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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,616,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of U.S. Patent No. 11,616,999 implies that signatures will be generated from the requests without explicitly claiming them, as the apparatus is “ to automate recording of media for signature creation”. The outstanding application explicitly recites generating said signatures.
Application No. 18/9578,299 Claim 1
U.S. Patent No. 11,616,999 Claim 1
A method comprising:
An apparatus to automate recording of media for signature creation comprising:
receiving a reference signature request for a media content, the reference signature request including capture instructions and media information associated with a media content;
employee interface circuitry to receive a plurality of reference signature requests, wherein a first reference signature request in the plurality of reference signature requests corresponds to a first media title, a first capture date, and a first set of signatures
determining, using the media information, that the media content is available at a digital media platform;
performed by the claimed “automated capture tool circuitry”
controlling, using the capture instructions, a media player to play the media content on the digital media platform; and
automated capture tool circuitry to play media, the media described by the reference signature request
generating, using a meter, a reference signature from the media content being played on the media player.
Implied by nature of apparatus
Claims 2-20 are similarly unpatentable in view of claims 2-24 of U.S. Patent No. 11,616,999.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,160,626. Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of U.S. Patent No. 12,160,626 implies utilizing a media player to determine media content is available and used to render the media content, see claim 2, which recites “initiating playback”.
Application No. 18/9578,299 Claim 1
U.S. Patent No. 11,616,999 Claim 1
A method comprising:
A computing system comprising
receiving a reference signature request for a media content, the reference signature request including capture instructions and media information associated with a media content;
receiving a first reference signature request corresponding to a first capture date and a first set of signatures associated with first media content;
determining, using the media information, that the media content is available at a digital media platform; controlling, using the capture instructions, a media player to play the media content on the digital media platform; and
To initiate playback, see claim 2 which states “initiating, based on the prioritization, playback of the first media content before initiating playback of the second media content.”
generating, using a meter, a reference signature from the media content being played on the media player.
creating a first reference signature from the first set of signatures;
Claims 2-20 are similarly unpatentable in view of claims 2-20 of U.S. Patent No. 12,160,626.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-14, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ramanathan et al. (10,579,668) [Ramanathan].
Regarding claims 1, 8, 12, and 16, Ramanathan discloses a method comprising:
receiving a reference signature request for a media content, the reference signature request including capture instructions and media information associated with a media content (identification of at least one clip to extract signatures from, col. 9 lines 20-39);
determining, using the media information, that the media content is available at a digital media platform (via multimedia stream 302, fig. 3);
controlling, using the capture instructions, a media player to play the media content on the digital media platform; and generating, using a meter, a reference signature from the media content being played on the media player (fig. 3, signature generation 312).
Regarding claims 2, 4-5, 9-11, Ramanathan discloses the method and system of claims 1 and 8, wherein the reference signature request is a first reference signature request, wherein the media content is a first media content, wherein the reference signature is a first reference signature, and wherein the method further comprises: receiving a second reference signature request for a second media content different than the first media content prior to generating the first reference signature, assigning a priority to the first reference signature request over the second reference signature request, and generating said second signature (priority is the order in which requests are entered, col. 9 lines 20-39).
Regarding claims 6 and 18, Ramanathan discloses the method and computer readable medium of claims 1 and 16, further comprising: storing, in a database, the reference signature in association with metadata for the media content (Fig. 2C reference database 208).
Regarding claim 7, Ramanathan discloses the method of claim 6, further comprising: transmitting, after the generating, a notification that the reference signature was generated (when matches are found, fig. 2E).
Regarding claims 13, 14, and 19, Ramanathan discloses the system and computer readable medium of claims 8, 12, and 16, wherein the capture instructions comprise playing the media content from a first time interval until a second time interval (clips are distinct pieces of multimedia content comprising a temporal duration, col. 9 lines 20-27).
Regarding claim 17, Ramanathan discloses the computer readable storage medium of claim 16, wherein the digital media platform is a streaming application (col. 6 lines 59 – col. 7 line 10).
Regarding claim 20, Ramanathan discloses the computer readable storage medium of claim 16, wherein the set of operation further comprises storing, in a database, a status associated with generating the reference signature (inherent, as a finished signature is itself indicative of a “completed” status).
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.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ramanathan.
Regarding claim 15, Ramanathan disclose the system of claim 14, but fails to specifically disclose recording, in the database, a language of the media content, a title of media content, an episode associated with the media content, and a season associated with the media content.
Examiner takes official notice that including metadata descriptive of the language, title, episode, and season (when applicable) in a database of video content was notoriously well known in the art at the time of effective filing.
It would have been obvious at the time of effective filing to a person of ordinary skill in the art to modify the system of Ramanathan to include recording, in the database, a language of the media content, a title of media content, an episode associated with the media content, and a season associated with the media content for the conventional benefit of rigorously identifying video contents referenced by a database.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Said claims are directed towards specific prioritization of signature generation, as previously found allowable in U.S. Patent numbers 11,616,999 and 12,160,626.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC D SALTARELLI whose telephone number is (571)272-7302. The examiner can normally be reached 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Flynn can be reached at (571) 272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC D SALTARELLI/Primary Examiner, Art Unit 2421
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