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 .
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12148409. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims a broader version of the same system claimed in the patent.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1,9,17,2,10,3,11,4,12, 7,15,18,16,20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quinn et al (US 9093259 B1) as applied to claim 1,6 above and further in view of Peters (US 20170337621 A1).
As per claim 1, Quinn discloses a musician collaboration system, comprising:
a memory configured to store instructions (required by the server 102 in fig. 1 to perform the following functions); and
a processor (required by the server 102 in fig. 1 to perform the following functions); configured to execute the instructions to:
receive a request (request for relationship in para. 13) for providing a feature (para. 13 the request for bandmates, which is the request for a feature/whatever role-instrument the bandmate plays, also para. 19: providing a request, invitation, and/or other prompt to join a given avatar in playing a song.), the request including receiving a first content file (para. 16: ong management module 114 may be configured to receive a song selection that corresponds to a song file uploaded by a user; alternatively, para. 19: given avatar in playing a song, where the avatar playing comprises a user transmitting a song/first content file to the server) associated with the feature;
transmitting a message informing the request (a request or invitation, after being received must be transmitted to the avatar/user that will join the already playing user);
one of transmitting an acceptance of the request and a denial of the request ( para. 13: approved by the one or more other users/user that will join based on the invitation or request); and
upon the acceptance of the request, receiving and transmitting a second content file including a version of the feature (para: 20, For example, where the first avatar selected a guitar and the second avatar selected drums, space module 108 may provide a representation of the first avatar playing the guitar part of the selected song and the second avatar playing the drums part of the selected song) (where the server receives the mixed audio output from the space module, and transmits the audio to the users per para. 20: The first musical solo information may be added to an audio signal provided by space module. By way of non-limiting example, a guitar solo may be added to a song being played in conjunction with soloing module. In some implementations, musical solo information may be associated with one or more of a plurality of avatars playing a given song. Input may be provided by users via client) (also as shown in step 212 of fig. 2).
However, Quinn does not specify
the acceptance of the request further comprises receiving a credit from a first artist seeking to receive the version of the feature, and upon acceptance of the second content file including the version of the feature, a credit is provided to a second artist that provided the version of the feature.
Peters discloses a musician collaboration system and teaches an interface with automatic shopping for creative works where a user can purchase a creative work from another musician to be on sale (para. 32: Once the buyer is finished browsing the marketplace, the buyer can proceed to checkout by confirming the payment information stored on their account and completing the purchase of the creative works. This allows for the buyer member to easily purchase a creative work instantly, ). It would have been obvious to one skilled in the art at the time of filing that the system of Quinn could implement a shopping/payment/credit system for the purpose of making money.
Additionally, it would have been obvious to implement the marketplace with registered versions of content to be shopped for by either of the musicians in the system of Quinn, noting para 32 and 53 of Peters, for the purpose of an improved interface for collaboration via the shopping market.
As per claim 9,17, they are rejected per the system of the claim 1 rejection which requires software program product in order to implement the cited system/method.
As per claims 2,10, Quinn discloses the system of claim 1, wherein the first content file is one of a musical content file including vocals and a musical content file including instrumentals (the song per the claim 1 rejection comprises at least vocals or instrumentals ), created by the first artist (the first avatar playing the first track of the song).
As per claims 3,11, the system of claim 1, wherein the second content file is one of a musical content file including vocals and a musical content file including instrumentals by another artist (per the claim 1 rejection).
As per claims 4,12, content of the feature comprises one or more of vocals, instrumentals (per claim 1 rejection), lyrics, composition, mixing and arrangement of content.
As per claims 7,15, the system of claim 1, wherein the collaboration system includes membership for a first member seeking to receive the version of the feature from a second member seeking to provide the version of the feature (the users must each be a member of the server because they are accessing the server and are now part of the network).
As per claims 8,16,20, the system of clam 1, wherein the first content file comprises a first portion of a musician-based collaboration from the first artist, the second content file comprises a second portion of the musician-based collaboration from the second artist, the first member is the first artist, and the second member is the second artist (per the claim 1 rejection).
Claim(s) 5,6,13,14,19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quinn et al (US 9093259 B1) in view of Peters (US 20170337621 A1) as applied to claim 1 above.
As per claim 5,13,19, Quinn discloses the system of clam 4, wherein the first member and the second member are both musical artists (per the claim 1 rejection) for songs, which coprise lyrics and or instrumentals, , however, Quinn does not disclose the second member has a larger following than the first member.
It would have been obvious to one skilled in the art that users of a music platform would each have different numbers of fans/ one user having a larger following because there are well known musicians and lesser known musicians.
As per claim 6,14, the system is accessed using the internet (per para 26 Quinn) which requires an electronic device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER KRZYSTAN whose telephone number is 571-272-7498, and whose email address is alexander.krzystan@uspto.gov
The examiner can usually be reached on m-f 7:30-4:00 est.
If attempts to reach the examiner by telephone or email are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached on (571) 272-7547.
The fax phone numbers for the organization where this application or proceeding is assigned are 571-273-8300 for regular communications and 571-273-8300 for After Final communications.
/ALEXANDER KRZYSTAN/Primary Examiner, Art Unit 2653
Examiner Alexander Krzystan
June 15, 2026
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