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 2-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,170,809. Although the claims at issue are not identical, they are not patentably distinct from each other. For instance, note the following similarities between instant application claim 2 and patented claims 1 and 5.
Instant Application Claim 2
US Pat. 12,170,809 Claims 1, 5
A reproducing apparatus, comprising: a memory; and circuitry coupled to the memory and configured to receive content data and caption data, the caption data corresponding to the content data, generate a content video signal based on the content data,
A reproducing apparatus, comprising: a memory; and circuitry coupled to the memory and configured to receive content data and caption data, the caption data corresponding to the content data, generate a content video signal based on the content data (Claim 1),
generate caption information based on the caption data, display caption character edge type options including a drop shadow edge, a raised edge, a depressed edge and a uniform edge,
generate caption information based on the caption data (Claim 1),
wherein the circuitry is configured to receive the first user setting and the second user setting to select a right drop shadow edge, a raised edge, a depressed edge, or a uniform edge as an option of the caption character edge type (Claim 5)
receive a first user setting to select a first caption character edge type option from the caption character edge type options, retain the first user setting in the memory, update the caption information based on the first user setting,
receive a first user setting to select at least one of a caption display mode or caption character edge type, retain the first user setting at least in a non-volatile memory region,
update the caption information based on the first user setting, (Claim 1)
generate a caption video signal according to the updated caption information, superimpose the caption video signal on the content video signal and reproduce the content video signal and the superimposed caption video signal,
generate a caption video signal according to the updated caption information, superimpose the caption video signal on the content video signal and reproduce the content video signal and the superimposed caption video signal (Claim 1),
during reproduction of the content video signal, display the caption character edge type options and receive a second user setting to select a second caption character edge type option from the caption character edge type options,
retain the second user setting in the memory, and update the caption information based on the second user setting.”
during reproduction of the content video signal, receive a second user setting to select at least one of the caption display mode and the caption character edge type, retain the second user setting at least in a volatile memory region, and update the caption information based on the second user setting (Claim 1).
Since claim 2 in the instant application is a broader recitation of claim 1 in Pat. 12,170,809 it would have been obvious to modify claim 1 in Pat. 12,170,809 to get claim 2 in the instant application.
Claim 3 of the instant application corresponds to patented claim 2.
Claim 4 of the instant application corresponds to patented claim 3.
Claim 5 of the instant application corresponds to patented claim 4.
Claim 6 of the instant application corresponds to patented claim 5.
Claim 7 of the instant application corresponds to patented claim 6.
Claim 8 of the instant application corresponds to patented claim 7.
Claim 9 of the instant application corresponds to patented claim 8.
Claim 10 of the instant application corresponds to patented claim 9.
Claim 11 of the instant application corresponds to patented claim 10.
Claim 12 of the instant application corresponds to patented claim 11.
Claim 13 of the instant application corresponds to patented claim 12.
Claim 14 of the instant application corresponds to patented claim 13.
Claim 15 of the instant application corresponds to patented claim 14.
Claim 16 of the instant application corresponds to patented claim 15.
Claim 17 of the instant application corresponds to patented claim 16.
Claim 18 of the instant application corresponds to patented claim 17.
Claim 19 of the instant application corresponds to patented claim 18.
Claim 20 of the instant application corresponds to patented claim 19.
Claim 21 of the instant application corresponds to patented claim 20.
Claim 22 of the instant application corresponds to patented claim 19.
Claims 2-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-10, 18 of U.S. Patent No. 11,736,759. Although the claims at issue are not identical, they are not patentably distinct from each other. For instance, note the following similarities between instant application claim 2 and patented claims 1 and 3.
Instant Application Claim 2
US Pat. 11,736,759 Claims 1, 3
A reproducing apparatus, comprising: a memory; and circuitry coupled to the memory and configured to receive content data and caption data, the caption data corresponding to the content data, generate a content video signal based on the content data,
A reproducing apparatus, comprising: a memory; and circuitry coupled to the memory and configured to receive content data and caption data, the caption data corresponding to the content data… generate a content video signal based on the content data (Claim 1)
generate caption information based on the caption data, display caption character edge type options including a drop shadow edge, a raised edge, a depressed edge and a uniform edge,
generate … caption information based on the caption data (Claim 1),
receive the first user setting and the second user setting to select a right drop shadow edge, a raised edge, a depressed edge, or a uniform edge as an option of the caption character edge type (Claim 3).
receive a first user setting to select a first caption character edge type option from the caption character edge type options, retain the first user setting in the memory, update the caption information based on the first user setting,
receive a first user setting to select at least one of a caption display mode and caption character edge type, retain the first user setting at least in a non-volatile memory region, update the … caption information based on the first user setting (Claim 1),
generate a caption video signal according to the updated caption information, superimpose the caption video signal on the content video signal and reproduce the content video signal and the superimposed caption video signal,
generate a caption video signal according to the updated … caption information, superimpose the caption video signal on the content video signal and reproduce the content video signal and the superimposed caption video signal (Claim 1),
during reproduction of the content video signal, display the caption character edge type options and receive a second user setting to select a second caption character edge type option from the caption character edge type options,
retain the second user setting in the memory, and update the caption information based on the second user setting.”
during reproduction of the content video signal, receive a second user setting to select at least one of the caption display mode and the caption character edge type, retain the second user setting at least in a volatile memory region, and update the intermediate caption information based on the second user setting (Claim 1).
Since claim 2 in the instant application is a broader recitation of claim 1 in Pat. 11,736,759 it would have been obvious to modify claim 1 in Pat. 11,736,759 to get claim 2 in the instant application.
Claim 3 of the instant application corresponds to patented claim 1.
Claim 4 of the instant application corresponds to patented claim 1.
Claim 5 of the instant application corresponds to patented claim 2.
Claim 6 of the instant application corresponds to patented claim 3.
Claim 7 of the instant application corresponds to patented claim 1.
Claim 8 of the instant application corresponds to patented claim 4.
Claim 9 of the instant application corresponds to patented claim 1.
Claim 10 of the instant application corresponds to patented claim 6.
Claim 11 of the instant application corresponds to patented claim 4.
Claim 12 of the instant application corresponds to patented claim 8.
Claim 13 of the instant application corresponds to patented claim 9.
Claim 14 of the instant application corresponds to patented claim 2.
Claim 15 of the instant application corresponds to patented claim 3.
Claim 16 of the instant application corresponds to patented claim 1.
Claim 17 of the instant application corresponds to patented claim 5.
Claim 18 of the instant application corresponds to patented claim 6.
Claim 19 of the instant application corresponds to patented claim 8.
Claim 20 of the instant application corresponds to patented claim 9.
Claim 21 of the instant application corresponds to patented claim 10.
Claim 22 of the instant application corresponds to patented claim 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Q Huerta whose telephone number is (571)270-3582. The examiner can normally be reached M-F 9:00 AM-5:00 PM.
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/ALEXANDER Q HUERTA/Primary Examiner, Art Unit 2425 January 22, 2026