DETAILED ACTION
1. The present application is being examined under the pre-AIA first to invent provisions.
2. 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.
3. Claim 1, filed 12/30/2024, are pending in this office action.
Priority
4. Applicant’s claim for the benefit of a prior-filed application 18/299,143 filed 4/12/2023, now US Patent 12,222,996, which further claims benefit from prior-filed application 16/234,125, filed 12/27/2018, now US Patent 11,657,103, which claims benefit of a prior-filed application 14/452,091, filed 8/5/2014, now US Patent 10,210,254, which further claims benefit from prior-filed application 13/604,219, filed 9/5/2012, now US Patent 8,819,087, which further claims benefit from prior-filed application 11/816,085, filed 5/23/2008, under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
5. An initialed and dated copy of Applicant's IDS form 1449, filed 12/30/2024, is attached to the instant Office action.
Double Patenting
6. 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 1.321I 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.
7. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,819,087. Although the claims at issue are not identical, they are not patentably distinct from each other as shown below, since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
U.S. Patent No. 8,819,087
Instant Application
Claim 1,
A system for assisting in the production of a media work from a plurality of content recordings, the system comprising:
an intake unit having a processor programmed to simultaneously process the content recordings to produce digital recordings that including a plurality of time stamps, and receive transcriber input information including a transcribing party;
a file-storage server accessible over a communications network for storing digital recordings processed by the intake unit, the file-storage server storing the digital recordings as files that are accessible over the communications network by reference to corresponding network identifiers,
the intake unit being programmed to generate, upon completion of the storage of at least one of the digital recordings in the file-storage server, a notification of the presence of the digital recording in the file-storage server and a transcribing request based on the digital recording, and transmit the transcribing request to the transcribing party, the transcribing request includes at least one of file-storage location of the recording's digital version, an indication of whether transcription is to be done, and the identity of the party to perform the transcription;
a media-library server comprising: a database of library records of the content recordings, each library record having a field to store the network address of the digital recording and a plurality of information fields that store respective pieces of information about the digital recording including at least one of the transcribing request and the transcribing party;
and a set of instructions that generate web page representations of the library records that are accessible over the communications network; and a sub-clip processor configured to: divide the digital recording into a plurality of sub-clips based on the time stamps and the transcriber input information.
Claim 1,
A system for assisting one or more users in the production of a media work from a plurality of recordings, the system comprising:
a file-storage server accessible over a communications network;
an intake unit that receives an electrical signal representative of a recording and an identifier for the recording, the intake unit storing a digital version of the recording as a file in the file-storage server,
the file being accessible over the communications network by reference to a corresponding network identifier,
the intake unit providing a notification of the presence of the digital version, the notification including at least the corresponding identifier, network identifier of the digital version, or both;
a media-library server that maintains a database of digital versions of the recordings and provides a record thereof in a form that can be viewed by a user, the media-library server receiving the notification generated by the intake of a new digital version and adding a record of the digital version to its database in response to the notification.
Claim Rejections - 35 USC § 102
8. The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
9. Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Whitley et al. (US Publication 2001/0034734 A1, cited in IDS form filed 12/30/2024)
As per claim 1, Whitley teaches A system for assisting one or more users in the production of a media work from a plurality of recordings, the system comprising: (see Abstract)
a file-storage server accessible over a communications network; (Figure 1 reference 170, paragraphs 0045, 0047, 0048, 0058, multimedia server provides access to a video database, organized and referenced by identifiers)
an intake unit that receives an electrical signal representative of a recording and an identifier for the recording, the intake unit storing a digital version of the recording as a file in the file-storage server, the file being accessible over the communications network by reference to a corresponding network identifier, the intake unit providing a notification of the presence of the digital version, the notification including at least the corresponding identifier, network identifier of the digital version, or both; (paragraphs 0050, 0058, 0060, 0062, 0064, 0071, 0072, a digital version of a video is encoded and stored and indexed in a catalog for access after encoding, paragraph 0051, 0057, 0075, subscribers, or users, are notified when relevant video clips are stored)
a media-library server that maintains a database of digital versions of the recordings and provides a record thereof in a form that can be viewed by a user, the media-library server receiving the notification generated by the intake of a new digital version and adding a record of the digital version to its database in response to the notification. (Figure 1 reference 140, 180, paragraphs 0045, 0048, 0064, 0067, a web server works with a multimedia server to provide access to stored videos through a web portal)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lowe (US Publication 2005/0185918 A1)
Terrell (US Publication 2005/0044105 A1)
Lowe (US Publication 2004/0107169 A1)
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/DANGELINO N GORTAYO/Primary Examiner, Art Unit 2168