DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-30 are presented for examination.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-30 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 12,160,458. 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 is covered by the patent since the patent and the application are claiming common subject matter.
U.S. Patent No. 12,160,458
Instant Application: 18/929,142
A method comprising:
A method comprising:
receiving, from a computing device, a first request for content in a first format, wherein a first content segment from among a plurality of content segments of the content in the first format comprises first position information for the plurality of content segments;
sending, by a computing device, a first request for content in a first format in which a first content segment, of a plurality of content segments of the content, comprises first position information for the plurality of content segments;
sending, to the computing device based on the first request, the plurality of content segments of the content in the first format;
receiving, by the computing device based on the first request, the plurality of content segments of the content in the first format;
receiving, from the computing device, a second request for content in a second format that is different from the first format, wherein each of a plurality of content segments of the content in the second format comprises corresponding position information that is based on the first position information;
sending, by the computing device, a second request for content in a second format in which each content segment, of a plurality of content segments of the content in the second format, comprises corresponding position information that is based on the first position information;
and sending, to the computing device based on the second request, the plurality of content segments of the content in the second format.
and receiving, by the computing device based on the second request, the plurality of content segments of the content in the second format.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “a plurality of content segments of the content” in line 3 is ambiguous in the context of the claim as a whole. Does this refer to ‘a plurality of content segments of the content in the first format’ or ‘a plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “a plurality of content segments of the content in the first format” to distinguish it fully from “a plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “the plurality of content segments” in line 4 is ambiguous in the context of the claim as a whole. Does this refer to ‘the plurality of content segments of the content in the first format’ or ‘the plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “the plurality of content segments of the content in the first format” to distinguish it fully from “the plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “a plurality of content segments of the content” in line 6 is ambiguous in the context of the claim as a whole. Does this refer to ‘a plurality of content segments of the content in the first format’ or ‘a plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “a plurality of content segments of the content in the first format” to distinguish it fully from “a plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “the plurality of content segments” in line 7 is ambiguous in the context of the claim as a whole. Does this refer to ‘the plurality of content segments of the content in the first format’ or ‘the plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “the plurality of content segments of the content in the first format” to distinguish it fully from “the plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “a plurality of content segments of the content” in line 4 is ambiguous in the context of the claim as a whole. Does this refer to ‘a plurality of content segments of the content in the first format’ or ‘a plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “a plurality of content segments of the content in the first format” to distinguish it fully from “a plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “the plurality of content segments” in line 5 is ambiguous in the context of the claim as a whole. Does this refer to ‘the plurality of content segments of the content in the first format’ or ‘the plurality of content segments of the content in the second format?’ It is suggested that Applicants amend this phrase to read, “the plurality of content segments of the content in the first format” to distinguish it fully from “the plurality of content segments of the content in the second format” if that was the intention, to make the language parallel to that of the second half of the claim regarding the second format, and to show consistency with how the phrase is used further within the independent claim and subsequent dependent claims. Appropriate correction is required.
Allowable Subject Matter
Claims 1-30 are allowable over the prior art with regards to 35 U.S.C. 102 and 35 U.S.C. 103, pending the non-statutory double patenting and 35 U.S.C. 112(b) rejections above.
Conclusion
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/Alicia Baturay/
Primary Examiner, Art Unit 2441
February 19, 2026