DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
Claims 1, 3, 4, 6, 9, 12, and 13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 19, and 20 of U.S. Application No. 18/668008.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the examined application claims would have been obvious over the reference claims. Both sets of claims are directed to a method of skipping advertisements, and one of ordinary skill would see the claims in question as obvious variants of each other.
Claim 2 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Soukup et al., US 2008/0155590.
2. The parent claim teaches all limitations except an extended ad version. Soukup teaches a dynamic advertising system wherein a first advertisement corresponds to an extended version of a respective advertisement [Fig. 4B, para. 34].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, providing an extended version to accommodate longer ad breaks and to leverage the preferences of the user by substituting longer versions of ads that match their preferences.
Claim 5 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Barrett et al., US 2009/0133057.
5. The parent claim teaches all limitations except a criteria involving paying a fee. Barrett teaches a system wherein the one or more criteria include a criterion that is not satisfied when a fee is paid associated with forgoing presenting of advertisements [Fig. 4, para. 46].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, allowing the viewer to avoid ads if they wish to pay instead, avoiding frustration while obtaining revenue for the advertiser or provider.
Claim 7 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Braun et al., US 2010/0175079.
7. The parent claim teaches all limitations except an overlay. Braun teaches an ad system including ad parameters that cause the ads to overlay a portion of the display [Fig. 2, para. 8].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, using a display overlay so the viewer can still see the underlying content, thereby avoiding complete interruption and avoiding annoying the viewer.
Claim 8 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Bhat, US 2014/0282692.
8. The parent claim teaches all limitations except ad popularity. Bhat teaches a method wherein an ad is selected based on a popularity of consumption by a plurality of consumers of the advertisement [para. 33].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, selecting substitute or subsequent ads based on popularity in order to increase the likelihood that the current viewer will prefer the ad, thereby improving the conversion rate.
Claim 10 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Malhotra et al., US 2020/0387414.
10. The parent claim teaches all limitations except voice commands. Malhotra teaches an ad system wherein the input includes one or more of a voice command or a gesture detected by an input device [voice command for skipping ad, Fig. 3, paras. 41, 42].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references since voice or gesture can be used without particular input devices and may be useful for disabled viewers.
Claim 11 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application No. 18/668008 in view of Itakura, US 2010/0003007.
11. The parent claim teaches all limitations except owned (stored) content. Itakura teaches the method of claim 1, wherein the media content is part of a collection of content owned by a user of the electronic device [program content and ads are recorded on recording unit 140, i.e. they are possessed and controlled locally or “owned” by the user of the device, Fig. 3, paras. 53, 59, 76, 83, 88, 97-99].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references to apply the techniques to content already stored at the user device, allowing off-line use.
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 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 4, 12, and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura, US 2010/0003007 in view of Rashkovsky et al., US 2007/0162951.
Claims 1, 12, 13. Itakura teaches a method comprising:
a processor and memory and programs stored [Figs. 1-3] to execute:
at an electronic device in communication with a display device and one or more input devices [Figs. 1, 2, paras. 42-45]:
at a first time, displaying, via the display device, media content that is playing [Fig. 1, paras. 38-40],
at a second time, different from the first time, while displaying the media content, and in accordance with a determination that a playback position in the media content corresponds to a respective position associated with a second advertisement, different from the first advertisement [while content is playing, i.e. at a different time, the system determines when the start of a second CM section is reached, e.g. after a previous CM (e.g. CM3 in Fig. 6); Figs. 5, 6, paras. 67, 88]:
in accordance with a determination that the first advertisement was presented based on the user preference, forgoing presenting of the second advertisement [if view counter is 1 (or above some threshold) the CM can be skipped, paras. 12, 13, 105-109]; and
in accordance with a determination that the first advertisement was not presented based on user preference, presenting the second advertisement [if the view counter is zero—i.e., the previous CM was skipped—the following CM (second advertisement) is not skipped but is displayed, Figs. 5, 6, 8, paras. 12, 13, paras. 105-109].
Itakura is silent on displaying a prompt to consume the ad and initiating presentation on that basis. Rashkovsky teaches a system for displaying ads including: in accordance with a determination a configuration of the electronic device associated with advertisement consumption preferences satisfies one or more criteria [ads are selected if they match suitability requirements for ad consumption, Figs. 4, 9, paras. 57, 61, 64], displaying, via the display, a prompt to consume a first advertisement [button 514 or selectable ads 520, Figs. 5a-6, paras. 38-40, 42, 79, 80]
in accordance with a determination that a user preference is to consume the first advertisement, initiating presentation of the first advertisement [ad is displayed on user command, Figs. 4, 5a-6, 9, paras. 79, 80].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, allowing a user to confirm (or reject) ad viewing in order to avoid the ad or view it at a later time. This gives the viewer a sense of control and increases the value of any impressions that result from choosing to view an ad.
3. Rashkovsky teaches the method of claim 1, wherein presenting of the first advertisement begins at a time associated with a respective playback position relative to playback of the media content [ads begin based on scheduled time relative to playback, marker (e.g. watermark) or interruption event, paras. 59, 66, 68, 77, 78].
4. Itakura teaches the method of claim 3, wherein the time associated with the respective playback position precedes a start position of the media content [i.e. playback starts again after time at which ad is inserted, Figs. 4-6, paras. 12, 13, 67, 88, 105-109].
6. The method of claim 1, wherein the one or more criteria include a criterion that is not satisfied when the electronic device has presented one or more respective advertisements before displaying the prompt [if view counter is 1, the condition is not satisfied so the subsequent CM is skipped, paras. 12, 13, 105-109].
9. Itakura teaches the method of claim 1, further comprising:
while presenting the first advertisement, detecting, via the one or more input devices, an input delaying the presenting of the first advertisement; and in response to detecting the input, ceasing the presenting of the first advertisement [ad is skipped (ceased presenting) in response to skip request signal during presentation of ad, Fig. 8, paras. 84, 107, 108, 111].
11. Itakura teaches the method of claim 1, wherein the media content is part of a collection of content owned by a user of the electronic device [program content and ads are recorded on recording unit 140, i.e. they are possessed and controlled locally or “owned” by the user of the device, Fig. 3, paras. 53, 59, 76, 83, 88, 97-99].
Claim 2 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura and Rashkovsky as cited above in view of Soukup et al., US 2008/0155590.
2 (from 1). The above references are silent on an extended ad version. Soukup teaches a dynamic advertising system wherein a first advertisement corresponds to an extended version of a respective advertisement [Fig. 4B, para. 34].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, providing an extended version to accommodate longer ad breaks and to leverage the preferences of the user by substituting longer versions of ads that match their preferences.
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura and Rashkovsky as cited above in view of Barrett et al., US 2009/0133057.
5 (from 1). The above references are silent on a criteria involving paying a fee. Barrett teaches a system wherein the one or more criteria include a criterion that is not satisfied when a fee is paid associated with forgoing presenting of advertisements [Fig. 4, para. 46].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, allowing the viewer to avoid ads if they wish to pay instead, avoiding frustration while obtaining revenue for the advertiser or provider.
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura and Rashkovsky as cited above in view of Braun et al., US 2010/0175079.
7 (from 1). Itakura teaches the method of claim 1, further comprising:
while displaying the media content that is playing:
in accordance with a determination that the first advertisement was presented, forgoing display of an informational advertisement, different from the first advertisement [if view counter is 1 (or above some threshold) the subsequent CM can be skipped, paras. 12, 13, 105-109],
in accordance with a determination that the first advertisement was not presented, displaying, via the display , the informational advertisement [if the view counter is zero—i.e., the previous CM was skipped—the following CM (second advertisement) is not skipped but is displayed, Figs. 5, 6, 8, paras. 12, 13, paras. 105-109].
The above references are silent on an overlay. Braun teaches an ad system including ad parameters that cause the ads to overlay a portion of the display [Fig. 2, para. 8].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, using a display overlay so the viewer can still see the underlying content, thereby avoiding complete interruption and avoiding annoying the viewer.
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura and Rashkovsky as cited above in view of Bhat, US 2014/0282692.
8. The above references are silent on ad popularity. Bhat teaches a method wherein an ad is selected based on a popularity of consumption by a plurality of consumers of the advertisement [para. 33].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references, selecting substitute or subsequent ads based on popularity in order to increase the likelihood that the current viewer will prefer the ad, thereby improving the conversion rate.
Claim 10 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Itakura and Rashkovsky as cited above in view of Malhotra et al., US 2020/0387414.
10 (from 9). The above references are silent on voice commands. Malhotra teaches an ad system wherein the input includes one or more of a voice command or a gesture detected by an input device [voice command for skipping ad, Fig. 3, paras. 41, 42].
Before the effective filing date of the claimed invention, it would have been obvious to one skilled in the art to combine the references since voice or gesture can be used without particular input devices and may be useful for disabled viewers.
Conclusion
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/TIMOTHY R NEWLIN/ Examiner, Art Unit 2424