DETAILED ACTION
This action is in response to communications filed 1/17/2025:
Claims 1-20 are pending
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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12395695. Although the claims at issue are not identical, they are not patentably distinct from each other. For example:
Regarding claim 1, 12395695 teaches a system to insert supplemental audio content into primary audio content (claim 1, a system to insert supplemental audio content into primary audio content, comprising), comprising a data processing system (claim 1, data processing system) having one or more processors to:
maintain an audio recording of a content publisher in a database, the audio recording having a content spot marker set by the content publisher (claim 1, an audio recording of a content provider, the audio recording having a content spot marker set by the content provider);
select, for a content spot of the audio recording, an audio content item of a content provider from a plurality of audio content items using a content selection parameter (claim 1, identifying, by a data processing system, a content selection parameter based on an identifier associated with the client device; and selecting, by the data processing system, for the content spot of the audio recording, an audio content item from a plurality of audio content items based on the content selection parameter); and
insert the audio content item into the content spot of the audio recording specified by the content spot marker;
generate an action data structure including the audio recording inserted with audio content item at a time defined by the content spot marker (claim 1, insert the audio content item into the content spot of the audio recording specified by the content spot marker); and
transmit the action data structure to a client device to present the audio recording inserted with the audio content item at the content spot (claim 1, transmit the action data structure to the client device to present the audio recording inserted with the audio content item at the content spot).
The remaining independent and/or dependent claims are similarly rejected using one or more claims of the patent (whether alone or in combination).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11949946. Although the claims at issue are not identical, they are not patentably distinct from each other. See above as an example rejection.
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, 8-11, 15-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nieuwenhuys (US20140181243).
Regarding claim 1, Nieuwenhuys teaches a system to insert supplemental audio content into primary audio content (Fig. 5, system to insert ads into content being consumed by a user), comprising a data processing system having one or more processors (¶44, one or more processors) to:
maintain an audio recording of a content publisher in a database, the audio recording having a content spot marker set by the content publisher (¶29, the content providers maintaining a plurality of content to be broadcast to the user and wherein said content also have placeholders that can be used to insert secondary content (i.e. ads to be inserted into the content being consumed by an end user));
select, for a content spot of the audio recording, an audio content item of a content provider from a plurality of audio content items using a content selection parameter (¶40, targeted ads can be sent to the user consuming the device wherein the target ads are derived from tracking information (such as a user’s location)); and
insert the audio content item into the content spot of the audio recording specified by the content spot marker (¶40, transmitting content to the user including secondary/supplemental content that can be derived from a user’s location (i.e. targeted ads));
generate an action data structure including the audio recording inserted with audio content item at a time defined by the content spot marker (Fig. 5, ¶39, ad data can be inserted into the audio content and the modified audio content (504a) can subsequently be transmitted to the end user); and
transmit the action data structure to a client device to present the audio recording inserted with the audio content item at the content spot (¶54, transmitting modified audio content (content modified with the ads) to the user).
Regarding claim 3, Nieuwenhuys teaches comprising a content placement component executed on the data processing system to:
identifying, by the data processing system, the content selection parameter based on an identifier associated with the client device (¶40, geographic data can be associated with the client device); and
selecting, by the data processing system, for the content spot of the audio recording, an audio content item from a plurality of audio content items based on the content selection parameter (¶40, audio content being further selected based on the geographic tracking data).
Regarding claim 4, Nieuwenhuys teaches comprising a conversion detection component executed on the data processing system to:
monitor, subsequent to the transmission of the action data structure, for an interaction event performed via the client device that matches a predefined interaction for the audio content item selected for insertion into the audio recording; and
determine, responsive to detection of the interaction event from the client device that matches the predefined interaction, that the audio content item inserted into the audio record is listened to via the client device (¶36, tracking system capable of determining whether the user viewed the modified audio content (audio content with ad data)).
Regarding claim 5, Nieuwenhuys teaches comprising a conversion detection component executed on the data processing system to:
monitor, subsequent to the transmission of the action data structure, a location within a playback of the audio recording inserted with the audio content item via an application programming interface (API) for an application running on the client device using an identifier, the application to handle the playback of the audio recording (¶34, the transmission of the content may be through a combination of hardware/software interfaces and mediums such as web interface, mobile interface, wire protocol, or shared data store); and
determine, responsive to the location matching a duration of the audio recording detected via the API, that the playback of the audio recording inserted with the audio content item is complete (¶36, the system is capable of determining whether the content was viewed/consumed and thus has the ability to know when the user started and if/when the user finished).
Regarding claim 6, Nieuwenhuys teaches comprising a conversion detection component executed on the data processing system to:
determine an expected number of client devices from which predefined interaction events for one of plurality of audio content items are to be detected subsequent to playback of the audio recording based on a measured number of client devices from which the predefined interaction events are detected; and
determine an expected number of client devices for which the playback of the audio recording inserted with one of the plurality of audio content items is to be completed based on a measured number of client devices from completion of the playback of the audio recording is detected (Fig. 2, ¶36, the tracking system is to be done on a per client system so it’s capable of tracking an N number of client devices to determine whether N number of content were consumed by the N number of devices).
Regarding claim 8, Nieuwenhuys teaches comprising content placement component to:
identify a number of client devices on which an interaction event is detected that matches a predefined interaction for each of the plurality of audio content items inserted into the audio recording at the content spot;
determine a content spot parameter for the content spot defined in the audio recording based on the number of client devices on which the interaction event matches the predefined interaction; and
select the audio content item of the content provider from the plurality of audio content items based on the content spot parameter for the content spot and a content submission parameter for each of the plurality of audio content items (¶5, advertising content providers monitor and track user’s response to ads such as viewing time and click throughs; ¶36, tracking system can track exposure and effectiveness of the ads).
Regarding claim 9, Nieuwenhuys teaches comprising a content placement component to:
identify a number of client devices for which playback of the audio recording inserted with one of the plurality of audio content items is completed (Fig. 2, ¶36, the tracking system is to be done on a per client system so it’s capable of tracking an N number of client devices to determine whether N number of content were consumed by the N number of devices);
determine a content spot parameter for the content spot defined in the audio recording based on the number of client devices for which the playback is completed; and
select the audio content item of the content provider from the plurality of audio content items based on the content spot parameter for the content spot and a content submission parameter for each of the plurality of audio content items (¶5, advertising content providers monitor and track user’s response to ads such as viewing time and click throughs; ¶36, tracking system can track exposure and effectiveness of the ads).
Regarding claim 10, Nieuwenhuys teaches comprising a content placement component to:
Identify a plurality of content selection parameters including at least one of a device identifier, a cookie identifier associated with a session of the client device, an account identifier used to authenticate an application executing on the client device to playback to the audio recording, and a trait characteristic associated with the account identifier; and
select the audio content item from the plurality of audio content items using the plurality of content selection parameters (¶33, a user’s particular use of the stream can be assessed to further filter specific ads; ¶40, device identifying parameters such as geographic location can be used to direct ads for the user).
Regarding claim 11, Nieuwenhuys teaches comprising a content placement component to identify the identifier associated with the client device via an application programming interface (API) with an application running on the client device (¶24, audio content can be streamed through an application designed by a third-party).
Regarding claim 15, it is rejected similarly as claim 1. The method can be found in Nieuwenhuys (abstract, method).
Regarding claim 16, Nieuwenhuys teaches further comprising:
receiving, from a client device, a request for an audio recording of a content provider, the audio recording having a content spot marker set by the content provider, the content spot marker specifying a content spot defining a time within the audio recording (¶30-31, secondary content can be inserted into the digital content wherein the secondary content is inserted at identified placeholders); and
identifying, by the data processing system, a content selection parameter based on an identifier associated with the client device (¶40, targeted ads can be sent to the user device based on a detected geographical location of the user).
Regarding claim 17, it is rejected similarly as claim 4. The method can be found in Nieuwenhuys (abstract, method).
Regarding claim 18, it is rejected similarly as claim 5. The method can be found in Nieuwenhuys (abstract, method).
Regarding claim 20, it is rejected similarly as claim 8. The method can be found in Nieuwenhuys (abstract, method).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nieuwenhuys (US20140181243) in view of Saito et al (US20200168222, hereinafter “Saito”).
Regarding claim 2, Nieuwenhuys fails to explicitly teach comprising a natural language processor component executed on the data processing system to receive, from a client device, a request for an audio recording of a content provider, the audio recording having a content spot marker set by the content provider, the content spot marker specifying a content spot defining a time within the audio recording.
Saito teaches comprising a natural language processor component executed on the data processing system to receive, from a client device, a request for an audio recording of a content provider, the audio recording having a content spot marker set by the content provider, the content spot marker specifying a content spot defining a time within the audio recording (¶39-40, Fig. 10, a user may ask a question using natural language and the response can be an audio recording answer to the user’s question – the audio content comprising an ad that serves as both an answer to the user’s question and a content item with a spot for an ad).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the technique of speech-based queries/natural language as an input (as taught by Saito) to the audio content system (as taught by Nieuwenhuys). The rationale to do so is to apply a known technique to a known device ready for improvement to yield the predictable result of improving a user’s convenience and experience while interacting with the content system (Saito, ¶134).
Regarding claim 12, Nieuwenhuys in view of Saito teaches comprising:
a natural language processor component to receive audio data packet including the identifier associated with the client device, the identifier used to authenticate the client device to retrieve the audio recording; and
a content placement component to parse the audio data packet to identify an identifier as the content selection parameter (Saito, ¶44-45, a user can use natural language query to retrieve an audio packet and the supplemental audio (ad) can be placed into the response to the query).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nieuwenhuys (US20140181243) in view of Rajaram (US20070078709).
Regarding claim 13, Nieuwenhuys fails to explicitly teach comprising a record indexer component to maintain, on a database, the audio recording of the content provider corresponding to at least one audio file to be downloaded on the client device for presentation.
Rajaram teaches comprising a record indexer component to maintain, on a database, the audio recording of the content provider corresponding to at least one audio file to be downloaded on the client device for presentation (¶44, 93, a record indexer (or similar) would be commonly used (just like in the case of index of web pages, see ¶52) to identify a specific content item among a plurality of content items and thus allows the user to peruse through the catalog via content name/title and once the item has been identified, it can be downloaded and consumed at the desired time).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the technique of indexing (as taught by Rajaram) to the audio content system (as taught by Nieuwenhuys). The rationale to do so is to apply a known technique to a known device ready for improvement to yield the predictable result of providing relevant ads based on one or more identifiers that can be associated with a content item that further allows one or more users an easier time finding related content items (Rajaram, ¶71).
Regarding claim 14, Nieuwenhuys in view of Rajaram teaches comprising an action handler component to transmit the action data structure to load the audio recording inserted with the audio content item at the content spot onto the client device without streaming (Rajaram, ¶93-94, downloaded items can also contain relevant ads).
Allowable Subject Matter
Claims 7 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to PTO-892, Notice of References Cited for a listing of analogous art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QIN ZHU whose telephone number is (571)270-1304. The examiner can normally be reached Monday-Thursday 6AM-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen can be reached on 571-272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QIN ZHU/Primary Examiner, Art Unit 2691
