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 .
DETAILED ACTION
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
A Request for Continued Examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s RCE Response filed on 05/04/2026 has been entered and made of record.
This is a Non-Final Action responsive to Applicant’s RCE Response. Applicant’s RCE Response includes an Amendment to the Specification, an Amendment to the Claims, a Terminal Disclaimer, and Remarks.
In light of the Amendment to the Claims, claims 39, 41-44, 46, 49, 50, 52-55, 57, and 59 have been amended. Therefore, claims 39-59 are currently pending in the application. Claims 39 and 50 are independent claims.
The objection to the specification (see: Final Action, pp. 4-5) has been withdrawn as necessitated by the Amendment to the Specification.
The rejection of claims 39-59 under 35 U.S.C. 112(b) (see: Final Action, pp. 7-13) has been withdrawn as necessitated by the Amendment to the Claims.
Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,205,981 B2 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Should Applicant wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application (see: MPEP § 1406).
Terminal Disclaimer
The Terminal Disclaimer filed on 05/04/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of RE50,400 has been reviewed and is NOT accepted.
The Terminal Disclaimer does not comply with 37 CFR 1.321 because:
The registration number (i.e., 69,375) for the signing attorney of record (i.e., David J. Bailey) is incorrect. The proper registration number for David J. Bailey appears to be 59,632. Please correct and resubmit the Terminal Disclaimer. No new fee is required.
Because the Terminal Disclaimer is not accepted, the nonstatutory double patenting rejection (see below) has been maintained.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.02.
The Examiner notes that where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent is generally not adequate for the continuation reissue application. In the instant case, the consent of assignee filed on 01/17/2025 appears to be a copy from parent reissue application 17/175,344 (now U.S. Patent No. RE50,400) and therefore said consent of assignee is ineffective (see: MPEP 1410.02(I) & 1451(II)(A)) because the instant application does not appear to correct an adequate error for which consent was made.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Non-Final Action.
The Examiner notes that Applicant (Remarks, p. 11) “submits herewith a proper consent of the assignee in compliance with 37 CFR 1.172 and 3.73.” The Examiner has gone through all of Applicant’s submissions with the RCE Response and was unable to locate the newly filed consent of the assignee indicated by Applicant. Therefore, the objection under 37 CFR 1.172(a) has been maintained.
Claim Objections
Claims 39-59 are objected to because of the following informalities:
The Amendment to the Claims proposes amendments that do not comply with 37 CFR 1.173, which sets forth the manner of making amendments in reissue applications. Specifically, claims 39-59 do not comply with 1.173(d)(2) which requires “matter to be added by reissue must be underlined” and 1.173(g) which requires “All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.” Claims 39-59 are new claims relative to the Amidei ‘981 patent and as such should be completely underlined.
For example, note:
MPEP 1453(II)(B) - “For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented completely underlined”;
MPEP 1453(IV) - “all underlining and bracketing in the reissue application should be made relative to the text of the patent…All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the reissue application, and not relative to the prior amendment”; and
MPEP 1453(V)(D) - “An amendment of a ‘new claim’ (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended ‘new claim’ containing the amendatory material, and completely underlining the claim, including the claim number…Although 37 CFR 1.173(b)(2) does not require using the status identifier ‘new’, its use is recommended so that examiners can easily identify the presentation of new claim(s). The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment.” (underline emphasis added)
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 § 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 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.
Representative independent claims 39 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over independent claims 23 and 35, respectively, of U.S. Patent No. RE50,400. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 23 and 35 of U.S. Patent No. RE50,400 contain every element of claims 39 and 50 of the instant application and thus anticipate the claims of the instant application. Claims 39 and 50 of the instant application therefore are not patentably distinct from the patent claims and as such are unpatentable over obvious-type double patenting. An application claim is not patentably distinct from a patent claim if the application claim is anticipated by the patent claim.
Claim Rejections - 35 USC § 251
The Reissue Declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
First, for an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the Reissue Declaration must properly identify an error in a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error, it is sufficient that the Reissue Declaration identify the claim being broadened and identify a single word, phrase, or expression in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. In the instant case, the Reissue Declaration is defective because it does not identify any claim language and does not properly specify how the error renders the original patent wholly or partly inoperative or invalid (see: MPEP 1414(II)(B)). At best, the Reissue Declaration broadly indicates that original claims 1 and/or 13 are too limiting (see: MPEP 1414(III)(C): “Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error… applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa… the error has not been identified”).
Second, the Reissue Declaration appears to be a copy from parent reissue application 17/175,344 (now U.S. Patent No. RE50,400). As noted in MPEP 1414(II)(D)(1), “Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error” (e.g., see: MPEP 1451(II)).
The Examiner notes that Applicant (Remarks, p. 11) indicates that “an updated reissue Declaration” was submitted with the RCE Response. The Examiner has gone through all of Applicant’s submissions with the RCE Response and was unable to locate a newly filed Reissue Declaration as described by Applicant. Therefore, the rejection under 35 U.S.C. 251 has been maintained.
Further, the Examiner notes that the first error described by Applicant (Remarks, p. 11) appears to be identical to the error stated and corrected in parent reissue application 17/175,344 (now U.S. Patent No. RE50,400).
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(17/175,344 - Update Reissue Declaration filed on 10/21/2022)
A newly filed Reissue Declaration should describe at least one new (unique) error being corrected by the instant reissue application. That is to say, the same error was already corrected in the same way (via deleting the limitation of “adjusting the presentation time information…in the first playback device based upon…the presentation time information generated by the [first] playback device”) in the parent reissue application.
And the second error described by Applicant (Remarks, pp. 11-12) is not an error upon which the instant reissue application can be based. That is to say, a valid error must specifically arise from the Amidei ’981 patent (e.g., see: MPEP 1402 – “A reissue application is filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application which became the patent.”) and not from the prosecution history of an earlier filed reissue application (i.e., 17/175,344). To be clear, Applicant can recover the claimed subject matter of the original Amidei ’981 patent (albeit with the above noted first error properly corrected) because those claims have not yet been surrendered (e.g., see: MPEP 1416, 1450(II), and 1460). However, Applicant must also provide at least one valid new (unique) error as the basis for the instant reissue application.
Applicant is encouraged to contact the Examiner to discuss ways to properly resolve this issue and the thus overcome the corresponding rejection.
Appropriate correction is required.
Claims 39-59 are rejected as being based upon a defective Reissue Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Allowable Subject Matter
Claims 39-59 would be allowable if the rejections under 35 U.S.C. 251 and nonstatutory double patenting set forth in this Non-Final Action are overcome. Additionally, the objection to the application under 37 CFR 1.172(a) and the claim objections must also be resolved.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Please note the relevant cited prior art listed on the accompanying Notice of References Cited (Form PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam L Basehoar whose telephone number is (571)272-4121. The examiner can normally be reached 8:00AM - 4:30PM.
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, Alexander Kosowski can be reached at 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
Conferees:
/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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