Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 8-10, 18, 20-25, 45, 53, 60-63, 66, 71, 79-80 of U.S. Patent No. 12155911. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and thus is anticipated by the patent. For example, note the following relationship between the instant application claim 1 and patented claim 1 (examiner note: similarities to the patented claims have been underlined.).
Instant Application Claims
Patent No. 12155911 Claims
Claim 1
A method comprising:
receiving, by a computing device, a signal indicating that a user device has started to receive a high priority communication message, wherein the high priority communication message comprises first content for output by the user device;
causing, by the computing device and based on the signal, pausing of sending second content, to the user device, at a location in the second content;
and causing, by the computing device and based on information contained in the high priority communication message, resuming the sending of the second content from the location in the second content.
Claim 1
A method comprising: sending, by a computing device and to a user device, first content;
receiving, by the computing device, a first signal indicating that the user device has started to receive a high priority communication message, wherein the high priority communication message comprises second content for output by the user device;
pausing, by the computing device and based on the first signal, the sending of the first content at a location in the first content;
and resuming, by the computing device and based on information contained in the high priority communication message, the sending of the first content from the location in the first content.
Using a similar analysis as above claims the following claims have been found to recite similar subject matter:
Instant Application Claims
Patent No. 10368142 Claims
Claim(s) 2
Claim 2
Claim(s) 3
Claim 4
Claim(s) 4
Claim 9
Claim(s) 5
Claim 10
Claim(s) 6
Claim 18
Claim(s) 7
Claim 20
Claim(s) 8
Claim 21
Claim(s) 9
Claim 22
Claim(s) 10
Claim 23
Claim(s) 11
Claim 24
Claim(s) 12
Claim 25
Claim(s) 13
Claim 6
Claim(s) 14
Claim 8
Claim(s) 15
Claim 45
Claim(s) 16
Claim 62
Claim(s) 17
Claim 53
Claim(s) 18
Claim 60
Claim(s) 19
Claim 61
Claim(s) 20
Claim 63
Claim(s) 21
Claim 66
Claim(s) 22
Claim 71
Claim(s) 23
Claim 79
Claim(s) 24
Claim 80
Regarding claims 1-24 of the instant application, they correspond to the of claims of patent 12155911 except the terms “first content” and “second content” are swapped, which does not affect the scope of the invention (e.g., in one first content is primary content and second content is EAS content and in the other first content is EAS content and second content is primary content.) Therefore, instant application 18917348 and Patent 12155911 are not patentably distinct from each other because they recite similar subject matter which is obvious over one another.
Claims 1-24 are further rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10368142 and claims 1-20 of U.S. Patent No. 10638204. Although the claims are not identical, the subject matter of the 10368142 patent and 10638204 patent mirrors that of the instant Application and of the 12155911 patent outlined above (where it is noted that both the 10638204 and 12155911 patents are subject to a Terminal Disclaimer with respect to the 10368142 patent.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Velazquez et al. (US 20100138858) – (¶0011) encoding an emergency alert message; displaying the multimedia program and the emergency alert message, wherein the emergency alert message overlays a portion of the multimedia program; and receiving a user input for temporarily stopping the displaying of the emergency alert message, wherein in response to the user input, the multimedia program is displayed without the emergency alert message.
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/Frank Johnson/Primary Examiner, Art Unit 2425