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 .
DETAILED ACTION
1. This action is responsive to application communication filed on 10/31/2024.
2. Claims 1-8 are pending in the case.
3. Claim 1 is an independent claim.
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 Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention 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 1-8 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 of prior U.S. Patent No. 12169628. This is a statutory double patenting rejection.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11782591. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite every element of the patented claims and therefore, anticipate the patented claims.
Instant claims No. 18933087
US 11782591 B2
Claim 1
Claim 1
Claim 2
Claim 2
Claim 3
Claim 1
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11442611. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite every element of the patented claims and therefore, anticipate the patented claims.
Instant Claims No. 18933087
U.S. Patent No. 11442611
Claim 1
Claim 1
Claim 2
Claim 1
Claim 3
Claim 1
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 1
Claim 7
Claim 1
Claim 8
Claim 1
Claims 1,2,4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11048395. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite every element of the patented claims and therefore, anticipate the patented claims.
Instant claims No. 18933087
U.S. Patent No. 11048395
Claim 1
Claim 3
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 6
Claim 5
Claim 7
Claim 6
Claim 8
Claim 1
Claims 3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over 1-7 of U.S. Patent No. 11048395 in view of Hsu et al. (hereinafter “Hsu”), U.S. Published Application No. 20140098294.
Claim 3 depends on claim 1:
Patent No. 11048395 teaches wherein the one or more processors is further configured to, based on an execution of the function corresponding to the selected one menu item, control the display to display a setting UI indicating a current setting value of the function corresponding to the selected one menu item while the guide UI and the plurality of menu items are displayed on the display, (see claim 3)
Patent No. 11048395 fails to expressly teach wherein the setting UI includes text information and graphical information
However, Hsu teaches wherein the setting UI includes text information and graphical information. (e.g., the channel/volume number or value is considered “text” and “graphical information; HSU par. 24; When the channel or volume switching option is executed, if the display device receives a first type press on the button, the display device will sequentially switch to the next channel or volume level and display the corresponding channel number or volume value.)
In the analogous art of displaying menu options for a task, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the menus of Patent No. 11048395 with the menu features as taught by Hsu to provide the benefit of quickly guiding a user to operating a television as desired.
Claim 5 depends on claim 1:
Patent No. 11048395 fails to expressly teach wherein the first function is a function of moving the selection UI, and the second function is a function of selecting a menu item of the plurality of menu items on which the selection UI is located.
However, Hsu teaches wherein the first function is a function of moving the selection UI, (e.g., control cursor to move from one menu item to another menu item based on the “short click input) Hsu: par. 23; And when the display device is turned on, the display device will be switched from the state 252 to the state 254 if the button B1 is pressed with "one click", the first type press, which makes the display device show the OSD MENU 300 and a cursor automatically targeting the first option 310 of the OSD MENU 300. After that, if the button B1 is further pressed with the first type press, the display device will be switched from the state 254 to the state 260, which makes the first option 310 being selected and unfolded and the first sub-option 312 under the first option 310 being targeted.)
and the second function is a function of selecting a menu item of the plurality of menu items on which the selection UI is located. (e.g., Although in the “execution example” of par. 23, the second input is a “first type press”, Examiner notes that the first and the second type presses are described as interchangeable of par. 27.
Therefore, the second input may be any of the different types of key presses used interchangeably including the second key press type which is identified as “long press” of par. 15; Hsu; par. 15; If the detected duration of the button B1 being pressed is longer than the predetermined time period, the processor SI will take the press on button B1 as a " long press", which is the second type pressing command. Par. 23; If the display device is at the state 260 and the button B1 is pressed with the first type press, the currently targeted sub-option will be selected and the function corresponding to the currently targeted sub-option will be executed. Par. 27; the operating commands are generated by the first, second and third type presses, and can be exchanged with one another. In this way, various methods for controlling the display device can be designed according to the present invention. In addition, the processor implementing the FSM of the present invention can be configured to define more press types. Any changes and modifications to the methods utilizing different press types or other ways to trigger the single button on the display device in order to operate a display device can be derived from the present invention. For example, the first, second and third type press can be replaced by other ways to trigger different signals, and the modifications to the contents and/or interface of the OSD menu can be derived from the present invention.)
In the analogous art of displaying menu options for a task, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the menus of Patent No. 11048395 with the menu features as taught by Hsu to provide the benefit of quickly guiding a user to operating a television as desired.
Allowable Subject Matter
Claims 1-8 would be allowable if current double patenting rejections are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY ORR whose telephone number is (571)270-1308. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Queler can be reached at (571)272-4140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY ORR/Primary Examiner, Art Unit 2172
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