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.
This is a Final Action responsive to communications: Applicant’s Response filed on 12/29/2025. Applicant’s Response includes an Amendment to the Specification, an Amendment to the Claims, Remarks, and an Information Disclosure Statement. Applicant’s Response has been entered and made of record.
In light of the Amendment to the Claims, claims 23-38 have been canceled and claims 39-59 are newly added. Therefore, claims 39-59 are currently pending in the application. Claims 39 and 50 are independent claims.
The objection to claims 23-38 (see: Non-Final Action, p. 5) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 23-38 under 35 U.S.C. 112(a) (see: Non-Final Action, pp. 6-9) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 23-38 under 35 U.S.C. 112(b) (see: Non-Final Action, pp. 9-11) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 23-38 under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter (see: Non-Final Action, pp. 11-17) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 23-38 under 35 U.S.C. 251 as being based upon new matter added to the patent (see: Non-Final Action, pp. 19-22) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 23-38 under 35 U.S.C. 102(a)(1) as being anticipated by Bishop (US Patent Application Publication No. 2011/0218656, published 09/08/2011) (see: Non-Final Action, pp. 22-28) has been withdrawn as necessitated by the Amendment to the Claims.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).
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 12/29/2025 has been considered by the Examiner.
Per Applicant’s request (Remarks, p. 12), the Examiner acknowledges that the information considered by the Office in parent application 17/175,344 (now U.S. Patent No. RE50,400) has also been considered in the instant reissue application (see: MPEP § 609.02(II)(A)(2)).
Specification
The Amendment to the Specification is objected to because it does not fully comply with 37 CFR 1.177(a), which at least requires “If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date” (emphasis added). The Amendment to the Specification attempts to add its statement after col. 1, line 13 of the Amidei ‘981 patent which fails to meet the “first sentence” requirement set forth in 37 CFR 1.177(a).
Appropriate correction is required.
While not a specific requirement, the Applicant is encouraged to update any reference to reissue application 17/175,344 in a future Amendment to the Specification to further indicate that it has published as U.S. Patent No. RE50,400. For example, “This application is a continuation reissue of Application No. 17/175,344, now U.S. Patent No. RE50,400, which is an application for reissue of U.S. Patent No. 10,205,981.”
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 Final Action.
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 § 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.
Claims 39-59 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 pre-AIA the applicant regards as the invention.
Claim 39 recites the limitation “a first playback device” in line 4 of the claim. There is insufficient/unclear antecedent basis for this limitation in the claim. That is to say, lines 1-2 already state “a first playback device” and thus the Examiner believes “a first playback device” in line 4 should be changed to “the first playback device.”
Similarly, claim 39 also recites the limitations “a plurality of playback devices” in line 11 and “a defined network” in line 12 of the claim. There is insufficient/unclear antecedent basis for these limitations in the claim. That is to say, line 2 already states “a plurality of playback devices” and “a defined network”, and thus the Examiner believes “a plurality of playback devices” in line 11 should be changed to “the plurality of playback devices” and “a defined network” in line 12 should be changed to “the defined network.”
Claim 39 also recites the limitation “the presentation time information” in line 23 of the claim. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “presentation time information” is being broadcast by the first playback device. The Examiner suggests changing “the presentation time information” in line 23 to “the generated presentation time information.” For example, this would provide necessary clarity in view of the disclosure of the Amidei ‘981 patent and would also be in harmony with substantially similar independent claim 23 of U.S. Patent No. RE50,400.
Dependent claims 40-49 are similarly rejected at least via their dependency from independent claim 39.
While not rising to the level of an indefiniteness rejection, the Examiner notes that lines 14-15 of the claim appear to include redundant limitations. Said lines at least state “receiving, by the first playback device, a stream of the encoded media in the first playback device and presentation time information…”. Here, the second “in the first playback device” seems unnecessary (i.e., not further limiting) because the first “by the first playback device” already requires that the first playback device receive a stream of the encoded media and the presentation time information. Again, similar to substantially similar independent claim 23 of U.S. Patent No. RE50,400, the Examiner believes that lines 14-15 of the claim read more clearly as “receiving, by the first playback device, a stream of the encoded media and presentation time information…”.
Claim 41 recites the limitation “the playback information” in line 5. There is insufficient antecedent basis for this limitation in the claim. Similar to substantially similar dependent claim 52 and substantially similar dependent claim 25 of U.S. Patent No. RE50,400, the Examiner suggests amending “the playback information” to “the received updated presentation time information.”
Claim 42 recites the limitation “the updated presentation time information” in line 7. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “updated presentation time information” is being broadcast by the first playback device. The Examiner suggests amending “the updated presentation time information” to “the generated updated presentation time information.”
Claim 43 recites the limitation “the updated presentation time information” in line 1. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “updated presentation time information” the limitation is referencing. The Examiner suggests amending “the updated presentation time information” to “the generated updated presentation time information.” Additionally, claim 43 also recites the limitation “the plurality of playback frames” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 44 recites the limitation “the presentation time information” in line 1. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “presentation time information” the limitation is referencing.
Claim 46 recites the limitation “the start time” in line 1. There is insufficient/unclear antecedent basis for this limitation in the claim. The Examiner notes that the proper basis for “the start time” appears to be “a stream start time” found in corresponding independent claim 39. The use of a confusing variety of terms for the same thing should not be permitted (see: MPEP § 608.01(o)).
Claim 49 recites the limitation “where the network time provider is a local time server” in line 3. There is insufficient/unclear antecedent basis for this limitation in the claim. That is to say, dependent claim 48 (from which claim 49 directly depends) already states “wherein the network time provider is a local time server.” Thus, it is unclear if the same limitation in dependent claim 49 is supposed to be a new limitation that somehow further limits the network time provider or if said limitation is merely an unintentional redundancy.
Claim 50 recites the limitations “a provided start time” in lines 1-2 of the claim and “a stream start time” in lines 11-12 of the claim. There is insufficient/unclear antecedent basis for these limitations in the claim. It is unclear if the “a provided start time” and the “a stream start time” are supposed to be separate and distinct times or if they are referring to the same time limitation. The Examiner believes that they refer to the same time limitation and thus, for consistency with substantially similar independent claim 39, the “a provided start time” should be changed to “a provided stream start time” or “a stream start time” and the corresponding “a stream start time” should be changed to “the stream start time.” The use of a confusing variety of terms for the same thing should not be permitted (see: MPEP § 608.01(o)).
Claim 50 also recites the limitation “the presentation time information” in line 22 of the claim. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “presentation time information” is being broadcast by the playback device. The Examiner suggests changing “the presentation time information” in line 22 to “the generated presentation time information.” For example, this would provide necessary clarity in view of the disclosure of the Amidei ‘981 patent and would also be in harmony with substantially similar independent claim 35 of U.S. Patent No. RE50,400.
Dependent claims 51-59 are similarly rejected at least via their dependency from independent claim 50.
Claim 52 recites the limitation “the presentation time information” in line 6. There is insufficient/unclear antecedent basis for this limitation in the claim. Similar to substantially similar dependent claim 37 of U.S. Patent No. RE50,400, the Examiner suggests amending “the presentation time information” to “the received updated presentation time information.”
Claim 53 recites the limitation “the updated presentation time information” in line 8. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “updated presentation time information” is being broadcast by the playback device. The Examiner suggests amending “the updated presentation time information” to “the generated updated presentation time information.”
Claim 54 recites the limitation “the updated presentation time information” in lines 1-2. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “updated presentation time information” the limitation is referencing. The Examiner suggests amending “the updated presentation time information” to “the generated updated presentation time information.” Additionally, claim 54 also recites the limitation “the plurality of playback frames” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 55 recites the limitation “the presentation time information” in line 1. There is insufficient/unclear antecedent basis for this limitation in the claim. It is unclear which “presentation time information” the limitation is referencing.
Claim 57 recites the limitation the “start time” in line 1. There is insufficient/unclear antecedent basis for this limitation in the claim. The Examiner notes that the proper basis for “the start time” appears to be “a stream start time” found in corresponding independent claim 50. The use of a confusing variety of terms for the same thing should not be permitted (see: MPEP § 608.01(o)).
Claim 59 recites the limitation “where the network time provider is a local time server” in lines 5-6. There is insufficient/unclear antecedent basis for this limitation in the claim. That is to say, dependent claim 59 already earlier states the limitation “wherein the network time provider is a local time server” in lines 1-2. Thus, it is unclear if the same later limitation in dependent claim 59 is supposed to be a new limitation that somehow further limits the network time provider or if said limitation is merely an unintentional redundancy.
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.”
The Examiner notes that Applicant (Remarks, p. 12) indicates that “an update reissue Declaration” was submitted with the Response. The Examiner has gone through all of Applicant’s submissions with the 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 error described by Applicant (Remarks, p. 12) appears to be identical to the error stated and corrected in parent reissue application 17/175,344 (now U.S. Patent No. RE50,400).
PNG
media_image1.png
246
861
media_image1.png
Greyscale
(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.
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.
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/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