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 .
Double Patenting
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 of the instant application are rejected on the ground of ‘statutory’ obviousness-type double patenting as being unpatentable over claims 1-21 of Pollet et al, U.S. Patent 11,683,535 B2 (Application 17/377,105). The conflicting independent claims recite identical claim features and/ or limitations and are not patentably distinct from each other.
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 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 1-20 of the instant application are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-15 of Pollet et al, U.S. Patent 11,089,341 B2 (hereinafter Patent ‘341) [Application 15/977,269]. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The subject matter claimed in the instant application is technically disclosed in the patent since the patent and the instant application are claiming common and/or overlapping subject matter. Independent claims 1, 8 and 11 of the instant application and independent claims 1, 7 and 10 of the Patent both generally recite and/or describe the same invention, such as:
A system for capturing and distributing a live audio stream of a live event in real-time to a plurality of mobile computing devices, the system comprising:
at least one memory configured to store computer-executable instructions; and
at least one processing device coupled to the at least one memory and at least one
upon receipt of the live
generate, in real-time, a plurality of discrete audio data packets from the live audio stream;
prior to transmitting copies of the plurality of discrete audio data packets:
place each discrete
as each discrete
transmitting,
after transmitting the single copy of the first discrete
Claims 1-20 of the instant application, and independent claims 1, 8 and 11 in particular, are drawn to the same invention and recite similar features / limitations as the independent claims of Patent ‘341, with the exception of the additional feature(s) or limitation(s) of “at least one ‘audio’ input device configured to receive the live ‘audio’ stream…”, ‘discrete audio data packet of the plurality of discrete audio packets’ as well as the features / limitations of
“as each discrete audio data packet is generated, retrieve the copy of each discrete audio data packet from the buffer and transmit that respective copy of the discrete audio data packet over a first network for receipt by the plurality of mobile computing devices, wherein the plurality of mobile computing devices having subscribed to the live audio stream…”;
“transmitting, by Unicast transmission, a single copy of a first discrete audio data packet of the plurality of discrete audio data packets for receipt by each one of the plurality of mobile computing devices without transmitting…”, as well as the feature / limitation of
“after transmitting the single copy of the first discrete audio data packet, transmitting, by Unicast transmission, a single copy of a second discrete audio data packet of the plurality of discrete audio data packets different from the first discrete audio data packet, for receipt by …” – recited by Patent ‘341.
The claimed invention in the instant application implements the methodology described by the patent, but is lacking the above aforementioned additional claim features. Accordingly, Claims 1-20 of Patent ‘341 anticipates all of the limitations of the instant application.
In removing this/these limitation(s), the scope of the claim(s) is merely broadened by eliminating elements and their functions. It has been held that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 365 (Bd. App. 1969) (omission of a reference element whose function is not needed would be obvious to one skilled in the art).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLENFORD J MADAMBA whose telephone number is (571)272-7989. The examiner can normally be reached on Mondays to Fridays, from 9am to 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Parry, can be reached at telephone number 571-272-7989. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GLENFORD J MADAMBA/Primary Examiner, Art Unit 2451
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