Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in reply to the communications filed on March 23, 2026. The Applicants’ Amendment and Request for Reconsideration has been received and entered.
Claims 2-21 are currently pending and have been examined. Claims 2, 4-6, and 8-20 have been amended.
The previous rejection of claims 5 and 16 under 35 USC 112 (pre-AIA ) second paragraph), has been withdrawn.
The previous rejection of claims 8-16 under 35 USC 101 has been withdrawn.
Information Disclosure Statement
The information disclosure statement filed January 8, 2026, has been considered by the Examiner.
Response to Arguments
Applicants’ amendments necessitated any new grounds of rejection.
The previous rejection of claims 5 and 16 under 35 USC 112 (pre-AIA ) second paragraph), has been withdrawn in view of Applicants’ amendments.
The previous rejection of claims 8-16 under 35 USC 101 has been withdrawn in view of Applicants’ amendments. The Examiner notes that claims 8-16, as currently recited, do not recite any of the judicial exceptions enumerated in the MPEP and thus are patent eligible under 35 USC 101.
Applicants’ remaining arguments have been fully considered but they have either been addressed above or they are moot in view of the new grounds of rejection.
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.
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Claims 2, 4, 8, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 10,748,208 B2 to Yamanaka et al. (hereinafter “the 208 patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the processes performed by the systems and methods of the instant application would necessarily be performed by the systems and methods of the '208 patent.
For example, independent claim 2 in the instant application recites an information processing apparatus for processing content, comprising:
memory configured to store rental content downloaded from a content distribution server, license information associated with a first end time of a valid period of the rental content, and a key file associated with the license information; and
circuitry configured to
control a display to display an icon image corresponding to the rental content;
decode, using the license information, the rental content for playback;
based on a first playback of the decoded rental content,
write first playback time information into the key file; and
replace the first end time with a second end time that is earlier than the first end time; and
display one or more icon images of the rental content along with information in a display area for the one or more icon images of the rental content, the information comprising the second end time.
For example, independent claim 1 in the 208 patent (with emphasis on limitations that read on the limitations of claim 1 in the instant application) recites an information processing apparatus for processing content comprising:
a tangible storage device operative to store content which is acquired via a network and license information of the content for a plurality of users; and
a processor coupled to the tangible storage device, wherein the processor is configured to execute steps comprising:
determining whether or not the content is rental content, which has a valid time limit for accessing, from purchase type information included in the license information;
generating a display screen for selecting content, wherein the display generating function disposes an icon image of the content on the display screen, disposes a folder image on the display screen, and, in a case where the content is determined to be rental content, disposes a rental mark, which indicates that the associated content is rental content, near the icon image of the content or disposes the rental mark so as to overlap with the icon image;
accessing the license information in the storage device and determining that a license of a user who selected the icon image of the content is not valid;
in response to the determining that the license of the user who selected the icon image of the content is not valid, specifying a valid license of another user as a license to be used for the content;
generating a confirmation screen for confirming with the user and receiving a response from the user whether to allow a processing of the content to be started using the valid license of another user so that the user can avoid using the license of another by mistake;
setting a valid period end time for the content based on valid period information associated with the valid license of another user;
decoding the content using the valid license of another user and key information from a key file associated with the valid license of another user;
in response to the content being played back for a first time, writing first playback time information for the content into the key file; and
in response to the content being played back for the first time, resetting the valid period end time for the content based on the first playback time information from the key file, wherein the valid period end time is reset to a time and date that is a predetermined amount of time after the first playback time.
Claim 1 of the ‘208 patent differs from claim 2 of the instant application in that it further recites determining whether or not the content is rental content, which has a valid time limit for accessing, from purchase type information included in the license information; generating a display screen for selecting content, wherein the display generating function disposes an icon image of the content on the display screen, disposes a folder image on the display screen, and, in a case where the content is determined to be rental content, disposes a rental mark, which indicates that the associated content is rental content, near the icon image of the content or disposes the rental mark so as to overlap with the icon image; accessing the license information in the storage device and determining that a license of a user who selected the icon image of the content is not valid; in response to the determining that the license of the user who selected the icon image of the content is not valid, specifying a valid license of another user as a license to be used for the content; generating a confirmation screen for confirming with the user and receiving a response from the user whether to allow a processing of the content to be started using the valid license of another user so that the user can avoid using the license of another by mistake; setting a valid period end time for the content based on valid period information associated with the valid license of another user.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of the '208 patent by removing these limitations and resulting generally in the claims of the instant application since the claims of the instant application and the claims of the '208 patent perform similar functions.
Claims 8 and 17 of the instant application recite another apparatus and a method reciting similar limitations and are similarly rejected over claims 1 and 9 of the '208 patent.
With regard to claim 4 of the instant application, claim 4 recites wherein the information comprises a rental mark near the icon image indicating a rental status of the rental content. Claim 18 of the instant application recites similar limitations. Claim 1 of the ‘208 patent also recites these limitations.
Allowable Subject Matter
Claims 2-21 are allowed.
With regard to claim 2, the prior art of record, alone or combined, neither anticipates nor renders obvious an apparatus comprising: memory configured to store rental content downloaded from a content distribution server, license information associated with a first end time of a valid period of the rental content, and a key file associated with the license information; and circuitry configured to control a display to display an icon image corresponding to the rental content; decode, using the license information, the rental content for playback; based on a first playback of the decoded rental content, write first playback time information into the key file; and replace the first end time with a second end time that is earlier than the first end time; and display one or more icon images of the rental content along with information in a display area for the one or more icon images of the rental content, the information comprising the second end time.
With regard to claim 8, the prior art of record, alone or combined, neither anticipates nor renders obvious, an apparatus comprising: memory configured to store rental content and corresponding license information associated with a first end time of a valid period of the rental content, and a key file associated with the license information; and circuitry configured to: control a display to display one or more icon images corresponding to the rental content in a display area allocated for the rental content; control the display to display a rental mark indicating a rental status near the one or more icon images of the rental content or overlapping the one or more icon images; decode, using the license information, the rental content for playback; based on a first playback of the decoded rental content, write first playback time information into the key file; and replace the first end time with a second end time that is earlier than the first end time; and control the display to show the second end time and a change changes in the rental status of the rental content based on the license information.
With regard to claim 17, the prior art of record, alone or combined, neither anticipates nor renders obvious, a method reciting similar limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNE MARIE GEORGALAS whose telephone number is (571)270-1258 E.S.T.. The examiner can normally be reached on Monday-Friday 8:30am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached on 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anne M Georgalas/
Primary Examiner, Art Unit 3689
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