DETAILED ACTION
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 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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 17 of U.S. Patent No. 8,631,448 in view of Gogoi et al. (US 2002/0199193).
Claim 17 of U.S. Patent No. 8,631,448 discloses:
an interactive media transmission associated with at least one event, wherein a unique identifier specific to the instance of the scheduling opportunity is transmitted in association with the interactive media transmission (receive at least a specific instance of a broadcast segment, an associated interactive media transmission, and a unique identifier specific to a scheduling opportunity corollary to the interactive media transmission; determine an association of the specific instance of the broadcast segment with the interactive media transmission, a second unique identifier data that enables unique identification of the specific instance of the broadcast segment, and at least one option associated with the
scheduling);
an interactive media receiver (broadcast receiver);
a monitor module to determine whether the notification criteria for the scheduled event has occurred, associated with the interactive media receiver (one or more processors configured to generate a reminder that causes an alert to be produced, the reminder based in part on the scheduling response data);
an input module for a user to select the interactive media transmission received by the interactive media receiver (input interface);
a communications module for communicating between the interactive media receiver, the monitor module associated with the interactive media receiver, and the database associated with the interactive media transmission, wherein the unique identifier specific to the instance of the scheduling opportunity is communicated to the database associated with the interactive media transmission upon the user selection of the interactive media transmission received by the interactive media receiver (network interface configured to:
transmit the unique identifier specific to the scheduling opportunity and the second unique identifier that enables unique identification of the specific instance of the broadcast segment to a schedule delivery system; and receiving from the schedule deliver system server scheduling response data); and
wherein the at least one event is scheduled in the monitor module after the user selects the interactive media transmission received by the interactive media receiver(one or more processors configured to generate a reminder that causes an alert to be produced, the reminder based in part on the scheduling response data).
Claim 17 of U.S. Patent No. 8,631,448 discloses does not disclose a database associated with the interactive media transmission, wherein the unique identifier specific to the instance of the scheduling opportunity resides in a look up table;
Gogoi discloses that it was known to store data in a server database using a lookup table (See [0127]).
Prior to the invention being made it would have been obvious to one ordinary skill in the art to modify the known system of claim 17 of U.S. Patent No. 8,631,448 with the known methods of Gogoi predictably resulting in the database being associated with the interactive media transmission, wherein the unique identifier specific to the instance of the scheduling opportunity resides in a look up table by applying the court recognized rational of applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. The modification would have the benefit of using a well known technique for organizing data for later retrieval.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 8 of U.S. Patent No. 9,143,833 in view of Gogoi et al. (US 2002/0199193). The analysis for claim 8 of U.S. Patent No. 9,143,833 is similar to that of Claim 17 of U.S. Patent No. 8,631,448 above.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 8 of U.S. Patent No. 9,549,220 in view of Gogoi et al. (US 2002/0199193). The analysis for claim 8 of U.S. Patent No. 9,549,220 is similar to that of Claim 17 of U.S. Patent No. 8,631,448 above.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 8 of U.S. Patent No. 10,979,770 in view of Gogoiet al. (US 2002/0199193). The analysis for claim 8 of U.S. Patent No. 10,979,770 is similar to that of Claim 17 of U.S. Patent No. 8,631,448 above.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 2 of U.S. Patent No. 11,882,335 in view of Gogoiet al. (US 2002/0199193). The analysis for claim 2 of U.S. Patent No. 11,882,335 is similar to that of Claim 17 of U.S. Patent No. 8,631,448 above.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable overclaim 2 of U.S. Patent No. 11,778,274 in view of Gogoiet al. (US 2002/0199193). The analysis for claim 2 of U.S. Patent No. 11,778,274 is similar to that of Claim 17 of U.S. Patent No. 8,631,448 above.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “monitor module” “communications module” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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.
Claim limitation “monitor module” “communications module” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is/are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Howcroft (US 2008/0148320) in view of Ozer etal. (US 6,708,335) in view of Gogoiet al. (US 2002/0199193).
Regarding claims 1, Howcroft discloses a system for scheduling interactive media and events (See Fig 13 and [0082-0084)), comprising:
Receiving an interactive media transmission with at least one event, where in an specific instance of a scheduling opportunity is transmitted in association with broadcast segment (See Fig 3 STB reads on device. Upcoming television program reads on specific instances of broadcast segments, see [0057));
determining an association of the specific instance of the broadcast segment with an interactive media transmission, data that enables unique identification of the specific instance of the broadcast segment, at least one option associated with a scheduling opportunity (See Fig 5, 7, 11 and [0063] for determining an interactive ad with selectable remind record options. See [0071] reminder menu information includes day and time range for program reminder. See [0076-0079] user input menu selections are transmitted back to content source for future reminder transmission from the content source); and
present the interactive media transmission and the at least one option associated with the interactive media transmission (See Fig 5 and [0062] As explained above ad is presented with record or remind options which further bring up corresponding menus if selected);
a database associated with the interactive media transmission, wherein the data for the specific instance of the scheduling opportunity resides (See Fig 4 and [0051]);
an interactive media receiver (See Fig 3 Set-top box [0052]);
a monitor module to determine whether the notification criteria for the scheduled event has occurred, associated with the interactive media receiver (See Fig 3 scheduler module [0054] , see also Fig 12);
an input interface configured to receive a selection of at least one option associated with the scheduling opportunity (See Fig 3 remote interface 316 and [0052)); and a network interface (See network interface 312 Fig 3 and [0052]) configured to:
transmit the data that enables unique identification of the specific instance of the broadcast segment to a schedule delivery system server (See Fig 11 and [0076-0079] user input selection related to menu are received from STB at the content source); and
a communications module for communicating between the interactive media receiver, the monitor module associated with the interactive media receiver, and the database associated with the interactive media transmission, wherein the unique event information specific to the instance of the scheduling opportunity is communicated to the database associated with the interactive media transmission upon the user selection of the interactive media transmission received by the interactive media receiver, and (See Fig 3 network interface, See [0058-0059] Content source generates a reminder for transmission to selected user device. See [0078-0079] a reminder is scheduled for transmission to one or more selected devices. The one or more selected devices are those seen on Fig 8, including STB, and may be determined using user preferences.);
wherein the at least one event is scheduled in the monitor module after the user selects the interactive media transmission received by the interactive media receiver ( As noted above a pop-up reminder for the selected program generated at the content source and transmitted to STB reads on scheduling response data, see [0058-0059]. The actual display of a pop-up reminder reads on one or more processors to generate a reminder or schedule an alert at the display device, see [0046]. Processor [0083] generating on screen pop-up based on triggers in video content. As discussed above the reminders are based on user menu input selections and user device preferences.).
Howcroft does not explicitly disclose receiving at the client receiving device a unique identifier specific to a scheduling opportunity and transmitting said identifier of a scheduling opportunity to a schedule delivery system.
Ozer discloses unique identification of the specific advertisements are received at the client device (See Col 7 lines 15-41 specific ad event) and transmitting the unique IDs back to a central server for logging of viewer activity (See Col 8 lines 25-42 URI is part of behavior log. See Col 13 lines 35-50 for sending behavior log to clearinghouse system. Note also Col 8 lines 54-67 for including other relevant data in behavior log including identifier for the television program associated with advertisement).
Prior to the invention being made it would have been obvious to one ordinary skill in the art to modify the known system of Howcroft with the known methods of Ozer predictably resulting in the unique scheduling opportunities which are advertisements for future programming to schedule reminders to be implemented via unique identifiers specific to a scheduling opportunity received and transmitted back to a schedule delivery system by applying the court recognized rational of applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. The modification would have the benefit of tracking viewer behavior associated with the identifiers as suggested by Ozer.
Howcroft does not explicitly disclose the database includes a look-up table.
Gogoi discloses that it was known known to implement a look-up table in a database (See [0127]).
Prior to the invention being made it would have been obvious to one ordinary skill in the art to modify the known system of Howcroft with the known methods of Gogoi predictably resulting in the database being associated with the interactive media transmission, wherein the unique identifier specific to the instance of the scheduling opportunity resides in a look up table by applying the court recognized rational of applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. The modification would have the benefit of using a well known technique for organizing data for later retrieval.
Conclusion
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FERNANDO . ALCON
Examiner
Art Unit 2425
/FERNANDO ALCON/Primary Examiner, Art Unit 2425