DETAILED ACTION
Introduction
1. This office action is in response to Applicant's submission filed on 08/19/2024. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 are currently pending and examined below.
Drawings
2. The drawings filed on 08/19/2024 have been accepted and considered by the Examiner.
Information Disclosure Statement
3. The Information Statements (IDSs) filed on 08/19/2024 and 03/17/2025 have been accepted and considered in this office action and are in compliance with the provisions of 37 CFR 1.97.
Priority
4. The Applicants priority to U.S. Provisional Patent Application # 62/212,423, filed August 31, 2015, has been accepted and considered in this office action.
Double Patenting
5. The non-statutory 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 time-wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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 Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed e-terminal disclaimer (e-TD) in compliance with 37 CFR 1.321 (c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign an e-terminal disclaimer. An e-terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 of the instant Application are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent # 10871942. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 10871942 and hence the claims of U.S. Patent # 10871942 can anticipate those of the present invention. That is, the claims of U.S. Patent # 10871942 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional non-statutory obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 10871942 both teach a method performed by at least one computer processor of a mobile device, the method comprising enabling a content stream via an identifier to be accessible as an audio command; receiving, by the mobile device, a confirmation message to generate the audio command to view the content stream; converting, responsive to receiving the confirmation message, the identifier into the audio command, wherein converting the identifier comprises determining a mapping between information in the identifier to a digitized audio sequence associated with the audio command; issuing, by a speaker of the mobile device, the audio command as sound data and activating an audio command application on the mobile device, wherein the audio command application is configured to detect the sound data and transmit the sound data to the multimedia device. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 10871942 anticipates the broader claim 1 of the instant application. Also, removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
Claims 1-20 of the instant Application are also rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent # 10048936. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 10048936 and hence the claims of U.S. Patent # 10048936 can anticipate those of the present invention. That is, the claims of U.S. Patent # 10048936 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional non-statutory obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 10048936 both teach a method performed by at least one computer processor of a mobile device, the method comprising enabling a content stream via an identifier to be accessible as an audio command; receiving, by the mobile device, a confirmation message to generate the audio command to view the content stream; converting, responsive to receiving the confirmation message, the identifier into the audio command, wherein converting the identifier comprises determining a mapping between information in the identifier to a digitized audio sequence associated with the audio command; issuing, by a speaker of the mobile device, the audio command as sound data and activating an audio command application on the mobile device, wherein the audio command application is configured to detect the sound data and transmit the sound data to the multimedia device. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 10048936 anticipates the broader claim 1 of the instant application. Also, removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
Claims 1-20 of the instant Application are also rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-24 of U.S. Patent # 12112096. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 12112096 and hence the claims of U.S. Patent # 12112096 can anticipate those of the present invention. That is, the claims of U.S. Patent # 12112096 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional non-statutory obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 12112096 both teach a method performed by at least one computer processor of a mobile device, the method comprising enabling a content stream via an identifier to be accessible as an audio command; receiving, by the mobile device, a confirmation message to generate the audio command to view the content stream; converting, responsive to receiving the confirmation message, the identifier into the audio command, wherein converting the identifier comprises determining a mapping between information in the identifier to a digitized audio sequence associated with the audio command; issuing, by a speaker of the mobile device, the audio command as sound data and activating an audio command application on the mobile device, wherein the audio command application is configured to detect the sound data and transmit the sound data to the multimedia device. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 12112096 anticipates the broader claim 1 of the instant application. Also, removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
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 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.
6. Claims 1-6, 8-13 and 15-20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Mallinson (U.S. Patent Application Publication # 2011/0247042 A1).
With regards to claim 1, Mallinson teaches a method performed by at least one computer processor of a mobile device, the method comprising enabling a content stream via an identifier to be accessible as an audio command (Para 3, teaches a method to capture information about a video presentation, such as by recording an audio and/or video segment of the presentation using an appropriate user device. The video presentation can be any appropriate presentation, such as a live television broadcast, an on-demand movie, video content rendered from a physical medium, etc. The user can cause a request to be submitted to a remote system or service to attempt to identify or obtain additional information about at least one aspect of the video presentation);
receiving, by the mobile device, a confirmation message to generate the audio command to view the content stream (Para 23, teaches that the user can specify the type of information to be retrieved, such as a copy of the content, information about a product being displayed, actor or other program-specific information, etc. The user can also specify if he/she would like to view the results on a different device that the one used to capture the audio/video stream);
converting, responsive to receiving the confirmation message, the identifier into the audio command, wherein converting the identifier comprises determining a mapping between information in the identifier to a digitized audio sequence associated with the audio command (Para 20, teaches that At least one of these electronic devices can have the ability to capture information about the media being presented through the display device. An electronic device might have a video camera operable to capture a video segment, or at least one or two frames, of content displayed on the display device. Another device might have digital recording circuitry such that the device can capture audio information corresponding to the presented media over at least a minimum period of time, such as at least 2, 5, or 10 seconds. For directly connected devices, the audio feed can be directly via analog to digital or A2D or pure digital, monitored by a module or application of the device);
issuing, by a speaker of the mobile device, the audio command as sound data (Para 19 and figures 1-2, teach an example environment wherein a consumer is watching a video program displayed on a display device, such as a television, computer monitor, or video screen, among others. The display device typically will provide a video image as well as a corresponding audio signal, although other devices can be utilized that only utilize still images, audio, or video content. The consumer might have any of a number of other electronic devices within an audible or viewing range of the display device, such as at least one stationary component connected to the display device, such as a video player, gaming system, or set top box. Further, the consumer might have devices such as a cell phone, portable gaming device, personal data assistant or PDA, or any of a number of other such computing or electronic devices);
and activating an audio command application on the mobile device, wherein the audio command application is configured to detect the sound data and transmit the sound data to the multimedia device (Para 20, teaches that At least one of these electronic devices can have the ability to capture information about the media being presented through the display device. An electronic device might have a video camera operable to capture a video segment, or at least one or two frames, of content displayed on the display device. Another device might have digital recording circuitry such that the device can capture audio information corresponding to the presented media over at least a minimum period of time, such as at least 2, 5, or 10 seconds. For directly connected devices, the audio feed can be directly via analog to digital or A2D or pure digital, monitored by a module or application of the device).
With regards to claim 2, Mallinson teaches the method of claim 1, wherein responsive to activating the audio command application on the mobile device, the method further comprises configuring the mobile device to operate as a control device for a multimedia device (Para 40, teaches a connected device such as a gaming console, the gaming console that can continually record information being broadcast over one or more stations, such as a currently viewed station, and pre-buffer or otherwise store a constantly updating recently-broadcast period of information. The user can activate a capture or matching process by selecting or otherwise performing an input action, such as by pressing a button on a gaming controller or selecting an input on a remote controller, etc.);
and enabling sound capture functionality and audio command generation functionality on the mobile device (Para 23, teaches instances where the user captures the information with a computing device such as a smart phone, information such as the identity of the content can be transmitted to the device itself, such that the user can obtain the information on the same device that was used to capture the content. In other embodiments, the information might be sent to another device by the user, as might be specified by the user or otherwise determined. The user can also specify if he/she would like to view the results on a different device that the one used to capture the audio/video stream).
With regards to claim 3, Mallinson teaches the method of claim 2, wherein the audio command application comprises a plug-in for a content-accessing application stored on the mobile device (Para 23, teaches use of a cable box or digital video recorder or DVR).
With regards to claim 4, Mallinson teaches the method of claim 3, wherein the content-accessing application includes a messaging application or a browser application (Para 23, teaches that the user can access information such as related websites, product pages, etc.).
With regards to claim 5, Mallinson teaches the method of claim 1, wherein responsive to the audio command application detecting the sound data, the method further comprises extracting, by the audio command application, the audio command from the sound data (Para 24 and figure 3, illustrate an example process for matching content captured by a user that can be used in accordance with various embodiments. The captured media file e.g., audio, video, and/or one or more images is received from the user. The captured media file can be at least partially analyzed on the user device, such that information such as matching information or other identifying data can instead be received from the user device. The received media file can be analyzed, such as to extract or generate hash values or other such identifying characteristics. Information for the analyzed media file e.g., hash information can be compared against comparable information stored in at least one database or other such location. An audio fingerprinting process is used to compare audio information captured by the user with audio information stored in the database. Whether the user captured audio and video or image content, or audio content alone the audio portion can be analyzed to attempt to determine the content that was captured by the user);
and processing, by the audio command application, the extracted audio command (Para 25, teaches that if a match is located using the database 308, corresponding content referred to herein as "supplemental content", can be determined and/or located for the matching content).
With regards to claim 6, Mallinson teaches the method of claim 1, wherein the confirmation message is received in response to displaying, on the mobile device, a prompt for confirming whether to generate the audio command for viewing the content stream (Paragraphs 27-29, figures 5-6 and claim 7, teach prompting the user device display when more than one potential match is determined).
With regards to claims 8-13, these are system claims for the corresponding method claims 1-6. These two sets of claims are related as method and apparatus of using the same, with each claimed system element's function corresponding to the claimed method step. Accordingly, claims 8-13 are similarly rejected under the same rationale as applied above with respect to method claims 1-6.
With regards to claims 15-20, these are non-transitory computer readable device (CRD) claims for the corresponding method claims 1-6. These two sets of claims are related as method and CRD of using the same, with each claimed CRD element's function corresponding to the claimed method step. Accordingly, claims 15-20 are similarly rejected under the same rationale as applied above with respect to method claims 1-6.
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 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.
7. Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mallinson in view of Fukunaga (U.S. Patent # 4985914 A). Fukunaga is already of the record, having been disclosed in the prosecution of parent Application # 16103487.
With regards to claim 7, Mallinson may not explicitly detail the limitation further comprising queuing, by the audio command application, the audio command for later transmission to the multimedia device. This is taught by Fukunaga (Col 1, lines 30-38 and figure 1, teach that when retrieving a recorded voice message, main controller 1 issues a request to a disk controller 5 to read a recorded voice message from hard disk 6 and supplies it to the specified buffer memory where it is stored temporarily for later delivery to the requesting subscriber under control of the auxiliary controller in order to accommodate different transmission speeds among subscriber).
Mallinson and Fukunaga can be considered as analogous art as they belong to a similar field of endeavor in voice storage and retrieval systems. It would thus have been obvious to one having ordinary skill in the art to advantageously combine the teachings of Fukunaga (Use of a buffered or delayed transmission of audio commands) with those of Mallinson (Use of mobile devices to capture audio from media playback sources such as TVs) so as to reduce the burden of a controller that controls the synthesis of a voice response from stored voice segments (Fukunaga, col 1, lines 8-13).
With regards to claim 14, this is a system claim for the corresponding method claim 7. These two claims are related as method and apparatus of using the same, with each claimed system element's function corresponding to the claimed method step. Accordingly, claim 14 is similarly rejected under the same rationale as applied above with respect to method claim 7.
Conclusion
8. The following prior art, made of record but not relied upon, is considered pertinent to applicant's disclosure: Faaborg (U.S. Patent # 9082407 B1), Luomi (U.S. Patent # 6732078 B1). These references are also included in the PTO-892 form attached with this office action.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEERAJ SHARMA whose contact information is given below. The examiner can normally be reached on Monday to Friday 8 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre Louis-Desir can be reached on 571-272-7799 (Direct Phone). The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
/NEERAJ SHARMA/
Primary Examiner, Art Unit 2659
571-270-5487 (Direct Phone)
571-270-6487 (Direct Fax)
neeraj.sharma@uspto.gov (Direct Email)
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