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 .
Response to Arguments
Applicant’s arguments with respect to claims 2, 3, 5-13, and 15-23 have been considered but are not persuasive. Applicant argues Yang fails to disclose displaying the associated information on the primary device. However, the scope of the claims is that the primary device causes display of the information, but does not necessarily perform the displaying. Namely, the claims state “performing an action at the first device…wherein performing the action comprises: generating for display the information”. A secondary device may still display the information which has been prepared for display by the first device. As cited herein, Yang teaches displaying information on a receiver device that has been prepared by the remote service worker (paragraph 1832).
Applicant did not traverse the finding that that the use of smartphones, tablets, and set-top boxes in home networking was notoriously well known in the art at the time of effective filing. This is taken as an admission of the fact herein, see MPE 2144.03(c).
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, 3, 5-13, and 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,812,079. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,812,079 also discloses the amended feature of generating for display the information by integrating the information within an interface provided by the application. See Claim 1 lines 26-25 of U.S. Patent No. 11,812,079 which states “generating a display at the first device integrating the secondary content with primary content”. The outstanding double patenting rejection provided previously remains otherwise unchanged.
Claims 2, 3, 5-13, and 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,206,923. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,812,079 also discloses the amended feature of generating for display the information by integrating the information within an interface provided by the application. See Claim 1 lines 21-22 of U.S. Patent No. 12,206,923 which states “generating a display at the first device integrating the secondary content with primary content”. The outstanding double patenting rejection provided previously remains otherwise unchanged.
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 2, 3, 5-9, 12, 13, 15-19, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (2018/0035153, of record) [Yang].
Regarding claims 2 and 12, Yang discloses a method comprising:
transmitting, by a first device and using a beacon associated with a network, a request for information (UPnP discovery, paragraph 1169-1170);
receiving, over the network from a second device, a response to the request, wherein the response requests identification data associated with the first device (search message, paragraph 1170);
based at least in part on receiving the response to the beacon from the second device, transmitting the identification data associated with the first device to the second device, wherein the identification data is associated with an application being executed at the first device (unicast response message, paragraph 1170);
based at least in part on the transmitting of the identification data, receiving, at the first device and from the second device, the information associated with the request transmitted using the beacon (GET request, paragraph 1171); and
performing an action at the first device, based at least in part on the information associated with the request transmitted using the beacon (eventing, paragraph 1171); wherein performing the action comprises generating for display the information by:
integrating the information within an interface provided by the application being executed at the first device (via browser user interface, fig 158, for displaying content provided as said eventing, paragraph 1832).
Regarding claims 3 and 13, Yang discloses the method and system of claims 2 and 12, wherein the network is a local area network (LAN) and the transmission of the beacon is a LAN- specific multicast (home network, paragraph 1167).
Regarding claims 5 and 15, Yang discloses the method and system of claims 2 and 12, wherein the response to the beacon comprises an identifier uniquely identifying the second device (for enabling subsequent unicast response message, paragraph 1170).
Regarding claims 6 and 16, Yang discloses the method and system of claims 2 and 12, further comprising: receiving a response to the request from a third device within the network; and based, at least in part on receiving the response to the request from the third device within the network, transmitting the identification data associated with the first device to the third device (UPnP works with any number of devices, paragraph 1169).
Regarding claims 7 and 17, Yang discloses the method and system of claims 2 and 12, wherein a profile associated with the second device has access rights to the information (service subscription, paragraph 1171).
Regarding claims 8 and 18, Yang discloses the method and system of claims 7 and 17, wherein the information corresponds to content for which the profile associated with the second device has the access rights to (service subscription, paragraph 1171).
Regarding claims 9 and 19, Yang discloses the method and system of claims 2 and 12, wherein the first device does not have access to the information via a wide area network (in the event it comes directly from controlled device, such as the storage of a PC, paragraphs 1167- 1168).
Regarding claims 22 and 23, Yang discloses the method and system of claims 2 and 12, wherein the identification data comprises an identifier of the first device and information related to the application being executed at the first device; and the generating the information for display is based at least in part on the information related to the application being executed at the first device (paragraph 1832).
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 10, 11, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yang.
Regarding claims 10, 11, 20, and 21, Yang discloses the method and system of claims 2 and 12, but fails to specifically disclose the first device is a first smartphone, tablet or set-top box; and the second device is a second smartphone or tablet.
Examiner takes official notice that the use of smartphones, tablets, and set-top boxes in home networking 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 method and system of Yang to include the first device is a first smartphone, tablet or set-top box; and the second device is a second smartphone or tablet.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See also Anderson et al. (2007/0130399) who also teaches using plug and play exchanges to activate secondary devices to supplement a first device.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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