DETAILED ACTION
This communication is in response to application no. 19/085263 filed 20 March 2025.
Claims 1-20 are currently pending and have been examined.
Claims 1-20 are rejected as shown in this 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 .
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 claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-9 recite a method which is considered a process. Claims 10-16 recite a device which is considered a machine or manufacture. Claim 17-20 recite a non-transitory computer readable medium which is considered a machine or manufacture.
Step 2A-Prong One
(Claims 1-20) The claims recite the concept of associating supplemental content with time points in a content item and outputting supplemental content via a first application based on an associated time point corresponding with a current time point (see, for example, “determine information associating a time point of a content item with: a first supplemental content item for a first application; and a second supplemental content item for a second application; receive, while the content item is being output, user input associated with selection of the first application; and based on the time point corresponding to a current time point of the content item being output, cause the selected first application to output the first supplemental content item indicated by the information” in claim 10). This concept falls into the certain methods of organizing human activity grouping including advertising activities. The dependent claims further refine this concept but do not recite limitations that take the claims out of the identified abstract idea grouping. Thus, these claims recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of a computing device (found in claims 1-9), a computing device comprising one or more processors and memory storing instructions (found in claims 10-16), or a non-transitory computer-readable medium storing instructions (found in claims 17-20) and includes no more than mere instructions to apply the exception using a generic computer component. The computing device or non-transitory computer-readable medium does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
Note that while applications in this family were ultimately allowed, limitations that are present in those claims are not all found in the current claims.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,783,382. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,288,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Conclusion
For reasons similar to the parent applications (US 14/520819 and US 18/455714), the claims are not rejected under § 102/103. The closest prior art is US 2013/0198642 (“Carney”). See the Notice of Allowance in US 14/520819 (5/34/2023) at item 2 for a discussion of Carney.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622
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