DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment
This Office Action is made in response to amendment, filed 5/11/2026. Applicant has amended claims 2, 5, 13, 15, and 21. Claims 4, 8, 9, 14, and 19 are cancelled and claims 22-24 are added.
Response to Arguments
Applicant’s arguments set forth in the “Remarks” filed 5/11/2026, have been fully considered. Applicant argues that Florence is directed to monitoring television channels rather than content programs, that Florence does not teach the threshold limitations incorporated into amended claim 2 from former claims 5-7, and that Levin does not discloses determining action levels based on recording commands, reminder commands, or search/browse commands as alleged. Applicant further argues that the cited combination fails to teach or suggest the amended combination of limitations now recited in independent claims 2, 13, and 21. The arguments are persuasive. In particular, the amended independent claim 2 recites additional limitations directed to determining action levels for specific user actions and automatically updating a favorite designation based upon the monitored action level with respect to a threshold. The applied prior art, either alone or in combination, does not adequately teach or suggest the amendment combination of limitations. Accordingly, the rejection under 35 U.S.C. § 103 is withdrawn. The rejection under the judicially created doctrine of nonstatutory obviousness-type double patenting will be withdrawn upon acceptance and entry of the Terminal Disclaimer filed by Applicant. Upon acceptance of the Terminal Disclaimer and satisfaction of all other formal matters, the application is in condition for allowance.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference 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. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Instant Application 18/914,610 independent claims 2, 13, 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over independent claims 2, 13, 21 of U.S. Patent No. 12155889, independent claims 2, 12, 21 of U.S. Patent No. 11818418, independent claims 1, 15, 20 of U.S. Patent No. 10728607, independent claims 21, 34, 40 of U.S. Patent No. 10334308, and independent claims 1, 14, 17 of U.S. Patent No. 9912980 in combination with dependent claims (see table below).
Applicant has amended independent claims 2, 13, and 21 to specify examples of monitored user actions, including commands to record a content program, set a reminder to view a content program, and search or browse for a content program, and to further characterize qualifying content programs as favorites of the user, non-qualifying content programs as no longer favorites of the user, and the generation of a favorites list based on indications that content programs are favorites of the user. These amendments, however, do not render the claims patentably distinct from the cited parent claims. The recited command types merely narrow the categories of monitored user actions encompassed by the broader monitoring and analysis recited in the parent claims, while the remaining amendments merely characterize or restate the favorite-status information and downstream use of that information already disclosed in the parent claims. The cited parent claims each recite monitoring user actions with respect to content programs, determining whether the actions satisfy one or more threshold conditions, updating stored favorite-status information based on those determinations, and, where applicable, maintaining or updating the stored favorite information. Accordingly, the amendments do not alter the underlying inventive concept or materially distinguish the claimed subject matter from the parent claims. The dependent claims likewise fail to introduce additional limitations sufficient to render the claimed invention patentably distinct. Therefore, the rejection is maintained. See the claim comparison tables below for a limitation-by-limitation analysis.
Instant Application 18/914,610
Parent Pat 12155889
Not Patentably Distinct
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs playable on a viewing device;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program, wherein the actions comprise at least one of: commands to record a content program, commands to set a reminder to view a content program, and commands to search or browse for a content program;
based on the analyzing, automatically adding, to a user profile of the user stored on a data
store, that a first content program that has a first level of the actions with respect to the first content
program that meets a threshold is a favorite of the user;
based on the analyzing, automatically removing, from the user profile of the user, that a second content program that has a second level of the actions corresponding to the second content program that no longer meets the threshold is no longer a
favorite of the user;
in response to receiving a request for a favorites list, generating the favorites list based on indications in the user profile that content programs are favorites of the user; and
causing presentation of the favorites list to the user.
Claim 3
Claim 5,15
Claim 6,16
Claim 7,17
Claim 18
Claim 10,20
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs accessible via a digital receiver;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program;
automatically adding a first content program that has a level of the actions that meets a threshold to a user profile of the user stored on a data store;
automatically removing a second content program from the user profile of the user that has a level of the actions that no longer meets the threshold;
in response to receiving a request for a favorites list, accessing indications of content programs from the user profile of the user and generating the favorites list based on the indications; and
causing presentation of the favorites list to the user.
Claim 3
Claim 5,15
Claim 6,16
Claim 7,17
Claim 8,18
Claim 10,20
Analysis:
The wording difference reflects the same content access and playback environment and does not alter claim scope.
The amendment merely narrows the types of monitored user actions encompassed by the parent’ claim’s broader recitation of monitoring actions performed by the user with respect to content programs. Recording, reminder, and search/browse commands are examples of the monitored user actions and do not alter the inventive concept or render the claimed invention patentable distinct.
The parent claim already adds a content program meeting the threshold to the user’s profile. The amendment merely characterizes that content program as a favorite of the user and does not materially alter claim scope or render the claimed invention patentably distinct.
The amendment merely characterizes the removed content program as no longer being a favorite of the user. The parent claim already removes a content program from the user’s profile when it no longer satisfies the threshold. The amendment does not materially alter claim scope or render the claimed invention patentably distinct.
The amendment merely restates the source of the favorites list by specifying that the indications in the user profile identify content programs that are favorites of the user. This reflects the same underlying information used by the parent claim and does not materially alter claim scope or render the claimed invention patentably distinct.
Identical wording
same
same
same
same
same
same
Instant Application 18/914,610
Parent Pat 11818418
Not Patentably Distinct
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs playable on a viewing device;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program, wherein the actions comprise at least one of: commands to record a content program, commands to set a reminder to view a content program, and commands to search or browse for a content program;
based on the analyzing, automatically adding, to a user profile of the user stored on a data
store, that a first content program that has a first level of the actions with respect to the first content
program that meets a threshold is a favorite of the user;
based on the analyzing, automatically removing, from the user profile of the user, that a second content program that has a second level of the actions corresponding to the second content program that no longer meets the threshold is no longer a
favorite of the user;
in response to receiving a request for a favorites list, generating the favorites list based on indications in the user profile that content programs are favorites of the user; and
causing presentation of the favorites list to the user.
Independent Claims 2, 12, 21:
detecting, using one or more hardware processors, actions performed by a user with respect
to one or more content programs;
based on the detecting, determining whether levels of the actions meet or transgress both a first threshold and a second threshold, the first threshold for recording episodes of a first content program during a first predetermined period of time and the second threshold for viewing one or more recorded episodes of the first content program during a second predetermined period of time, the first predetermined period of time being a different length of time than the second predetermined period of time; and
based on the determining that the levels of the actions with respect to the first content program meet or transgress both the first threshold and the second threshold, updating a data store to indicate that the first content program is a favorites content program.
Analysis
Instant is broader. Monitoring user actions with respect to content programs encompasses detecting user actions with respect to one or more content programs and therefore does not render the claimed invention patentably distinct.
Instant is broader. The parent’s determination based on first and second thresholds over predetermined time periods constitutes a particular implementation of determining whether user actions satisfy threshold criteria. The instant claim broadly recites determining a level of user actions with respect to each content program and comparing that level to a threshold, which encompasses the parent’s more specific threshold analysis.
Instant is broader. Updating a data store to indicate that a content program is a favorite constitutes storing favorite information for the user. Adding the content program to the user’s profile encompasses the parent’s indication of a favorite content program and does not render the claimed invention patentably distinct.
The instant claim further recites removing a content program that no longer satisfies the threshold from the user’s profile. This additional maintenance operation merely updates the stored favorite information and does not render the claimed invention patentably distinct over the parent’s favorite-identification scheme.
The instant claim further recites generating a favorites list from stored favorite indications. This downstream retrieval and list-generation operation merely uses the favorite information already determined and stored by the parent claim and does not render the claimed invention patentably distinct.
The instant claim further recites presenting the favorites list to the user. Presenting stored favorite information is a routine output operation following storage and retrieval of the favorite indications and does not render the claimed invention patentably distinct over the parent claim.
.
Instant Application 18/979,910
Parent Pat 10728607
Not Patentably Distinct
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs playable on a viewing device;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program, wherein the actions comprise at least one of: commands to record a content program, commands to set a reminder to view a content program, and commands to search or browse for a content program;
based on the analyzing, automatically adding, to a user profile of the user stored on a data
store, that a first content program that has a first level of the actions with respect to the first content
program that meets a threshold is a favorite of the user;
based on the analyzing, automatically removing, from the user profile of the user, that a second content program that has a second level of the actions corresponding to the second content program that no longer meets the threshold is no longer a
favorite of the user;
in response to receiving a request for a favorites list, generating the favorites list based on indications in the user profile that content programs are favorites of the user; and
causing presentation of the favorites list to the user.
Independent Claims 1, 15, 20
monitoring, using one or more hardware processors, based on data obtained from a media device, one or more actions performed with respect to one or more content programs;
based on monitoring the one or more actions performed with respect to the one or more content programs, detecting whether the one or more actions with respect to each of the one or more content programs satisfies one or more thresholds:
based on detecting that the one or more actions with respect to a first content program of the one or more content programs satisfies a first threshold, automatically updating a data store to store first data indicating that the first content program is a favorites content program; and
based on determining that the one or more actions with respect to a second content program of the one or more content programs does not satisfy a second threshold, automatically updating the data store to store second data indicating that the second content program is not a favorites content program.
Analysis
Instant is broader. Monitoring actions performed by a user with respect to content programs encompasses monitoring based on data obtained from a media device and does not render the claimed invention patentably distinct.
Instant is broader. Determining a level of user actions with respect to each content program and comparing that level to a threshold encompasses detecting whether user actions satisfy one or more thresholds and does not render the claimed invention patentably distinct.
Instant is broader. Automatically adding a qualifying content program to the user’s profile encompasses updating a data store to indicate that the content program is a favorites content program and does not render the claimed invention patentably distinct.
The instant claim recites removing a content program from the user’s profile when it no longer satisfies the threshold, while the parent updates stored favorite-status information to indicate that the content program is no longer a favorites content program. Both limitations implement the same favorite-status update concept, and the wording difference does not render the claimed invention patentably distinct.
The instant claim further recites generating a favorites list using stored favorite information. This downstream retrieval and list-generation operation merely uses the favorite-status information already maintained by the parent claim and does not render the claimed invention patentably distinct.
The instant claim further recites presenting the favorites list to the user. Presenting stored favorite information is a routine output operation following storage and retrieval of the favorite-status information and does not render the claimed invention patentably distinct.
.
Instant Application 18/914,610
Parent Pat 10334308
Not Patentably Distinct
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs playable on a viewing device;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program, wherein the actions comprise at least one of: commands to record a content program, commands to set a reminder to view a content program, and commands to search or browse for a content program;
based on the analyzing, automatically adding, to a user profile of the user stored on a data
store, that a first content program that has a first level of the actions with respect to the first content
program that meets a threshold is a favorite of the user;
based on the analyzing, automatically removing, from the user profile of the user, that a second content program that has a second level of the actions corresponding to the second content program that no longer meets the threshold is no longer a
favorite of the user;
in response to receiving a request for a favorites list, generating the favorites list based on indications in the user profile that content programs are favorites of the user; and
causing presentation of the favorites list to the user.
Independent Claims 21, 34, 40
monitoring, using one or more hardware processors, one or more actions performed by a user with respect to one or more content programs;
automatically, without human intervention, analyzing, using one or more hardware processors, the one or more actions performed by the user with respect to the one or more content programs, the analyzing including detem1ining whether a level of the one or more actions with respect to any of the one or more content programs satisfies a threshold;
based on determining that the level of the one or more actions with respect to a first content program of the one or more content programs satisfies the threshold, automatically updating a data store to indicate that the first content program is a favorites content program; and
based on determining that the level of the one or more actions with respect to a second content program of the one or more content programs does not satisfy the threshold, automatically updating the data store to indicate that the second content program is not a favorites content program.
Analysis
The wording difference reflects the same monitoring of user actions with respect to content programs. Reciting one or more hardware processors does not materially alter claim scope or render the claimed invention patentably distinct.
Instant is broader. The parent’s automatic analysis and determination of whether a level of user actions satisfies a threshold constitute a particular implementation of the instant claim’s broader determination of a level of user actions with respect to each content program and comparison to a threshold. The amendment specifying record, reminder, and search/browse commands merely narrows the types of monitored user actions and does not render the claimed invention patentable.
Both claims automatically designate a content program as a favorite when the corresponding user actions satisfy a threshold. Whether implemented by updating a data store or by adding the content program to the user’s profile, the claims implement the same favorite-designation concept, and the wording difference does not render the claimed invention patentably distinct.
Both claims automatically update the favorite status of a content program when the corresponding user actions no longer satisfy the threshold. Whether implemented by updating a data store to indicate that the content program is not a favorite or by removing the content program from the user’s profile, the claims implement the same favorite-status update concept, and the wording difference does not render the claimed invention patentably distinct.
The instant claim further recites generating a favorites list using stored favorite information. This downstream retrieval and list-generation operation merely uses the favorite-status information already determined and maintained by the parent claim and does not render the claimed invention patentably distinct.
The instant claim further recites presenting the favorites list to the user. Presenting stored favorite information is a routine output operation following storage and retrieval of the favorite-status information and does not render the claimed invention patentably distinct.
Instant Application 18/914,610
Parent Pat 9912980
Not Patentably Distinct
Independent Claims 2, 13, 21:
monitoring actions performed by a user with respect to content programs playable on a viewing device;
analyzing, using one or more hardware processors, the actions performed by the user with respect to the content programs to determine a level of the actions with respect to each content program, wherein the actions comprise at least one of: commands to record a content program, commands to set a reminder to view a content program, and commands to search or browse for a content program;
based on the analyzing, automatically adding, to a user profile of the user stored on a data
store, that a first content program that has a first level of the actions with respect to the first content
program that meets a threshold is a favorite of the user;
based on the analyzing, automatically removing, from the user profile of the user, that a second content program that has a second level of the actions corresponding to the second content program that no longer meets the threshold is no longer a
favorite of the user;
in response to receiving a request for a favorites list, generating the favorites list based on indications in the user profile that content programs are favorites of the user; and
causing presentation of the favorites list to the user.
Independent claims 1, 14, 17
monitoring, using one or more hardware processors, actions performed by a user at a digital receiver with respect to a plurality of content programs;
automatically without human intervention analyzing, using one or more hardware processors, the actions performed with respect to the plurality of content programs, the analyzing including determining that a level of the actions with respect to a first content program of the plurality of content programs meets or transgresses a threshold;
based on the level of the actions with respect to a first content program meeting or transgressing the threshold, storing, in a data store, an indication that the first content program is a favorites content program;
detecting a change in a level of actions with respect to a second content program previously indicated to be a favorites content program, the change in the level of the actions with respect to the second content program indicating a reduction in the level of the actions with respect to the second content program that results in the level of the actions with respect to the second content program no longer transgressing the threshold; and
in response to the detecting that the level of the actions with respect to the second content program no longer transgresses the threshold, automatically removing an indication that the second content program is a favorites content program from the data store.
Analysis
Instant is broader. Monitoring user actions with respect to content programs encompasses monitoring actions performed at a digital receiver with respect to a plurality of content programs and does not render the claimed invention patentably distinct.
Instant is broader. The parent’s automatic analysis determining whether a level of user actions meets or transgresses a threshold constitutes a particular implementation of the instant claim’s broader determination of a level of user actions with respect to each content program and comparison to a threshold. The amendment specifying record, reminder, and search/browse commands merely narrows the monitored user actions and does not render the claimed invention patentably distinct.
Both claims automatically designate a content program as a favorite when the corresponding user actions satisfy a threshold. Whether implemented by storing an indication in a data store or by adding the content program to the user’s profile, the claims implement the same favorite-designation concept, and the wording difference does not render the claimed invention patentably distinct.
Both claims automatically update the favorite status of a content program when the corresponding user actions no longer satisfy the threshold. Whether implemented by removing the favorite indication from a data store or by removing the content program from the user’s profile, the claims implement the same favorite-status update concept, and the wording difference does not render the claimed invention patentably distinct.
The instant claim further recites generating a favorites list using stored favorite information. This downstream retrieval and list-generation operation merely uses the favorite-status information already determined and maintained by the parent claim and does not render the claimed invention patentably distinct.
The instant claim further recites presenting the favorites list to the user. Presenting stored favorite information is a routine output operation following storage and retrieval of the favorite-status information and does not render the claimed invention patentably distinct.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et al., (US 2010/0162317) – Discloses monitoring and recording which television channels and programs are viewed by the user [0046]. This stored usage information gathered is used to compose a favorite channel or programs list. Xu also discloses stored monitored information exceeding a pre-set threshold limit [0054] results in program being added to the favorites list. For example, the number of times that a user accesses a particular program would indicate if the program is a favorite program [0056].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADIL OCAK whose telephone number is (571) 272-2774. The examiner can normally be reached on M-F 8:00 AM - 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nasser Goodarzi can be reached on 571-272-4195. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL OCAK/Primary Examiner, Art Unit 2426
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