DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 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.
Claims 1-20 are rejected in the Instant Application.
Priority
Examiner acknowledges Applicant’s claim to priority benefits of 17/208438, 16/281259, 15/250278 filed 3/22/2021, 2/21/2019, and 8/29/2015, respectively.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 12/20/2024 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered if signed and initialed by the Examiner.
Claim Rejections
Claim Rejections - Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,219,001. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader versions of the patent claims. Claim 1 is mapped to Claim 1 of the patent below. In addition, the following claims are substantially similar:
Instant Claim 2 and Patent Claim 1
Instant Claim 3 and Patent Claim 21
Instant Claim 4 and Patent Claim 22
Instant Claim 5 and Patent Claim 23
Instant Claim 6 and Patent Claim 2
Instant Claim 7 and Patent Claim 1
Instant Claim 8 and Patent Claim 6
Instant Claim 9 and Patent Claim 10
Instant Claim 10 and Patent Claim 7
Instant Claim 11 and Patent Claim 9
Instant Claim 12 and Patent Claim 8
Instant Claim 13 and Patent Claim 17
Instant Claim 14 and Patent Claim 17
Instant Claim 15 and Patent Claim 21
Instant Claim 16 and Patent Claim 22
Instant Claim 17 and Patent Claim 23
Instant Claim 18 and Patent Claim 2
Instant Claim 19 and Patent Claim 6
Instant Claim 20 and Patent Claim 10
Instant Claim 1
Patent Claim 1
Notes
1. A method comprising: forming, by a computing device, a first aggregated data comprising: manifest data for a content item;
1. A method comprising: determining, by a computing device, a content item that is requested by a user device; retrieving, by the computing device and from one or more storage devices: manifest data for the content item; and a first plurality of data fragments of the content item; forming, by the computing device, a first chunk of data comprising: the manifest data;
Instant Claim 1 is broader because it is missing limitations. A first aggregated data is a broader version of a first chunk of data.
a first plurality of data fragments;
the first plurality of data fragments;
Same
and a header indicating: a size, in the first aggregated data, of the manifest data; and a size, in the first aggregated data, of each data fragment of the first plurality of data fragments;
and a header preceding, in the first chunk of data, both the manifest data and the first plurality of data fragments, wherein the header indicates: a size, in the first chunk of data, of the manifest data; and a size, in the first chunk of data, of each data fragment of the first plurality of data fragments;
The instant claims are broader because they do not require the header to precede. The headers indicate the same things.
and sending, by the computing device and to a user device, the first aggregated data.
and sending, by the computing device and to the user device, the first chunk of data.
Both require sending the formed element.
Remarks
Examiner supplements the record to explain Examiner’s view of the history of this patent family. The immediate parent of the instant filing is 17/208438, which matured into Patent 12,219,001. Claim 1 of the patent claims a method comprising: determining, by a computing device, a content item that is requested by a user device; retrieving, by the computing device and from one or more storage devices: manifest data for the content item; and a first plurality of data fragments of the content item; forming, by the computing device, a first chunk of data comprising: the manifest data; the first plurality of data fragments; and a header preceding, in the first chunk of data, both the manifest data and the first plurality of data fragments, wherein the header indicates: a size, in the first chunk of data, of the manifest data; and a size, in the first chunk of data, of each data fragment of the first plurality of data fragments; and sending, by the computing device and to the user device, the first chunk of data. Applicant changes “a first chunk” to “a first aggregated data” in the instant claims, and drops/broadens some limitations but otherwise claims the same subject matter – forming an aggregated data comprising manifest data, a first plurality of data fragments, and a header that indicates a size of the manifest data and a size of the first of each fragment, and then sending that data.
In 17/208438, Examiner Luu rejected the similar subject matter to the instant claims over three references: Li, Park and Bullotta (included in Applicant’s IDS). Park, which is assigned to instant Assignee Comcast, discloses a package with a header for a content item “that includes the DRM content information, which may include the manifest file (e.g., segment information such as segment identifiers and size…” Applicant, in the ‘438 prosecution, did not dispute that Park citation and only argued that Bullotta failed to teach a size of the manifest data in the header and that therefore the combination was nonobvious. Examiner Luu apparently found the argument persuasive, as the examiner agreed to allow if Applicant filed a terminal disclaimer to solve a Double Patenting rejection.
Examiner notes Harden (US Pat. 10,432,688) col. 10, lns. 1-31; Manifest RTP header extension can be used to signal an aggregate manifest file including the manifest_size field. However, this Examiner agrees with Examiner Li inasmuch as the instant search found no reference anticipating a header with both size data in it. Given that there is no anticipation and that this is not a case of first impression because the Office has already spoken as to the nonobviousness of the feature, Examiner is content to make the “’manifest’ RTP Header extension” part of the record and not disturb the prior holding with respect to similar claim scopes. Consequently, Examiner makes no 103 rejection to the claims.1
Examiner next comments on 101. Examiner considered making a judicial exception rejection to the claims. Claim 1 is representative and claims “forming [] data” where the data has (1) manifest data, (2) a first plurality of data fragments, and (3) a header containing two size values. Claim 1 then claims “sending [the data].” Examiner is concerned that a court would find Claim 1 to be ineligible. Claim 1 is essentially a command to combine data together. Examiner reads cases such as Digitech v. Electronics for Imaging (758 F.3d 1344) as calling data manipulation-qua-data manipulation an ineligible abstract idea. Digitech included a method that had the steps of “generating first data…generating second data…and combining said first and second data into the device profile.” Examiner thinks “combining [data] into the device profile” is substantially similar to “forming [] a first aggregated data comprising: [first, second and third data].” The Digitech court opined: “The above claim recites a process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information—i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions—and organizing this information into a new form. The above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device.” A similar thing can be said of the instant claims – This application does not assert it invented manifest data, a plurality of data fragments, or headers, or that manifest data and data fragments do not inherently have traits such as size. The claim merely claims “forming [] aggregated data” comprising the two preexisting data and their traits, which is just a reorganization of the data. Claim 1 does not command anything be done with the data other than it be sent, so one cannot say that the claim involves a technical solution to a problem or some other practical application.
However, the MPEP cites Digitech under the Mathematics subcategory of abstract ideas and identifies the ineligibility as “organizing information and manipulating information through mathematical correlations.” Examiner acknowledges that no math is being used here. With respect to the mental processes subcategory of the abstract ideas ineligibility, the MPEP does not assert that data manipulation or reorganization without mathematics falls under a mental process, and the only reference to manipulation of computer data structures is an example of what does not recite a mental process, see MPEP 2106.04(a)(2)(III)(A).
It seems to Examiner that if reorganization using math is a fundamental act, then reorganization without even needing math would be even more fundamental. But recent guidance (see the August 4, 2025 Memorandum “Reminders on evaluating subject matter eligibility claims under 35 USC 101”) cautions that “A rejection should not be made simply because an examiner is uncertain as to the claim’s eligibility. In order to make a [101 rejection], unpatentability must be established by a preponderance of the evidence.” Examiner notes the concern for the record and makes no rejection.
No 112 rejections are appropriate. The sole remaining issue, as alluded to above, is a Double Patenting rejection, as the claims are broader versions of the parent patent. All claims are rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P CELANI whose telephone number is (571)272-1205. The examiner can normally be reached on M-F 9-5.
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/NICHOLAS P CELANI/Examiner, Art Unit 2449
1 Examiner notes that Park does not appear to be appropriate prior art. Park published in May 2017, but the instant family traces back to August 2016, so the publication is not prior art under 102(a)(1). Park was effectively filed in November 2015, and was therefore prior under 102(a)(2), but is commonly owned by Comcast and therefore falls under the 102(b)(2)(c) exception. This issue was never litigated in the ‘438 prosecution, but appears to be another reason to support the prior nonobviousness holding.
Prosecution Insights