DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 2-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 9,591,339. Although the claims at issue are not identical, they are not patentably distinct from each other because the outstanding application is broader in scope and makes no mention of subscriptions.
Application No. 19/019,294 Claim 2
U.S. Patent No. 9,591,339 Claim 1
A method comprising: at an electronic device in communication with one or more input devices and a display:
A non-transitory computer readable storage medium comprising program instructions, wherein when executed by a processor the program instructions are executable to perform a method comprising:
receiving, via the one or more input devices, a first input selecting a first selectable option corresponding to a media series;
receiving, from a television viewer, via a device that is associated with the primary video content provider, a request for access to a television show that includes a plurality of seasons;
in response to detecting the first input, displaying via the display, a landing page corresponding to the media series, wherein:
in response to receiving the request via the device that is associated with the primary video content provider, providing the television viewer with information about a plurality of seasons of the television show for concurrent display in a user interface that provides access to viewing episodes of the television show,
the landing page includes an indication of a first media source corresponding to a media provider of the media series, wherein one or more episodes of the media series are available via the first media source, and the landing page includes a second selectable option, different from the first selectable option, corresponding to a listing of episodes of the media series;
wherein providing the television viewer with information about the plurality of seasons of the television show for concurrent display includes: providing the television viewer with information about a first set of one or more prior seasons of the television show that are accessible via the first subscription with the first video content provider, but are not accessible via the second subscription with the second video content provider;
while displaying the second selectable option, receiving, via the one or more input devices, one or more second inputs, different from the first input, directed toward the second selectable option; and in response to detecting the second input, displaying, via the display: an indication of a second media source, different from the first media source, corresponding to a media provider of a respective episode of the plurality of episodes.
and providing the television viewer with information about a current season of the television show that is accessible via the second subscription with the second video content provider, but is not accessible via the first subscription with the first video content provider.
Claims 3-12 are similarly unpatentable over claims 2-35 of U.S. Patent No. 9,591,339.
Claims 2-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 10,491,932. Although the claims at issue are not identical, they are not patentably distinct from each other.
Application No. 19/019,294 Claim 2
U.S. Patent No. 10,491,932 Claim 1
A method comprising: at an electronic device in communication with one or more input devices and a display:
A method comprising: at an electronic device in communication with a display and one or more input devices:
receiving, via the one or more input devices, a first input selecting a first selectable option corresponding to a media series;
receiving, via the one or more input devices, an input corresponding to a request to view information for a first collection of episodic content;
in response to detecting the first input, displaying via the display, a landing page corresponding to the media series, wherein:
and in response to receiving the input, displaying, on the display, a user interface corresponding to the first collection of episodic content, wherein the user interface comprises:
the landing page includes an indication of a first media source corresponding to a media provider of the media series, wherein one or more episodes of the media series are available via the first media source, and the landing page includes a second selectable option, different from the first selectable option, corresponding to a listing of episodes of the media series;
a plurality of representations corresponding to a plurality of episodes of a first season of the first collection of episodic content, including: a first representation corresponding to a first episode of the first season, the first episode available for viewing on the electronic device via a first media source; and a second representation corresponding to a second episode, different from the first episode, of the first season,
while displaying the second selectable option, receiving, via the one or more input devices, one or more second inputs, different from the first input, directed toward the second selectable option; and in response to detecting the second input, displaying, via the display: an indication of a second media source, different from the first media source, corresponding to a media provider of a respective episode of the plurality of episodes.
he second episode available for viewing on the electronic device via a second media source, different from the first media source.
Claims 3-12 are similarly unpatentable over claims 2-27 of U.S. Patent No. 10,491,932.
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 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.
Claims 2-9 and 11-12 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Garner et al. (2013/0262431) [Garner].
Regarding claims 2, 11, and 12, Garner discloses a method comprising: at an electronic device in communication with one or more input devices and a display (fig. 1):
receiving, via the one or more input devices (fig. 1 input device 170), a first input selecting a first selectable option corresponding to a media series (fig. 5A, paragraph 0054);
in response to detecting the first input, displaying via the display, a landing page corresponding to the media series, wherein: the landing page includes an indication of a first media source corresponding to a media provider of the media series, wherein one or more episodes of the media series are available via the first media source, and the landing page includes a second selectable option, different from the first selectable option, corresponding to a listing of episodes of the media series (paragraphs 0057 and 0067);
while displaying the second selectable option, receiving, via the one or more input devices, one or more second inputs, different from the first input, directed toward the second selectable option; and in response to detecting the second input, displaying, via the display: an indication of a second media source, different from the first media source, corresponding to a media provider of a respective episode of the plurality of episodes (alternate providers or those which require additional input, such as a subscription, figs. 5C-D paragraphs 0056 and 0079).
Regarding claim 3, Garner discloses the method of claim 2, further comprising, in response to detecting the second input, displaying an indication of a third media source, different from the second media source, corresponding to a media provider of a respective episode of the plurality of the episodes (fig. 6, additional content providers requiring subscription, paragraphs 0079 and 0082-0083).
Regarding claim 4, Garner discloses the method of claim 2, wherein a sequence of a user of the electronic device acquiring access to a respective plurality of episodes of the media series is different from a chronological sequence of release dates associated with the respective plurality of episodes (on demand or available content, paragraph 0056).
Regarding claim 5, Garner discloses the method of claim 2, further comprising: displaying, via the display, media content from the media series concurrently while displaying the second selectable option, wherein the media content is being played while being displayed (fig. 13).
Regarding claim 6, Garner discloses the method of claim 2, wherein displaying the listing of episodes includes displaying, via the display, respective air dates corresponding to respective episodes represented in the plurality of episodes (when availability is listed in the future, paragraph 0072).
Regarding claim 7, Garner discloses the method of claim 2, further comprising, in response to detecting the second input, displaying, via the display, a plurality of representations of a plurality of episodes of the media series, wherein the plurality of representations of the plurality of episodes of the media series include respective representations of episodes that are from different seasons of the media series (paragraph 0065).
Regarding claim 8, Garner discloses the method of claim 2, wherein access to a respective episode of the plurality of episodes is provided via the first media source (fig. 1 platform 120).
Regarding claim 9, Garner discloses the method of claim 8, wherein the access to the respective episode of the plurality of episodes is not provided via the second media source (user is not subscribed to the second media source and is prevented from access without a subscription or payment, paragraph 0074).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 10 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Garner.
Regarding claim 10, Garner discloses the method of claim 2, but fails to disclose after receiving the second input, presenting a respective episode via the display, including: in accordance with a determination that a subscription to the second media source is not associated with advertisements, displaying the respective episode without advertisements, and in accordance with a determination that the subscription to the second media source is associated with advertisements, displaying the respective episode including one or more advertisements.
Examiner takes official notice that providing tiered subscription models where one tier provides content ad-free and a second tier provides content with advertisements was notoriously well known in the art at the time of invention.
It would have been obvious at the time of invention to a person of ordinary skill in the art to modify the method of Garner to include after receiving the second input, presenting a respective episode via the display, including: in accordance with a determination that a subscription to the second media source is not associated with advertisements, displaying the respective episode without advertisements, and in accordance with a determination that the subscription to the second media source is associated with advertisements, displaying the respective episode including one or more advertisements. Tier subscription models often provide the flexibility of providing content to users at a lower rate by supplementing income with advertisements while offering an ad-free experience to users who pay a higher rate.
Conclusion
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.
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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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