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 .
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 1-6 and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 15, 16, 18 and 20 of U.S. Patent No. 12,267,542. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-6 and 11-16 are anticipated by the conflicting patented claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 15, 16, 18 and 20 of U.S. Patent No. 12,267,542 as shown in the table below. The difference between the instant examined claim and the conflicting patented claim is that the conflicting patented claims are narrower in scope and falls within the scope of the examined claim. Thus, the species or sub-genus claimed in the conflicting patent anticipates the examined claimed genus. Therefore, a patent to the examined claim genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP § 804 (II)(B)(1).
Instant Application 19/067,470
U.S. Patent No. 12,267,542
Claims 1, 11
Claims 1, 5, 15
Claims 2, 12
Claims 2, 7, 17
Claims 3, 13
Claims 10
Claims 4, 14
Claims 20
Claims 5, 15
Claims 3, 8, 18
Claims 6, 16
Claims 4, 11
Part of Claim 1
Claim 6, 16
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception (i.e., an abstract idea) without reciting additional elements that amount to significantly more than the judicial exception.
Step 1 – Statutory Category
The claims are directed to a method and system claims, which are statutory categories under 35 USC § 101. However, the claims fail to recite patent-eligible subject matter under the subsequent steps of the Alice/Mayo framework and the 2019 Revised Patent Subject Matter Eligibility Guideline (“2019 PEG”).
Step 2A, Prong 1 – The claims are directed to an Abstract Idea.
Under the 2019 PEG, the claims recite limitations that fall within recognized categories of abstract ideas, including Certain methods of organizing human activity (e.g., the claims recite scheduling, rescheduling, reminders, and monitoring user behavior). These activities can be performed mentally or with pen and paper. Mental processes (e.g., the steps of determining whether an event occurred at a time, deciding whether to remind, and deciding whether to reschedule are mental processes that can be performed by a human). The claim recites, in substance: receiving a request to schedule playing of a content item, determining whether the device played the content at the scheduled time, generating a reminder to reschedule, receiving a reschedule request, and stopping output of the reminder. These steps constitute monitoring user behavior, evaluating conditions, and providing notifications. These fall within the abstract idea groupings of certain methods of organizing human activity or mental processes as identified in the 2019 Revised Patent Subject Matter Eligibility Guidance .
Step 2A, Prong 2 – The claims do not integrate the Abstract Idea into a Practical Application.
The claim does not integrate the abstract idea into a practical application because the claims do not recite: an improvement to computer functionality, an improvement to another technology or technical field, a particular machine integral to the claim, a transformation of an article, or any meaningful limitation beyond applying the abstract idea on generic computer components. The claims merely use generic device to: receive data, determine conditions, generate a reminder, and stop outputting a reminder. The claims do not recite any specific technical improvement to the device, the content platform, or the reminder system. Instead, the device is used as a means for performing the abstract scheduling/reminder logic.
Step 2B – The claims do not recite an Inventive Concept
The additional elements beyond the abstract idea consist of: “a device associated with the user,” generic receiving, determining, generating, and causing output operations. The claims do not include: unconventional hardware, a new architecture, a new data structure, a technical improvement, or any non-routine computer functionality.
Accordingly, claims 1 and 11 are directed to an abstract idea and does not recite an inventive concept sufficient to transform the claim into patent-eligible subject matter.
Claims 2-10, 12-20 fail to remedy these deficiencies, thus claims 1-20 are considered to be directed to a non-statutory process.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 6-12, 16-20 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Ellis (U.S. Pub. No. 2016/0100202).
Regarding claim 1, Ellis discloses a method comprising:
receiving, from a device associated with a user, a request to schedule playing of a content item, wherein the request specifies a scheduled time for playing the content item (see paragraphs 0117-0118, 0154, 0165-0169, figs. 22 and 24; receiving user requests to schedule viewing/recording of a program at a specific time);
determining whether the device associated with the user was used to play the content item at the scheduled time (see paragraphs 0174, 0201-0202; monitoring whether the user actually watched the program at the scheduled time);
based at least in part on determining the device associated with the user was not used to play the content item at the scheduled time, generating, for output at the device associated with the user, a reminder to reschedule playing of the content item (see paragraphs 0184-0187, 0199, 0201-0203, figs. 27-28; if the user does not watch the program at the scheduled time, the system generates a reminder and prompts the user to reschedule);
receiving, from the device associated with the user, a request to reschedule playing of the content item, wherein the request specifies a rescheduled time for playing the content item (see paragraphs 0185-0187, 0199; receiving a user request to reschedule viewing to a new time. User selects a new time such as “in 5 minutes”, “in 30 minutes”, “in 1 hour”); and
causing the device associated with the user to stop outputting the reminder to reschedule playing of the content item (see paragraphs 0120, 0171-0172; once the user selects a reschedule time or takes action, the reminder is dismissed. Selecting “watch now,” “watch later,” or “ignore” removes the reminder overlay).
Regarding claim 11, claim 11 is rejected for the same reason set forth in the rejection of claim 1.
Regarding claims 2 and 12, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein: the reminder to reschedule playing of the content item is a first reminder (see paragraphs 0171-0172, 0184-0187; first reminder that appears when the user misses the scheduled time. A first reminder such as “REMINDER – SEINFELD 8:00 PM” displayed when the scheduled time arrives and the user has not watched the program); and the method further comprises:
generating, for output at the device associated with the user, prior to or at the rescheduled time, a second reminder to consume the content item (see paragraphs 0185-0187, 0199, 0201, fig. 28; after the user reschedule the reminder, the system generates a second reminder at the new time. User selects a new time (“in 5 minutes,” “in 30 minutes,” “in 1 hour,” etc.).
Regarding claims 6 and 16, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein determining whether the device associated with the user was used to play the content item at the scheduled time (see paragraphs 0171-0172 and fig. 27) comprises determining whether the device associated with the user was used to access a content platform for the content item at the scheduled time (see paragraphs 0201-0203, 0144-0150, figs. 14-18).
Regarding claims 7 and 17, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses based at least in part on receiving the request to reschedule playing of the content item (see paragraphs 0199, 0201-0203), causing the device associated with the user to download the content item prior to or at the rescheduled time (see paragraphs 0007-0009, 0011, 0152, 0187-0190, 0203-0205, figs. 27-28).
Regarding claims 8 and 18, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein the content item is a broadcast program (see paragraphs 0001, 0007), further comprising based at least in part on receiving the request to reschedule playing of the content item (see paragraphs 0199, 0201-0203):
scheduling recording of the content item (see paragraphs 0007, 0154, 0190-0195,0203-0205, fig. 19a-19b); and
causing the device associated with the user to download the content item prior to or at the rescheduled time (see paragraph 0007-0009, 0011, 0152, 0187-0190, 0203-0205).
Regarding claims 9 and 19, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein the reminder to reschedule playing of the content item comprises a proposed time (see paragraphs 0184-0187, fig. 28; the user may select option 324 to defer the reminder for five minutes or may select option 326 to defer the reminder for thirty minutes).
Regarding claims 10 and 20, Ellis et al. discloses everything claimed as applied above (see claims 9 and 19). Ellis et al. discloses wherein the rescheduled time is different than the proposed time (see paragraphs 0185-0187, 0178-0180, fig. 26(300), fig. 28).
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 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 3-5 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ellis (U.S. Pub. No. 2016/0100202).
Regarding claims 3 and 13, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein: the reminder to reschedule playing of the content item is a first reminder (see paragraphs 0171-0172, 0184-0187; first reminder that appears when the user misses the scheduled time. A first reminder such as “REMINDER – SEINFELD 8:00 PM” displayed when the scheduled time arrives and the user has not watched the program); and the method further comprises:
based at least in part on determining the device associated with the user was not used to play the content item at the rescheduled time (see paragraphs 0200-0203; the system monitors whether the user responds to or watches the program at the new reminder time), generating, for output at a second device associated with the user, a second reminder to reschedule playing of the content item (see paragraphs 0200-0203 (when the new reminder time arrives, the reminder may again be displayed for the user), 0018-0020, 0003-0006; reminders and guide interactions may occur across different user devices. Paragraph 0020 discloses that user equipment includes televisions, set-top boxes, and computers. So Ellis teaches a second reminder and the capability to output the second reminder on different devices associated with the same user and it would have been obvious to output the second reminder on a second device because Ellis already teaches the same user accessing the guide from multiple devices, and reminders being generated at multiple times).
A person of ordinary skill in the art would recognize that sending the second reminder to another device (e.g., a mobile device or computer) is a predictable use of Ellis’s multi-device architecture to ensure the user receives the reminder.
Regarding claims 4 and 14, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses wherein: the device associated with the user is a first device (see paragraphs 0003-0005, 0051 and figs. 2-3; user equipment 18; user television equipment 20; user computer equipment 22);
the reminder to reschedule playing of the content item is a first reminder (see paragraphs 0171-0172, 0184-0187); and the method further comprises:
based at least in part on determining the first device was not used to play the content item at the rescheduled time (see paragraphs 0201-0203, 0220-0222), generating, for output at a second device associated with the user, a second reminder to reschedule playing of the content item (see paragraphs 0201-0203, 0220-0222 discloses second reminder at the rescheduled time. Paragraphs 0003-0005, 0051 and figs. 2-3 discloses multiple devices associated with the same user. Therefore, Ellis teaches a second reminder and multiple devices capable of receiving reminders).
A person of ordinary skill in the art would find it obvious to output the second reminder to a second device because the user interacts with the guide across multiple devices, that reminders are being generated at multiple times and sending the second reminder to another device is a predictable use of Ellis’s multi-device architecture to ensure the user receives the reminder.
Regarding claims 5 and 15, Ellis et al. discloses everything claimed as applied above (see claims 1 and 11). Ellis et al. discloses
determining whether the device associated with the user was used to play the content item within a predetermined time from the scheduled time (see paragraphs 0171-0172, 0184-0187, 0201-0203 and fig. 27), wherein:
generating, for output at the device associated with the user, a reminder to reschedule playing of the content item is further based on determining the device associated with the user was not used to play the content item within the predetermined time from the scheduled time (see paragraphs 0184-0187, 0201-0203, fig. 27).
A person of ordinary skill in the art would recognize that implementing this determining step using an explicit “predetermined time” is a routine design choice.
Conclusion
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NNENNA EKPO
Primary Examiner
Art Unit 2425
/NNENNA N EKPO/Primary Examiner, Art Unit 2425 March 19, 2026.