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 . This Office action is based on the communications filed April 30, 2025. Claims 1 – 20 are currently pending and considered below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 29, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,210,797 B2 in view of Zurek et al. (US 2018/0004372 A1), hereinafter Zurek. While obvious variations in wording are present 1 – 20 of U.S. Patent No. 12,210,797 B2 anticipate all of the limitations required of claims 1 – 20 of the instant application, respectively, except for the limitations to determine a source playback device from among the two or more playback devices based on the detected presence detection audio signals; transition a playback session from the determined source playback device to the portable playback device, wherein the playback session involves playback of particular audio content; and after the playback session is transitioned, play back the particular audio content in the playback session via the at least one audio transducer. However, Zurek discloses in a similar invention where a “method performed by a portable communication device includes determining a list of at least one target device in proximity to the portable communication device. The method further includes receiving a set of non-tactile user commands that indicates selected content and a selected set of target devices on the list and controlling sharing of the selected content between the portable communication device and the selected set of target devices,” Abstract. Zurek further discloses to determine a source playback device from among the two or more playback devices based on the detected presence detection audio signals; transition a playback session from the determined source playback device to the portable playback device, wherein the playback session involves playback of particular audio content; and after the playback session is transitioned, play back the particular audio content in the playback session via the at least one audio transducer (see at least, “FIG. 9 illustrates an embodiment wherein controlling the playing of the selected content between the portable device 102 and the selected set of target devices includes the portable device 102 directing a server to send to the portable device 102 the selected content, which is also accessible to a first target device of the selected set of target devices, for playing on the portable device 102. For example, the user 106 is in her office watching content streaming 910 to a laptop 902. The user 106 wants to leave the office but continue the streaming the content, but to her portable device 102. FIG. 9, thereby, shows a message sequence diagram 900 illustrating example signaling between the portable device 102 and the selected target laptop 902 for controlling the playing of the selected content between the portable device 102 and the target laptop 902. The portable device 102 receives 912 a non-tactile user command from the user 106 indicating the selected target laptop 902 and the selected video streaming on the laptop 902 from a server 906. The portable device 102 and the selected target laptop 902 exchange signaling 904 to establish a direct wireless link and for the portable device 102 to obtain, from the laptop 902, a link or other identifier for the video stream and an address or other identifier for the server 906. The particular signaling depends on the protocol used to establish the direct link and to exchange information using the link. Once the link is established, the portable device 102 requests 914 and receives 916 the selected video stream, which the portable device 102 plays 918. Video streaming can be performed using any suitable protocol including, but not limited to, MP3, MP4, H.264, HEVC, WebM, etc. for audio and video stream encoding and decoding, and RTSP, RTP, RTCP, etc., for streaming the content over a network,” Zurek [0081] – [0082]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the aforementioned features of Zurek in the invention of U.S. Patent No. 12,210,797 B2 thereby allowing for transition of the playback session from the portable playback device to the determined target playback device or from the determined source playback device to the portable playback device as desired by the user given their current situation.
Claim Rejections - 35 USC § 112
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.
Claim 1 – 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 1 – 18 recites the limitation "the portable playback device" in line 10. There is insufficient antecedent basis for this limitation in the claim. Claims 2 – 18 are rejected due to dependency. For example, claim 2 refers back to “The portable playback device of claim1”.
Appropriate correction and/or clarification is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH SAUNDERS whose telephone number is (571)270-1063. The examiner can normally be reached Monday-Thursday, 9:00 a.m. - 4 p.m., EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn R Edwards can be reached at (571)270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH SAUNDERS JR/Primary Examiner, Art Unit 2692
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