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 .
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.
Terminal Disclaimer
The terminal disclaimer filed on 04/13/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,231,707 has been reviewed and is NOT accepted, because a wrong form is used. Please use PTO/AIA /26 form and resubmit the terminal disclaimer (No new fee required).
Response to Arguments
Claims 1-9 had been canceled previously.
Claims 10-21 are pending.
The Double Patenting is maintained due to the submitted terminal disclaimer has been not approved.
Applicant’s arguments in the Remarks filed on 04/13/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 10-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,231,707. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 10, the instant application claim 1 and the US patent claim 1 are both drawn to the same invention.
The claims differ in scope since the instant application claim 10 is broader in every aspect than the patent claim 1 and is therefore an obvious variant thereof.
Claim 10 of the instant application is anticipated by the patent claim 1 in that claim 1 of the patent contains all the limitations of claim 10 of the instant application. Claim 10 of the instant application therefore is not patently distinct from the earlier patent claim and as such is unpatentable for obvious-type double patenting.
Claims 11-15 correspond to the patent claim 1.
Claims 16-21 correspond to the patent claim 4.
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.
Claims 10-21 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 10 and 16 recite the limitation of "the same…". There is insufficient antecedent basis for this limitation in the claims.
Other dependent claims are rejected the same.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-12 and 17-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this case, the claims 11-12 and claims 17-18 fail to further limit the subject matter of the claim 10 and claim 16 upon which they depend respectively. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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 10-21 are rejected under 35 U.S.C. 103 as being unpatentable over Anerella et al (US 2022/0383394) in view of Singh et al (US 10057651).
Regarding claim 10, Anerella discloses a terminal, comprising:
one or more processors; and memory storing one or more computer programs configured to be executed by the one or more processors (Figures 8-9),
the one or more computer programs including instructions for:
displaying a selection screen on a display, the selection screen including at least one image representing a respective edited video and a plurality of icons representing two or more different selling item introduced in the same respective edited video displayed in an associated manner (Figures 4B-4C and ¶ [0059]-[0068] for generating product broadcast files by editing a broadcast stream to be presented as links of edited video reviews; and Figure 5A and 7B and ¶ [0082] and ¶ [0089] for displaying a live broadcast focus presenter selection GUI screen on a display of client-side device, the selection screen including at least one image representing a live or edited video review and a product tile carousel including tiles for selling products preselected to include in the live or edited video review displayed in an associated manner); and
sending, via a network and to a server, a viewing request including information identifying the edited video selected by a user on the selection screen (¶ [0074] and ¶ [0077]-[0081]).
Anerella is silent about displaying on a selection screen a plurality of images each representing a respective edited video.
Singh discloses a video clip service obtains and stores a plurality of quality video clips across a number of broadcast media streams, so that a user can review and edit them at a later point (Col 8 lines 31-43). An advertiser or a user executes a video clip application on a device to view an interface for viewing a list of video clips and associated relevant data about the video clips to select, download and edit the video clips as desired (Col 14 lines 10-28 and Col 16 lines 18-55).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Anerella system with the teaching of Singh about displaying a plurality of edited video clips and their relevant data in an associated manner, so to enhance user viewing and convenience experience by enabling a display of not only one but a list of edited video clip to be selected and edited as desired.
Regarding claim 11, Anerella in view of Singh discloses the terminal as discussed in the rejection of claim 10. The combined system further discloses displaying the image and the icon, both of which are associated with the same edited video, in an associated manner (Anerella’s Figures 5A, 6 and 7A-7C; and Singh’s Figure 3).
Regarding claim 12, Anerella in view of Singh discloses the terminal as discussed in the rejection of claim 10. The combined system further discloses displaying the image and two or more icons, all of which are associated with the same edited video, in an associated manner (Anerella’s Figures 5A and 7B-7D; Singh’s Figure 3).
Regarding claim 13, Anerella in view of Singh discloses the terminal as discussed in the rejection of claim 10. The combined system further discloses in response to sending the viewing request, receiving, via the network and from the server, data of the edited video selected by the user on the selection screen; and displaying a playback screen on the display, the playback screen including a region to display the edited video obtained by reproducing the received data (taught by Anerella; Figure 6; ¶ [0074] and ¶ [0077]-[0081]; taught by Singh; Col 14 lines 10-28 and Col 16 lines 18-55).
Regarding claim 14, Anerella in view of Singh discloses the terminal as discussed in the rejection of claim 13. The combined system further discloses wherein the playback screen further includes an icon for a selling item associated with the edited video displayed in the region (Anerella’s Figures 6 and 7A).
Regarding claim 15, Anerella in view of Singh discloses the terminal as discussed in the rejection of claim 10. The combined system further discloses wherein the edited video is generated based on live-stream in which the respective selling item is introduced (taught by Anerella; Figures 4B-4C and ¶ [0059]-[0068]).
Regarding claims 16-21, all limitations of the claims 16-21 are analyzed and rejected corresponding to claims 10-15 respectively.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIGI L DUBASKY whose telephone number is (571)270-5686. The examiner can normally be reached M-F 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/GIGI L DUBASKY/Primary Examiner, Art Unit 2421
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