claim 3] “… in response to determining that the operation can be extended, transmitting a command to the network-connected device to extend the operation currently performed by the network-connected device…”)
Regarding claim 12, the IA recites:
A system for preventing media viewing interruptions, the system comprising:
([Patent ‘244, Claim 11] “A system for preventing media viewing interruptions, the system comprising: …”)
control circuitry configured to:
determine, at the control circuitry, a current playback of a media asset;
determine, at the control circuitry, a time period for the current playback of the media asset;
in response to the determination of the current playback of the media asset, receive, at the control circuitry, operation status information of an operation being performed by a network-connected device;
([Patent ‘244, Claim 11] “… and control circuitry configured to: receive selection of a media asset for playback …; receive … operation status information of an operation being performed by the network-connected device; determine a time period for playback of the media asset; …”)
determine, at the control circuitry, a time period to perform the operation and an end time for performance of the operation;
determine, at the control circuitry, that the end time for performance of the operation coincides with any point within the time period for the current playback of the media asset;
([Patent ‘244, Claim 11] “… determine a time period to perform the operation, a start time for performance of the operation, and an end time for performance of the operation; determine that the end time for performance of the operation precedes completion of the time period for the playback of the media asset; …”
determine, at the control circuitry, based on the operation status information, that the operation can be extended to terminate after completion of the time period for the current playback of the media asset without the operation triggering a condition on the network-connected device; and
in response to determining that the operation can be extended, transmit, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device.
([Patent ‘244, Claim 13] “… wherein the control circuitry is further configured to: determine based on the operation status information whether the operation can be extended to terminate after completion of the time period for the playback of the media asset; in response to determining that the operation can be extended, transmit a command to the network-connected device to extend the operation currently performed by the network-connected device; and in response to determining that the operation cannot be extended, present a notification about the operation.”)
Regarding claims 3 and 13 of the IA, corresponding claims 2 and 12 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 4 and 14 of the IA, corresponding claims 4 and 14 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 5 and 15 of the IA, corresponding claims 5 and 15 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 6-7 and 16-17 of the IA, corresponding claims 7 and 17 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 9 and 19 of the IA, corresponding claims 8 and 18 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 10 and 20 of the IA, corresponding claims 9 and 19 respectively of Patent ‘244 recites substantially similar claim limitations.
Regarding claims 11 and 21 of the IA, corresponding claims 10 and respectively of Patent ‘955 recites substantially similar claim limitations.
Claims 2-7, 9-17 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-15 and 17-20 of U.S. Patent No. 11,563,596 (hereinafter Patent ‘596). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 2 and 12 of the IA, corresponding the combination of claims 11 and 13 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 3 and 13 of the IA, corresponding the combination of claim 12 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 4 and 14 of the IA, corresponding the combination of claim 14 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 5 and 15 of the IA, corresponding the combination of claim 15 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 6 and 16 of the IA, corresponding the combination of claim 19 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 7 and 17 of the IA, corresponding the combination of claim 19 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 8 and 18 of the IA, corresponding the combination of claim 13 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 9 and 19 of the IA, corresponding the combination of claim 17 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 10 and 20 of the IA, corresponding the combination of claim 18 of Patent ‘596 recites substantially similar claim limitations.
Regarding claims 11 and 21 of the IA, corresponding the combination of claim 20 of Patent ‘596 recites substantially similar claim limitations.
Allowable Subject Matter
Claims 2-21 are allowed.
The following is an examiner’s statement of reasons for allowance:
The Examiner has conducted an updated search of the available Patent and Non-Patent Literature and was unable to find any prior art which teaches either solely or in combination with another reference the claim limitation of “…determining, at the control circuitry, that the end time for performance of the operation coincides with any point within the time period for the current playback of the media asset; determining, at the control circuitry, based on the operation status information, that the operation can be extended to terminate after completion of the time period for the current playback of the media asset without the operation triggering a condition on the network-connected device; and in response to determining that the operation can be extended, transmitting, using the control circuitry, a command to the network-connected device to extend the operation currently performed by the network-connected device”, in combination with all the other claim limitations.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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/LONNIE V SWEET/Primary Examiner, Art Unit 2467
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