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 .
DETAILED ACTION
This Office Action is in response to the Amendment After Non-Final Rejection filed 04/10/2026. Claims 1, 3-5, 7, 8, 10-12, 14, 15, 17-19 and 21-27 are pending and have been examined.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-5, 7, 8, 10-12, 14, 15, 17-19 and 21-27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1, 3, 8, 10, 15, 17, 23, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 9, 11, 17 and 19 of U.S. Patent No. 11,006,188 in view of Casper (US 2015/0296250).
Application No. 18/830,672
U.S. Patent No. 11,006,188
1. A method comprising:
1. A method comprising:
receiving, by a computing device and during output of a media asset, a command;
receiving a second trick play command during the output of the first media asset; and
determining a spatial location of an object, in the media asset, that is associated with a time of the command;
determining a time within the first media asset and associated with the second trick play command;
determining an object, of the first media asset, that is associated with the time;
determining a spatial location, in the first media asset, associated with the object;
determining, based on the media asset, a secondary media asset; and
determining, based on the first trick play command, a secondary media asset associated with the object; and
causing, based on the command, concurrent output of the secondary media asset and the media asset, wherein a position of the secondary media asset is based on the spatial location.
causing concurrent output of the secondary media asset and the first media asset, wherein a position of the secondary media asset is based on the spatial location.
However, the patented claims do not explicitly teach a pause command.
In an analogous art, Casper, which discloses a system for video distribution, clearly teaches a pause command; (Fig. 2: In step 220 a media playback device receives a request to pause video content, [0059].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims by receiving a pause command, as taught by Casper, for the benefit of displaying advertisements for objects in the paused video content.
Claim 3 of the application corresponds to claim 1 of the patent in view of Casper [0071], [0088]-[0090].
Claim 8 of the application corresponds to claim 9 of the patent in view of Casper [0059].
Claim 10 of the application corresponds to claim 9 of the patent in view of Casper [0071], [0088]-[0090].
Claim 15 of the application corresponds to claim 17 of the patent in view of Casper [0059].
Claim 17 of the application corresponds to claim 17 of the patent in view of Casper [0071], [0088]-[0090].
Claim 22 of the application corresponds to claim 3 of the patent in view of Casper.
Claim 23 of the application corresponds to claim 1 of the patent in view of Casper [0041]-[0072].
Claim 24 of the application corresponds to claim 11 of the patent in view of Casper.
Claim 25 of the application corresponds to claim 9 of the patent in view of Casper [0041]-[0072].
Claim 26 of the application corresponds to claim 19 of the patent in view of Casper.
Claim 27 of the application corresponds to claim 17 of the patent in view of Casper [0041]-[0072].
Claims 4, 11 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 17 of U.S. Patent No. 11,006,188 in view of Casper (US 2015/0296250) in view of Chickering et al. (US 2007/0124762), herein Chickering.
Consider claim 4, the patented claims combined with Casper clearly teach concurrent output of the secondary media asset and the media asset.
However, the patented claims combined with Casper do not explicitly teach recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device.
In an analogous art, Chickering, which discloses a system for video distribution, clearly teaches recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device. (Fig. 4: Presentation component 406 selects advertisements based on data relating to the selection of advertisement 108 collected by collection component 404, [0040].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims combined with Casper by recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device, as taught by Chickering, for the benefit of tracking the effectiveness of tracking advertisement effectiveness.
Claim 11 of the application corresponds to claim 9 of the patent in view of Casper and Chickering [0040].
Claim 18 of the application corresponds to claim 17 of the patent in view of Casper and Chickering [0040].
Claims 5, 12 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 17 of U.S. Patent No. 11,006,188 in view of Casper (US 2015/0296250) in view of Marisco et al. (US 2007/0250775), herein Marisco.
Consider claim 5, the patented claims combined with Casper clearly teach sending, to a second computing device, the time of the pause command. (Fig. 2: In step 240 a timestamp corresponding to the pause request is transmitted to a sever, [0063], [0064] Casper.)
However, the patented claims combined with Casper do not explicitly teach receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset.
In an analogous art, Marisco, which discloses a system for video distribution, clearly teaches receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset. (Hyperlinked object-to-hyperlink object attribute information includes a list of a plurality of secondary content items, [0027]-[0029], [0032], Table 3.)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims combined with Casper by receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset, as taught by Marisco, for the benefit of communicating a plurality of secondary content items.
Claim 12 of the application corresponds to claim 9 of the patent in view of Casper and Marisco [0027]-[0029], [0032], Table 3.
Claim 19 of the application corresponds to claim 17 of the patent in view of Casper and Marisco [0027]-[0029], [0032], Table 3.
Claims 7, 14 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 17 of U.S. Patent No. 11,006,188 in view of Casper (US 2015/0296250) in view of Gupta et al. (US 2017/0374403), herein Gupta.
Consider claim 7, the patented claims combined with Casper clearly teach the secondary media asset.
However, the patented claims combined with Casper do not explicitly teach determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations.
In an analogous art, Gupta, which discloses a system for video distribution, clearly teaches determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations. (A location in the video content is tracked and replacement content is displayed in the tracked location, [0061]-[0066].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims combined with Casper by determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations, as taught by Gupta, for the benefit of displaying the second content item in advantageous locations.
Claim 14 of the application corresponds to claim 9 of the patent in view of Casper and Gupta [0061]-[0066].
Claim 21 of the application corresponds to claim 17 of the patent in view of Casper and Gupta [0061]-[0066].
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, 3, 8, 10, 15, 17, 23, 25 and 27are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Casper (US 2015/0296250).
Consider claim 1, Casper clearly teaches a method (Fig. 2) comprising:
receiving, by a computing device and during output of a media asset, a pause command; (Fig. 2: In step 220 a media playback device receives a request to pause video content, [0059].)
determining a spatial location of an object, in the media asset, that is associated with a time of the pause command; (Fig. 1: In step 120 objects are detected in the video frames, [0036].)
determining, based on the media asset, a secondary media asset; (Fig. 3: Commerce information is obtained relating to the objects in the video, [0076]-[0084].) and
causing, based on the pause command, concurrent output of the secondary media asset and the media asset, wherein a position of the secondary media asset is based on the spatial location. (Fig. 5B: Graphical content items for the commerce information 530 is displayed in association with the objects 521, 523, [0069], [0070].)
Consider claim 3, Casper clearly teaches determining, based on the media asset, a plurality of secondary media assets; and determining, based on priority information associated with the plurality of secondary media assets, a priority of outputting one or more of the plurality of secondary media assets. (Process 200 ranks the graphical content items and displays the highest ranked items, [0071], [0088]-[0090].)
Consider claim 8, Casper clearly teaches an apparatus comprising:
one or more processors; and memory storing instructions that, when executed by the one or more processors, cause the apparatus (Fig. 7, [0113]-[0120]) to:
receive, during output of a media asset, a pause command; (Fig. 2: In step 220 a media playback device receives a request to pause video content, [0059].)
determining a spatial location of an object, in the media asset, that is associated with a time of the pause command; (Fig. 1: In step 120 objects are detected in the video frames, [0036].)
determine, based on the media asset, a secondary media asset; (Fig. 3: Commerce information is obtained relating to the objects in the video, [0076]-[0084].) and
cause, based on the pause command, concurrent output of the secondary media asset and the media asset, wherein a position of the secondary media asset is based on the spatial location. (Fig. 5B: Graphical content items for the commerce information 530 is displayed in association with the objects 521, 523, [0069], [0070].)
Consider claim 10, Casper clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: determine, based on the media asset, a plurality of secondary media assets; and determine, based on priority information associated with the plurality of secondary media assets, a priority of outputting one or more of the plurality of secondary media assets. (Process 200 ranks the graphical content items and displays the highest ranked items, [0071], [0088]-[0090].)
Consider claim 15, Casper clearly teaches one or more non-transitory computer-readable media storing instructions that, when executed, (Fig. 7, [0113]-[0120]) cause:
receiving, during output of a media asset, a pause command; (Fig. 2: In step 220 a media playback device receives a request to pause video content, [0059].)
determining a spatial location of an object, in the media asset, that is associated with a time of the pause command; (Fig. 1: In step 120 objects are detected in the video frames, [0036].)
determining, based on the media asset, a secondary media asset; (Fig. 3: Commerce information is obtained relating to the objects in the video, [0076]-[0084].) and
causing, based on the pause command, concurrent output of the secondary media asset and the media asset, wherein a position of the secondary media asset is based on the spatial location. (Fig. 5B: Graphical content items for the commerce information 530 is displayed in association with the objects 521, 523, [0069], [0070].)
Consider claim 17, Casper clearly teaches the instructions, when executed, cause: determining, based on the media asset, a plurality of secondary media assets; and determining, based on priority information associated with the plurality of secondary media assets, a priority of outputting one or more of the plurality of secondary media assets. (Process 200 ranks the graphical content items and displays the highest ranked items, [0071], [0088]-[0090].)
Consider claim 23, Casper clearly teaches the secondary media asset is an advertisement. (Fig. 5B: Commerce information, [0041], [0072])
Consider claim 25, Casper clearly teaches the secondary media asset is an advertisement. (Fig. 5B: Commerce information, [0041], [0072])
Consider claim 27, Casper clearly teaches the secondary media asset is an advertisement. (Fig. 5B: Commerce information, [0041], [0072])
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Casper (US 2015/0296250) in view of Chickering et al. (US 2007/0124762), herein Chickering.
Consider claim 4, Casper clearly teaches concurrent output of the secondary media asset and the media asset.
However, Casper does not explicitly teach recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device.
In an analogous art, Chickering, which discloses a system for video distribution, clearly teaches recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device. (Fig. 4: Presentation component 406 selects advertisements based on data relating to the selection of advertisement 108 collected by collection component 404, [0040].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the system of Casper by recording an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device, as taught by Chickering, for the benefit of tracking the effectiveness of tracking advertisement effectiveness.
Consider claim 11, Casper combined with Chickering clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: record, based on the concurrent output of the secondary media asset and the media asset, an impression associated with the secondary media asset; and determine, based on the recorded impression, a future secondary media asset associated with a user device. (Fig. 4: Presentation component 406 selects advertisements based on data relating to the selection of advertisement 108 collected by collection component 404, [0040] Chickering.)
Consider claim 18, Casper combined with Chickering clearly teaches the instructions, when executed, cause: recording, based on the concurrent output of the secondary media asset and the media asset, an impression associated with the secondary media asset; and determining, based on the recorded impression, a future secondary media asset associated with a user device. (Fig. 4: Presentation component 406 selects advertisements based on data relating to the selection of advertisement 108 collected by collection component 404, [0040] Chickering.)
Claims 5, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Casper (US 2015/0296250) in view of Marisco et al. (US 2007/0250775), herein Marisco.
Consider claim 5, Casper clearly teaches sending, to a second computing device, the time of the pause command. (Fig. 2: In step 240 a timestamp corresponding to the pause request is transmitted to a sever, [0063], [0064].)
However, Casper does not explicitly teach receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset.
In an analogous art, Marisco, which discloses a system for video distribution, clearly teaches receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset. (Hyperlinked object-to-hyperlink object attribute information includes a list of a plurality of secondary content items, [0027]-[0029], [0032], Table 3.)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the system of Casper by receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset, as taught by Marisco, for the benefit of communicating a plurality of secondary content items.
Consider claim 12, Casper combined with Marisco clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: send, to a computing device, the time of the pause command; (Fig. 2: In step 240 a timestamp corresponding to the pause request is transmitted to a sever, [0063], [0064] Casper.) and receive, from the computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset. (Hyperlinked object-to-hyperlink object attribute information includes a list of a plurality of secondary content items, [0027]-[0029], [0032], Table 3 Marisco.)
Consider claim 19, Casper combined with Marisco clearly teaches the instructions, when executed, cause: sending, to a second computing device, the time of the pause command; (Fig. 2: In step 240 a timestamp corresponding to the pause request is transmitted to a sever, [0063], [0064] Casper.) and receiving, from the second computing device, a manifest file associated with the media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset. (Hyperlinked object-to-hyperlink object attribute information includes a list of a plurality of secondary content items, [0027]-[0029], [0032], Table 3 Marisco.)
Claims 7, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Casper (US 2015/0296250) in view of Gupta et al. (US 2017/0374403), herein Gupta.
Consider claim 7, Casper clearly teaches the secondary media asset.
However, Casper does not explicitly teach determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations.
In an analogous art, Gupta, which discloses a system for video distribution, clearly teaches determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations. (A location in the video content is tracked and replacement content is displayed in the tracked location, [0061]-[0066].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the system of Casper by determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations, as taught by Gupta, for the benefit of displaying the second content item in advantageous locations.
Consider claim 14, Casper combined with Gupta clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: determine a plurality of spatial locations, in the media asset, associated with a movement of the object; and move the secondary media asset through the plurality of spatial locations. (A location in the video content is tracked and replacement content is displayed in the tracked location, [0061]-[0066] Gupta.)
Consider claim 21, Casper combined with Gupta clearly teaches the instructions, when executed, cause: determining a plurality of spatial locations, in the media asset, associated with a movement of the object; and moving the secondary media asset through the plurality of spatial locations. (A location in the video content is tracked and replacement content is displayed in the tracked location, [0061]-[0066] Gupta.)
Conclusion
In the case of amending the claimed invention, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R SCHNURR whose telephone number is (571)270-1458. The examiner can normally be reached M-F 6a-4p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Pendleton can be reached at (571)272-7527. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN R SCHNURR/ Primary Examiner, Art Unit 2425