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 Application No. 18/830,672 filed 09/11/2024. Claims 1-21 are pending and have been examined.
The information disclosure statement (IDS) submitted on 09/11/2024 was considered by the examiner.
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 1-4, 8-11 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19 and 20 of U.S. Patent No. 12,120,402. Although the claims at issue are not identical, they are not patentably distinct from each other because they are different definitions or descriptions of the same subject matter varying in breadth. For example, note the following relationship between claim 1 of the instant application and the patented claims.
Application No. 18/830,672
U.S. Patent No. 12,120,402
1. A method comprising:
1. A method comprising:
receiving, by a computing device and during output of a media asset, a trick play command;
receiving, by a computing device and during output of a media asset, a first trick play command associated with a portion of the media asset;
determining, based on the media asset, a secondary media asset; and
determining, based on the portion of the media asset, a secondary media asset;
causing, based on the trick play command, concurrent output of the secondary media asset and the media asset.
causing concurrent output of the secondary media asset and the media asset.
It would have been obvious to one of ordinary skill in the art to readily recognize that the conflicting claims are different definitions or descriptions of the same subject matter varying in breadth. In this case, the application claims are broader than and inclusive of the patented claims.
Claim 2 of the application corresponds to claim 2 of the patent.
Claim 3 of the application corresponds to claim 5 of the patent.
Claim 4 of the application corresponds to claim 6 of the patent.
Claim 8 of the application corresponds to claim 8 of the patent.
Claim 9 of the application corresponds to claim 9 of the patent.
Claim 10 of the application corresponds to claim 12 of the patent.
Claim 11 of the application corresponds to claim 13 of the patent.
Claim 15 of the application corresponds to claim 15 of the patent.
Claim 16 of the application corresponds to claim 16 of the patent.
Claim 17 of the application corresponds to claim 19 of the patent.
Claim 18 of the application corresponds to claim 20 of the patent.
Claims 5-7, 12-14 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 8-10, 16-18 and 24 of U.S. Patent No. 11,006,188. Although the claims at issue are not identical, they are not patentably distinct from each other because they are different definitions or descriptions of the same subject matter varying in breadth. For example, note the following relationship between claim 5 of the instant application and the patented claims.
Application No. 18/830,672
U.S. Patent No. 11,006,188
5. The method of claim 1, further comprising:
2. The method of claim 1, wherein the determining the secondary media asset comprises:
sending, to a second computing device, a time of the trick play command; and
sending, to a second computing device, the time; 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.
receiving, from the second computing device, a manifest file associated with the first media asset, wherein the manifest file indicates the secondary media asset and at least one additional secondary media asset.
It would have been obvious to one of ordinary skill in the art to readily recognize that the conflicting claims are different definitions or descriptions of the same subject matter varying in breadth. In this case, the application claims are broader than and inclusive of the patented claims.
Claim 6 of the application corresponds to claim 1 of the patent.
Claim 7 of the application corresponds to claim 8 of the patent.
Claim 12 of the application corresponds to claim 10 of the patent.
Claim 13 of the application corresponds to claim 9 of the patent.
Claim 14 of the application corresponds to claim 16 of the patent.
Claim 19 of the application corresponds to claim 18 of the patent.
Claim 20 of the application corresponds to claim 17 of the patent.
Claim 21 of the application corresponds to claim 24 of the patent.
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, 2, 8, 9, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ransom et al. (US 2016/0173942), herein Ransom.
Consider claim 1, Ransom clearly teaches a method (Fig. 4) comprising:
receiving, by a computing device and during output of a media asset, a trick play command; (Fig. 4: In step 402 a media control request is received during display of a first content item, [0067].)
determining, based on the media asset, a secondary media asset; (Fig. 4: In step 406 a second content item is determined based on the first content item, [0069], [0070].) and
causing, based on the trick play command, concurrent output of the secondary media asset and the media asset. (Figs. 3B-4: In step 408 the first and second content items are displayed simultaneously, [0062]-[0065], [0073].)
Consider claim 2, Ransom clearly teaches the trick play command comprises one of a skip command or a fast forward command. (The media control request can be a fast-forward or skip command, [0067].)
Consider claim 8, Ransom clearly teaches an apparatus (Fig. 7) comprising:
one or more processors; and memory storing instructions that, when executed by the one or more processors, cause the apparatus ([0097]) to:
receive, during output of a media asset, a trick play command; (Fig. 4: In step 402 a media control request is received during display of a first content item, [0067].)
determine, based on the media asset, a secondary media asset; (Fig. 4: In step 406 a second content item is determined based on the first content item, [0069], [0070].) and
cause, based on the trick play command, concurrent output of the secondary media asset and the media asset. (Figs. 3B-4: In step 408 the first and second content items are displayed simultaneously, [0062]-[0065], [0073].)
Consider claim 9, Ransom clearly teaches the trick play command comprises one of a skip command or a fast forward command. (The media control request can be a fast-forward or skip command, [0067].)
Consider claim 15, Ransom clearly teaches one or more non-transitory computer-readable media storing instructions that, when executed, (Fig. 7, [0097]) cause:
receiving, during output of a media asset, a trick play command; (Fig. 4: In step 402 a media control request is received during display of a first content item, [0067].)
determining, based on the media asset, a secondary media asset; (Fig. 4: In step 406 a second content item is determined based on the first content item, [0069], [0070].) and
causing, based on the trick play command, concurrent output of the secondary media asset and the media asset. (Figs. 3B-4: In step 408 the first and second content items are displayed simultaneously, [0062]-[0065], [0073].)
Consider claim 16, Ransom clearly teaches the trick play command comprises one of a skip command or a fast forward command. (The media control request can be a fast-forward or skip command, [0067].)
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 3, 4, 10, 11, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ransom (US 2016/0173942) in view of Cansler et al. (US 2017/0251278), herein Cansler.
Consider claim 3, Ransom clearly teaches determining, based on the media asset, a plurality of secondary media assets. (The first content item can be associated with more than one second content items, [0070].)
However, Ransom does not explicitly teach 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.
In an analogous art, Cansler, which discloses a system for video distribution, clearly teaches 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. (A plurality of advertisements are prioritized for output, [0019]-[0021].)
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 Ransom by 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, as taught by Cansler, for the benefit of displaying the most relevant content items.
Consider claim 4, Ransom clearly teaches concurrent output of the secondary media asset and the media asset.
However, Ransom does not explicitly teach 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.
In an analogous art, Cansler, which discloses a system for video distribution, clearly teaches 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. (Impression quality factor data includes which advertisements were viewed in a picture-in-picture display, [0032], [0091].)
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 Ransom by 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, as taught by Cansler, for the benefit of tracking advertisement effectiveness.
Consider claim 10, Ransom combined with Cansler 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; (The first content item can be associated with more than one second content items, [0070] Ransom.) 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. (A plurality of advertisements are prioritized for output, [0019]-[0021] Cansler.)
Consider claim 11, Ransom combined with Cansler 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. (Impression quality factor data includes which advertisements were viewed in a picture-in-picture display, [0032], [0091] Cansler.)
Consider claim 17, Ransom combined with Cansler clearly teaches the instructions, when executed, cause: determining, based on the media asset, a plurality of secondary media assets; (The first content item can be associated with more than one second content items, [0070] Ransom.) 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. (A plurality of advertisements are prioritized for output, [0019]-[0021] Cansler.)
Consider claim 18, Ransom combined with Cansler 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. (Impression quality factor data includes which advertisements were viewed in a picture-in-picture display, [0032], [0091] Cansler.)
Claims 5, 6, 12, 13, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ransom (US 2016/0173942) in view of Marisco et al. (US 2007/0250775), herein Marisco.
Consider claim 5, Ransom clearly teaches sending, to a second computing device, a time of the trick play command. (Content management system 119 receives the time point associated with the media control request, [0041].)
However, Ransom 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 Ransom 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 6, Ransom combined with Marisco clearly teaches determining a time of the trick play command; (Content management system 119 receives the time point associated with the media control request, [0041] Ransom.) determining an object, of the media asset, that is associated with the time; determining a spatial location, in the media asset, associated with the object; and positioning the secondary media asset based on the spatial location. (Time and positioning information of the hyperlinked objects, [0027]-[0029] Marisco.)
Consider claim 12, Ransom combined with Marisco clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: send, to a computing device, a time of the trick play command; (Content management system 119 receives the time point associated with the media control request, [0041] Ransom.) 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 13, Ransom combined with Marisco clearly teaches the instructions, when executed by the one or more processors, cause the apparatus to: determine a time of the trick play command; (Content management system 119 receives the time point associated with the media control request, [0041] Ransom.) determine an object, of the media asset, that is associated with the time; determine a spatial location, in the media asset, associated with the object; and position the secondary media asset based on the spatial location. (Time and positioning information of the hyperlinked objects, [0027]-[0029] Marisco.)
Consider claim 19, Ransom combined with Marisco clearly teaches the instructions, when executed, cause: sending, to a second computing device, a time of the trick play command; (Content management system 119 receives the time point associated with the media control request, [0041] Ransom.) 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.)
Consider claim 20, Ransom combined with Marisco clearly teaches the instructions, when executed, cause: determining a time of the trick play command; (Content management system 119 receives the time point associated with the media control request, [0041] Ransom.) determining an object, of the media asset, that is associated with the time; determining a spatial location, in the media asset, associated with the object; and positioning the secondary media asset based on the spatial location. (Time and positioning information of the hyperlinked objects, [0027]-[0029] Marisco.)
Claims 7, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ransom (US 2016/0173942) in view of Gupta et al. (US 2017/0374403), herein Gupta.
Consider claim 7, Ransom clearly teaches the secondary media asset.
However, Ransom does not explicitly teach determining a plurality of spatial locations, in the media asset, associated with a movement of an 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 an 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 Ransom by determining a plurality of spatial locations, in the media asset, associated with a movement of an 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, Ransom 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 an 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, Ransom 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 an 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.
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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/JOHN R SCHNURR/ Primary Examiner, Art Unit 2425