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 action is in response to the communication filed on April 30, 2025.
Claims 53-72 are examined and are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 30, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 63 is objected to because of the following informalities: claim 63 depends on claim 52 which is a canceled claim. Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 53-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,235,908 B2 and claim 1-20 of U.S. Patent No. 10,909,191 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application 19/026,176 and the patent 12,235,908 and 10,909,191 all are directed to searching or querying supplemental content item to remote database related to electronic media such an eBook. The current application just omitted some limitations from the patented claims. Such omitting does not change the scope the invention and can perform same functionality. Therefore, the current application is not patentable over the patent 12,235,908 and 10,909,191.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
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 53-56, 59-62, 64-67 and 70-72 are rejected under 35 U.S.C. 103 as being unpatentable over Snodgrass et al (US 8,478,662 B1), in view of Myslinski (US 2013/0159127 A1).
As per claim 1, Snodgrass discloses:
- a method comprising (a method comprising, Fig. 9, column 21, line 35-37, column 22, line 25-27),
- displaying, on a user device, text associated with a content item (text associated with an eBook displayed on a user device with content items, column 2, line 60-67, Fig. 5, item 502, Fig. 6, item 602, column 16, line 51-65),
- receiving, via a user interface of the user device, a selection of a portion of the text (user selects a portion of the text in the eBook, column 2, line 10-20, Fig. 2, item 204-208, column 8, line 1-15),
- retrieving parental control data associated with the user device (parental control data associated with individuals (i.e., user device), column 4, line 5-20),
- transmitting, from the user device, the query to a remote database, wherein the remote database is searched for the supplemental content item based on the query (query internet (i.e., remote database) for supplemental content item, column 5, line 30-35, column 10, line 15-30, column 19, line 23-35),
- receiving, at the user device, the supplemental content item (receiving supplemental content related to eBook, column 5, line 19-29, column 14, line 25-35, Fig. 9, item 902, column 20, line 45-55),
- generating for display, at the user device, the supplemental content item (displaying supplemental content at user device, Fig. 5, item 502, Fig. 6, item 602, column 17, line 50-60, column 18, line 1-10),
Snodgrass does not explicitly disclose determining to generate a query for a supplemental content item based at least in part on the parental control data and the selection of the portion of the text; and upon a determination, based on the parental control data, that the selection of the portion of the text is suitable for which to generate the query for the supplemental content item: generating the query for the supplemental content item based at least in part on the selection of the portion of the text. However, in the same field of endeavor Myslinski in an analogous art disclose determining to generate a query for a supplemental content item based at least in part on the parental control data and the selection of the portion of the text (supplemental content is generated according to adult content and child content (i.e., parental control), Para [0377], Fig. 54, item 5404, upon a determination, based on the parental control data, that the selection of the portion of the text is suitable for which to generate the query for the supplemental content item: generating the query for the supplemental content item based at least in part on the selection of the portion of the text (determining suitable content specific for mother (i.e., parent) and suitable content specific for child and query for supplemental content for mother and child device respectively, Para [0377], [0378]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the determination of parental control and searching for supplemental content suitable for parent and children device as taught by Myslinski as the means for searching or querying remote database for supplemental content for an eBook in Snodgrass, (Snodgrass, column 2, line 10-20, Myslinski, Para [0377], [0378]). Snodgrass and Myslinski are analogous prior art since they both deal with searching or querying supplemental content related to eBook or online content over the internet. A person of the ordinary skill in the art would have been motivated to make aforementioned modification to enhance an individual’s experience and gain more knowledge about a particular subject when reading an eBook or any other electronic journal. This is because one aspect of Snodgrass invention provides an individual access to alternative storylines, reference materials, annotations, and so on. In this to enhance a reading experience of an individual by providing supplemental content that the individual may find interesting or helpful, as descrived at least in column 2, line 40-50. Determination of parental control data is part of this supplemental content retrieval process. However, Snodgrass doesn’t specify any particular manner in which parent and child device are determined for suitable child and parent specific supplemental content.
This would have lead one of the ordinary skill in the art to seek and recognize parent and child device are for suitable child and parent specific supplemental content as taught by Myslinski.
Myslinski describes importance of content rating according to user interests and needs, as described at least in Para [0181], as desired by Snodgrass.
As per claim 54, rejection of claim 53 is incorporated, and further Myslinski discloses:
- upon a determination, based on the parental control data, that the selection of the portion of the text is not suitable for which to generate the query for the supplemental content item: refraining from generating the query for the supplemental content item based at least in part on the selection of the portion of the text (turning (i.e., refraining from generating the query) content appropriate for children, Para [0377]).
As per claim 55, rejection of claim 53 is incorporated, and further Myslinski discloses:
- wherein the parental control data defines at least one of (a) one or more terms that are suitable for a query for a supplemental content item or (b) one or more terms that are not suitable for a query for a supplemental content item (content appropriate for children (i.e., suitable for query supplemental content), Para [0378]).
As per claim 56, rejection of claim 53 is incorporated, and further Snodgrass discloses:
- wherein the query for the supplemental content item is generated further based on metadata associated with the content item (supplemental content based on metadata associated with the content, column 10, line 55-65, column 11, line 55-65, 12, line 1-10).
As per claim 59, rejection of clam 53 is incorporated, and further Myslinski discloses:
- wherein the supplemental content item comprises a children's version of the content item (locating child-specific content, Fig. 54, item 5404, Para [0378]).
As per claim 60, rejection of claim 53 is incorporated, and further Snodgrass discloses:
- determining a point of progression corresponding to the selection of the portion of the text with respect to the content item (progress corresponding to content in electronic book, column 9, line 60-65),
- wherein the query for the supplemental content item is further based on the point of progression corresponding to the selection of the portion of the text (supplemental content based on progress on the electronic book, column 14, line 1-14). As per claim 61, rejection of claim 53 is incorporated, and further Snodgrass discloses:
- providing, to the use device, a selectable option for sharing the supplemental content item with a second user device (sharing and contributing supplemental content with second individuals (i.e., second user device), column 4, line 30-40, column 5, line 55-65),
- based on receiving, via the user interface, user input selecting the selectable option, generating, for display on the second user device, the supplemental content item (displaying selectable supplemental content to the second individual (i.e., second user device), Abstract, line 7-12, column 5, line 38-45).
As per claim 62, rejection of claim 53 is incorporated, and further Snodgrass discloses:
- wherein the content item comprises an ebook (content in an electronic book, Fig. 1, item 106, Fig. 7, item 702, Abstract, line 1-10).
As per claims 64-67 and 70-72,
Claims 64-67 and 70-72 are system claims corresponding to method claims 53-56 and 59-61 respectively and rejected under the same reason set forth to the rejection of claims 53-56 and 59-61 above.
Claims 57-58 and 68-69 are rejected under 35 U.S.C. 103 as being unpatentable over Snodgrass et al (US 8,478,662 B1), in view of Myslinski (US 2013/0159127 A1), as applied to claim 53 and 64 above, and further in view of McCarty et al (US 8,312,484 B1).
As per claim 57, rejection of claim 56 is incorporated,
Combined method of Snodgrass and Myslinski does not explicitly disclose wherein metadata associated with the content comprises parental guidance data. However, in the same filed of endeavor McCarty in an analogous art disclose wherein metadata associated with the content comprises parental guidance data (metadata with media guidance associated with parental control data, Abstract, line 1-12, Fig. 7, column 16, line 15-55).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Snodgrass, as previously modified with Myslinski, with the teaching of McCarty by modifying Snodgrass such that parental control rating using metadata are implemented for child related content. The motivation for doing so would be detecting children specific content and blocking inappropriate or undesired content from viewing efficiently, (MacCarty, column 1, line 10-15, column 4, line 31-40).
As per claim 58, rejection of claim 57 is incorporated,
Combined method of Snodgrass and Myslinski does not explicitly disclose identifying one or more keywords from the selection of the portion of the text; determining, based on metadata associated with the content item, that the one or more keywords is associated with a particular significance with respect to the parental guidance data; and wherein the query for the supplemental content item is further based on the one or more keywords. However, in the same field of endeavor McCarty in an analogous art disclose identifying one or more keywords from the selection of the portion of the text (identifying certain words (i.e., keyword) from closed captioning, column 2, line 32-40), determining, based on metadata associated with the content item, that the one or more keywords is associated with a particular significance with respect to the parental guidance data (parental control for certain content (i.e., beer, alcohol) significant for not viewing my children device, column 2, line 32-40, 45-60), and wherein the query for the supplemental content item is further based on the one or more keywords (searching (i.e., querying) for additional information for word from closed captioning, column 3, line 30-50, column 6, line 15-20,).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Snodgrass, as previously modified with Myslinski, with the teaching of McCarty by modifying Snodgrass such that parental control rating using metadata are implemented for child related content. The motivation for doing so would be detecting children specific content and blocking inappropriate or undesired content from viewing efficiently, (MacCarty, column 1, line 10-15, column 4, line 31-40).
As per claims 68-69,
Claims 68-69 are system claims corresponding to method claims 57-58 respectively and rejected under the same reason set forth to the rejection of claims 57-58 above.
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over Snodgrass et al (US 8,478,662 B1), in view of Myslinski (US 2013/0159127 A1), as applied to claim 53 above, and further in view of Li et al (US 10,116,719 B1).
As per claim 63, rejection of claim 53 is incorporated,
Combined method of Snodgrass and Myslinski does not explicitly discloses wherein metadata associated with the content item is stored in a manifest file of the ebook. However, in the same field of endeavor Li in an analogous art disclose wherein metadata associated with the content item is stored in a manifest file of the ebook (manifest file of an eBook with metadata, Abstract, line 1-5, Fig. 10, item 1002, 1004).
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Snodgrass, as previously modified with Myslinski, with the teaching of Li by modifying Snodgrass such that metadata in a manifest file is used to locate media content in an electronic media when viewer or user request media content. The motivation for doing so would be detecting desired media content and providing media content quickly and reliably to the users, (Li, column 1, line 15-20).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED R UDDIN whose telephone number is (571)270-3138. The examiner can normally be reached M-F: 9:00 AM-5:00 PM.
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/MOHAMMED R UDDIN/Primary Examiner, Art Unit 2167