DETAILED ACTION
Claims 1-23 are presented for consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submission filed on 12/03/2025 has been entered.
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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,084,838, and claims 1-17 of U.S. Patent No. 10,911,509. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patents anticipate the claims of current application.
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.
Claim(s) 1-3, and 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over Swaminathan et al. [ US Patent Application No 2014/0040026 ] in view of Fisher [ US Patent Application No 2013/0332971 ].
As per claim 1, Swaminathan discloses the invention as claimed including a method of dynamically inserting content when adaptively streaming video to a user device [ i.e. user-customized advertisements may be inserted into the manifest file ] [ Abstract; and paragraph 0028 ], the method comprising:
receiving, by at least one server in a server cluster [ i.e. servers ] [ Figure 1; and paragraph 0027 ], requests from a user device for one or more video segments, wherein the requests for the one or more video segments are made in accordance with a manifest [ i.e. client device accesses one or more media segment URLs included in the manifest file to request file corresponding to the media segment files ] [ S507, Figure 5; and paragraph 0039 ], where the manifest corresponds to an adaptive streaming video and includes information concerning at least one break in the adaptive streaming video [ i.e. advertisement markers in the manifest file ] [ 311, 312, Figure 3; Abstract; and paragraph 0028 ];
transmitting, by at least a first server in the server cluster, the one or more requested video segments to the user device in response to the one or more requests [ i.e. receive media segment files ] [ S508, Figure 5; and paragraph 0039 ];
playing back, by the user device, the one or more requested video segments [ i.e. stream video content ] [ Figure 9A; and paragraph 0063 ] and, during playback, determining a need for dynamic content for insertion within an upcoming break in the adaptive streaming video based on the information concerning at least one break in the adaptive streaming video included within the manifest [ i.e. advertisement marker ] [ 801, 802, Figure 8c; and paragraphs 0038, 0054, and 0056 ];
requesting, by the user device, content for insertion within the upcoming break in the adaptive streaming video from a dynamic content server [ 812, 813, Figure 8d; and paragraphs 0039, and 0054 ];
receiving, by the user device, from the dynamic content server a URL corresponding to selected content [ S505, Figure 5; and paragraph 0039 ];
generating, by the user device, a request based upon the URL corresponding to the selected content [ i.e. request advertisement files ] [ S509, Figure 5; and paragraph 0039 ];
stopping playback of the adaptive streaming video and playing back, by the user device, the selected content [ i.e. play advertisement files ] [ Figure 8d; and paragraphs 0054, 0055, and 0068 ]; and
resuming playback of the adaptive streaming video [ i.e. resuming playback ] [ paragraphs 0080 ].
Swaminathan does not specifically disclose
wherein the request is made by the user device in response to the determination during playback of the need for dynamic content; and
transmitting, by at least a second server in the server cluster, the selected content to the user device.
Fisher discloses
wherein the request is made by the user device in response to the determination during playback of the need for dynamic content [ i.e. stitched manifest identifying a combination of the video assets is created in response to a client request for one or more of the video assets ] [ Abstract; and paragraphs 0011, 0019, and 0048 ]; and
transmitting, by at least a second server in the server cluster, the selected content to the user device [ i.e. servers 10, 12, 14 which provide the requested fragments to the client directly ] [ Figure 1; and paragraphs 0039, and 0048-0052 ].
It would have been obvious to a person skill in the art before the effective filing date of the claimed invention to combine the teaching of Swaminathan and Fisher because the teaching of Fisher would provide a system in which a collection of assets can be served contiguously in response to one VOD request [ Fisher, paragraph 0006 ].
As per claim 2, Swaminathan discloses wherein the request, by the user device, for content for insertion within said upcoming break in the adaptive streaming video causes the dynamic content server to select content for the user device [ i.e. client device request for a particular amount of advertisement URLs for accessing suer-customized advertisements ] [ S504, Figure 5; and paragraph 0039 ].
As per claim 3, Swaminathan discloses wherein the user device requests the selected content from at least the second server in the server cluster using the URL [ i.e. request advertisement files ] [ S509, Figure 5; and paragraph 0039 ].
As per claim 4, Fisher discloses downloading, by at least the second server in the server cluster, the selected content from a content server on which the selected content is stored [ i.e. playlist servers connects to the ADS 50, requests specific ads for the client and the content that is to be viewed ] [ Figure 4; and paragraph 0049 ].
As per claim 5, Swaminathan discloses obtaining one or more URLs for the selected content from a content publisher [ i.e. advertisement markers have been replaced with advertisement URLs for user customized ads ] [ Figure 4; and paragraph 0035 ].
As per claim 6, Fisher discloses wherein the selected content is downloaded, by at least the second server in the server cluster, in response to the selection of the selected content by the content server [ Figure 5; and paragraphs 0054-0057 ].
As per claim 7, Swaminathan discloses wherein the selected content is third-party content and the content server on which the selected content is stored is one of plurality of third-party content servers [ i.e. third party server machines host advertisements [ paragraphs 0023, and 0032 ].
As per claim 8, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the user device [ i.e. preference information ] [ paragraphs 0030-0034 ].
As per claim 9, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the adaptive streaming video [ i.e. preference information ] [ paragraphs 0030-0034 ].
As per claim 10, Fisher discloses wherein the selected content is downloaded, by at least the second server in the server cluster, in advance of the request, by the user device, that caused the dynamic content server to select the selected content [ i.e. playlist servers connects to the ADS 50, requests specific ads for the client and the content that is to be viewed ] [ Figure 4; and paragraph 0049 ].
13. As per claim 11, Swaminathan discloses wherein the selected content is third-party content and the content server on which the selected content is stored is one of plurality of third-party content servers [ i.e. third party server machines host advertisements [ paragraphs 0023, and 0032 ].
14. As per claim 12, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the user device [ i.e. preference information ] [ paragraphs 0030-0034 ].
15. As per claim 13, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the adaptive streaming video [ i.e. preference information ] [ paragraphs 0030-0034 ].
17. As per claim 15, Swaminathan discloses wherein the URL corresponding to the selected content is one of a plurality of URLs corresponding to the selected content [ i.e. one or more advertisement URLs ] [ Figure 4; and paragraphs 0035, and 0039 ].
18. As per claim 16, Swaminathan discloses wherein the URL corresponding to the selected content is not contained within the manifest [ i.e. access one or more advertisement URLs included in the manifest ] [ S509, Figure 5; and paragraph 0039 ].
19. As per claim 17, Swaminathan discloses wherein one or more URLs within the manifest references the dynamic content server [ i.e. advertisement content server ] [ 140, Figure 1; and paragraphs 0023, and 0032 ].
20. As per claim 18, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the user device [ i.e. preference information ] [ paragraphs 0030-0034 ].
21. As per claim 19, Swaminathan discloses performing, by the dynamic content server, a runtime process that selects the selected content based at least in part upon particular characteristics of the adaptive streaming video [ i.e. preference information ] [ paragraphs 0030-0034 ].
Claim(s) 14, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Swaminathan et al. [ US Patent Application No 2014/0040026 ] in view of Fisher [ US Patent Application No 2013/0332971 ], and further in view of Dhruv et al. [ US Patent Application No 2012/0198492 ].
23. As per claim 14, Swaminathan in view of Fisher does not specifically disclose wherein the dynamic content server selects the content for the user device prior to the request, by the user device, for content for insertion within said upcoming break in the adaptive streaming video. Dhruv discloses wherein the dynamic content server selects the content for the user device prior to the request, by the user device, for content for insertion within said upcoming break in the adaptive streaming video [ paragraphs 0042-0045 ]. It would have been obvious to a person skill in the art before the effective filing date of the claimed invention to combine the teaching of Swaminathan, Fisher and Dhruv because the teaching of Dhruv would enable to stich advertisements into streaming media [ Dhruv, paragraph 0002 ].
24. As per claim 20, it is rejected for similar reasons as stated above in claims 1, 10, and 12, furthermore, Swaminathan in view of Fisher does not specifically disclose the selected content that is downloaded from the content server is transcoded prior to being stored on the second server, where the selected content is transcoded into a format that is supported by the user device, and the selected content is stored on the second server separately from any of the video segments. Dhruv discloses the selected content that is downloaded from the content server is transcoded prior to being stored on the second server, where the selected content is transcoded into a format that is supported by the user device [ i.e. receive advertisement and transcode the advertisement, before or after dividing the advertisement into chunks, to meet the need of the playback device ] [ paragraph 0037 ], and the selected content is stored on the second server separately from any of the video segments [ i.e. one or more different advertising servers ] [ paragraphs 0032, and 0045 ]. It would have been obvious to a person skill in the art before the effective filing date of the claimed invention to combine the teaching of Swaminathan, Fisher and Dhruv because the teaching of Dhruv would enable to stich advertisements into streaming media [ Dhruv, paragraph 0002 ].
25. As per claim 21, Dhruv discloses wherein at least a second server in the server cluster downloads the selected content from a content server on which the selected content is stored in advance of the request, by the user device, that caused the dynamic content server to select the selected content [ i.e. retrieving an advertisement ] [ paragraphs 0042-0044 ], and the selected content is processed prior to storing the content separately from any of the video segments within the CDN [ i.e. receive advertisement and transcode the advertisement, before or after dividing the advertisement into chunks, to meet the need of the playback device ] [ paragraph 0037 ].
26. As per claim 22, Dhruv discloses wherein the selected content that is downloaded from the content server is transcoded into a format that is supported by the user device [ i.e. receive advertisement and transcode the advertisement, before or after dividing the advertisement into chunks, to meet the need of the playback device ] [ paragraph 0037 ].
27. As per claim 23, Dhruv discloses wherein the selected content is stored on the second server separately from any of the video segments [ i.e. one or more different advertising servers ] [ paragraphs 0032, and 0045 ].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-23 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wagenaar et al. [ US Patent Application No 2015/0382042 ] discloses dynamic stitching module and protocol for personalized and targeted content streaming
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/DUSTIN NGUYEN/Primary Examiner, Art Unit 2446