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 .
Priority
This application repeats a substantial portion of prior Application No. 17/235,691, filed 04/20/2021 or 17/972,358 filed 10/24/2022 or 18/353,762 filed 07/17/2023, and adds and claims additional disclosure not presented in the prior application. Since this application names an inventor or inventors named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78.
a. The applicant may cancel the limitation. These claim limitations were not disclosed in the parent application filed 04/20/2021.
OR
The applicant may amend the limitation to be in accordance with the specification of the parent application.
b. Should the applicant not cancel the claim limitations or amend the limitations as suggested, then the applicant should convert the application to a continuation in part and the new limitations will receive the current application’s filing date of .
i. The applicant would be required to file a new oath and declaration.
ii. The claim limitations would be required to be added to the specification without adding any other new matter. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claims 1-20 recite “at a second time different from the first time, receive, from a second playback device associated with a second user account, a second request to play back the scheduled playlist of media items; determine a second priority media item for playback by the second playback device; and transmit the second priority media item to the second playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the second playback device..”
The applicant’s specification discloses the level of one or more accounts (paragraph 0121). The applicant's specification discloses examples such as same user account with different devices on different platforms as defined in the parent application (paragraph 0146, Figure 7). The applicant’s specification does not disclose different accounts requesting at different times for media and transmitting the same or different priority items to the playback devices.
Claim 3 and 13 recite “determine that the first playback device played back the first priority media item for more than a threshold period of time; wherein the program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback comprise program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback based on the determination that the first playback device played back the first priority media item for more than the threshold period of time.”
The applicant’s specification explicitly states if the playback device plays back for less than threshold length of time before discontinuing playback, the priority media item is transmitted (paragraph 0156). The specification does not explicitly state the negative limitation of without transmitting. Nor does it provide that it is another device of the same account for this implementation. “
Claim 7 and 16 recite “maintain the first priority media item for a first period of time, wherein the first time and the second time are both within the first period of time; after the first period of time, maintain a third priority media item instead of the first priority media item for a second period of time.” As stated for claim 1 and 11 there is no explicit detail of a second time corresponding to the second playback device requesting.
Claim 8 and 17 recite “at a third time within the second period of time, receive, from a third playback device associated with a third user account, a third request to play back the scheduled playlist of media items; and transmit the third priority media item to the third playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the third playback device.” The specification does not state a third time within a second period time for a third user account (paragraph 0121, 0146, Figure 7).
Appropriate correction is required.
Applicant's claim for domestic priority under 35 U.S.C. 119(e) is acknowledged. However, the provisional applications upon which priority is claimed fails to provide adequate support for claims 1-20 of this application. In particular, the provisional applications 63/013,326 make no reference to “based on determining that the first request and the second request are not associated a second time different from the first time, receive, from a second playback device associated with a second user account, a second request to play back the scheduled playlist of media items; determine a second priority media item for playback by the second playback device; and transmit the second priority media item to the second playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the second playback device,” “determine that the first playback device played back the first priority media item for more than a threshold period of time; wherein the program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback comprise program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback based on the determination that the first playback device played back the first priority media item for more than the threshold period of time,” “maintain the first priority media item for a first period of time, wherein the first time and the second time are both within the first period of time; and after the first period of time, maintain a third priority media item instead of the first priority media item for a second period of time..,” “at a third time within the second period of time, receive, from a third playback device associated with a third user account, a third request to play back the scheduled playlist of media items; and transmit the third priority media item to the third playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the third playback device.” Therefore, claims 1-20 do not receive the priority of the provisional application 63/013,326 filed 04/21/2020.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-20 recite “at a second time different from the first time, receive, from a second playback device associated with a second user account, a second request to play back the scheduled playlist of media items; determine a second priority media item for playback by the second playback device; and transmit the second priority media item to the second playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the second playback device.”
The applicant’s specification provides support for different times within the same account. Paragraph 0121 states one or more user accounts. However, the specification does not state requests at different times with playback devices from two different accounts and the subsequent steps related to requests from a second account. The specification supports explicitly multiple playback devices on multiple platforms of the same account and requesting media.
[0146] Alternatively, the computing system 740 may determine that the request by playback device 710a is a second or subsequent request. For instance, the computing system 740 may store an indication of a previous, first request from playback device 710a. Additionally or alternatively, the computing system 740 may receive some other indication that the playback device 710a has already played back the priority media item 780 during the predetermined time period. As another possibility, the computing system 740 might receive an indication that a user account currently associated with the playback device 710a has requested and experienced the priority media item 780 via a different media platform, perhaps via a different playback device located in a different media playback system. In these situations, the computing system 740 may forego transmitting the priority media item 780 to the playback device 710a and instead transmit an initial media item for playback from the scheduled playlist 760, such as media item 761.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969-70, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002). For example, it is now well accepted that a satisfactory description may be found in originally-filed claims or any other portion of the originally-filed specification. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980); In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). However, that does not mean that all originally-filed claims have adequate written support. The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings. See MPEP § 2163.03.
Please provide evidence of support for this limitation in the specification.
Claim 3 and 13 recite “determine that the first playback device played back the first priority media item for more than a threshold period of time; wherein the program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback comprise program instructions that, when executed by the at least one processor, cause the cloud-based computing system to transmit the one or more media items from the scheduled playlist of media items, without transmitting any priority media item, to the third playback device for playback based on the determination that the first playback device played back the first priority media item for more than the threshold period of time.”
The applicant’s specification explicitly states if the playback device plays back for less than threshold length of time before discontinuing playback, the priority media item is transmitted (paragraph 0156). The specification does not explicitly state the negative limitation of without transmitting. Nor does it provide that it is another device of the same account for this implementation.“
See also MPEP § 2163.03 for the requirements of the written description requirement. (recited above)
Regarding the negative limitation at issue, we find Appellant's cited support in the Specification (occluding Figure 4, Block 106, page 10, lines 13-19) does not identify any "descri[ption of] a reason to exclude the relevant limitation.” ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. See also MPEP § 2173.05(i) ("Any negative limitation orexclusionary proviso must have basis in the original disclosure ....The mere absence of a positive recitation is not basis for an exclusion.").
Please provide evidence of support for this limitation in the specification.
Claim 7-8 and 16-17 recite “maintain the first priority media item for a first period of time, wherein the first time and the second time are both within the first period of time; and after the first period of time, maintain a third priority media item instead of the first priority media item for a second period of time...” Claim 8 and 17 recite “at a third time within the second period of time, receive from a third playback device associated with a third user account, a third request to play back the scheduled playlist of media items; and transmit the third priority media item to the third playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the third playback device.”
As stated for claim 1 and 11 there is no explicit detail of a second time corresponding to the second playback device requesting. The specification does not state a third time within a second period time for a third user account (paragraph 0121, 0146, Figure 7).
See also MPEP § 2163.03 for the requirements of the written description requirement. (recited above)
Please provide evidence of support for this limitation in the specification.
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.
Claims 5, 6, 9 6, 14, 15 and 18 are 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.
Claims 5 and 14 recite wherein the third playback device is the first playback device. It is unclear as to how a third playback device is a first playback device. It is unclear why claim 2 does not simply state first playback device instead of third playback device.
Claims 6 and 15 recite wherein the second priority media item is the first priority media item. It is unclear as how the second priority media item is the first priority media item. It is unclear why the claim language does not state determine a first priority media for playback by the second playback device.
Claim 9 and 18 recite “the program instructions that, when executed by the at least one processor, cause the cloud- based computing system to determine the first priority media item comprise program instructions that, when executed by the at least one processor, cause the cloud-based computing system to determine the first priority media item based on operational data associated with the first playback device; and the program instructions that, when executed by the at least one processor, cause the cloud- based computing system to determine the second priority media item comprise program instructions that, when executed by the at least one processor, cause the cloud-based computing system to determine the second priority media item based on operational data associated with the second playback device.
It is unclear how the cloud-based computing system determines the first priority media item comprises program instruction when executed by the one processor to cause the cloud passed computing system to determine the first priority media item based on operational data….
It is unclear if the limitations have an inadvertent typographical error with copying and pasting or if a part of a limitation is missing for both limitations.
The Office assumes that it is inadvertent copying and the limitations are the latter portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mishra et al (US 2015/0319479 and hereafter referred to as “Mishra”) at least one processor (Figure 1, 144, Page 3, paragraph 0062); at least one non-transitory computer-readable medium (Figure 1, 144, Page 3, paragraph 0062, Page 26, paragraph 0445); and program instructions stored on the at least one non-transitory computer-readable medium that, when executed by the at least one processor, cause the cloud-based computing system (Figure 1, Page 26, paragraph 0445, Page 3, paragraph 0065-0068, Figure 5, 190) to: maintain (i) a scheduled playlist of media items for playback by one or more playback devices (Page 4, paragraph 0076), (ii) a paragraph 0120), and while the current playback position within the scheduled playlist of media items is advancing: at a first time, receive, from a first playback device associated with a first user account, a first request to play back the scheduled playlist of media items (Page 2, paragraph 0056); determine a first priority media item for playback by the first playback device (Page 4, paragraph 0082); transmit the first priority media item to the first playback device for playback beginning before playback of any media item from the scheduled playlist of media items by the first playback device (Page 4, paragraph 0076).
Willis et al (US 2013/0218942 and hereafter referred to as “Willis”) discloses at least one processor (Page 7, paragraph 0079); non-transitory computer-readable medium (Page 7, paragraph 0080,0084, Page 30, paragraph 0256); and program instructions stored on the non-transitory computer-readable medium that are executable by the at least one processor and thereby cause the cloud-based computing system to be configured to (Page 7, paragraph 0079, 0080, 0084, Page 30, paragraph 0256): maintain (i) a scheduled playlist of media items for playback by one or more playback devices (Page 10, paragraph 0104), (ii) a current playback position within the scheduled playlist of media items (Page 12-13, paragraph 0120), and (iii) a priority media item for playback by the one or more playback devices, the priority media item comprising a playback length (Page 17, paragraph 0155); receive, from a playback device over a communication network, a request to play back the scheduled playlist of media items (Page 11, paragraph 0107); based on the received request, transmit the priority media item to the playback device for playback beginning at a first time (Page 11, paragraph 0107).
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/FARZANA HOSSAIN/Primary Examiner, Art Unit 2482
February 6, 2026