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 . This Office Action is in reply to communication filed on 04/18/2025. Claimed priority is granted from application 18/066,699, now US patent US 11558444 B1.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/23/2025, 04/24/2024 and 06/30/2026 was filed after the mailing date of the original application filed on 04/18/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Cancelled Claims
Claims 1-22 have been cancelled without prejudice or disclaimer.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention.
Claim 23 recites “generate and transmit to the client device an alert corresponding to the selected given content element...”. However, claim 23 does not previously recite the selection of a “given content element.” The preceding limitation rarely recites monitoring the content-element file for an instance of the potential content element. Accordingly, “the selected given content element” lacks sufficient antecedent basis, rendering unclear which previously recited element constitutes the selected given content element.
Claim 23 further recites: “the alert including a prompt enabling the client device to connect to the input media stream via the streaming media server.
However, no “streaming media server” is previously introduced in the claim. The claim instead introduces a “computer processor.” Accordingly, “the streaming media server” lacks sufficient antecedent basis, rendering unclear whether the streaming media server refers to the previously recited computer processor or to a separate component of the claimed system.
Therefore, claim 23 is indefinite under U.S.C. 112(b).
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 23-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No 11,558,444 to Kolowich. Although the claims at issue are not identical, they are not patentably distinct from each other.
MAPPING – Claims 23 of Application vs claim 1 of Patent
Application Claim 23
US Patent 11,558,444 Claim 1
Findings
A artificial intelligence (Al) computer system comprising:
A computer system for streaming selected media content to a client device of a user, the system comprising:
Both recite a computer system. Claim 23 characterizes the computer system as an AI computer system.
a computer processor configured to stream selected media content to a client device of a user, the computer processor programmed to:
a streaming media server configured to:
Both provide computer processing structure configured to perform the subsequently recited media-streaming operations. Claim 23 expresses the processing structure more generally as a computer processor.
receive an input media stream from an encoder, the encoder configured to encode input content from a source device into the input media stream;
receive an input media stream from a media encoder, the media encoder capturing and encoding input content from a source device into the input media stream;
Substantially the same media-stream receiving operation. Patent claim 1 additionally specifies that the media encoder captures the input content.
parse, using an artificial intelligence (Al) module, the encoded input content of the input media stream into time-stamped individual content elements, or representations thereof, stored within a content element file;
parse the encoded input content of the input media stream into time-stamped individual content elements, or representations thereof, stored within a content element file;
The claimed input, parsing operation, time-stamped individually content elements/representations, and content-element file correspond directly. Claim 23 expressly specifies an AI module for performing the parsing.
receive an alert request from a client device of a user, the alert request specifying a potential content element;
receive an alert request from a client device of a user, the alert request specifying a potential content element;
Same limitation
monitor, using the artificial intelligence (Al) module, the content element file for an instance of the potential content element;
monitor the content element file for an instance of the potential content element by loading and executing comparison instructions representing a real-time search engine, the real-time search engine comparing the potential content element with the stored individual content elements, the real-time search engine facilitating selection of a given content element of the stored individual content elements upon determining that the given content element substantially matches the potential content element according to the comparing;
Both monitors the content-element file for an instance of the potential content element, claim 23 identifies an AI module as performing the monitoring, whereas patent claim 1 expressly implements the monitoring though comparison instruction representing a real-time search engine and further specifies comparison and selection functionality.
generate and transmit to the client device an alert corresponding to the selected given content element,
generate and transmit to the client device an alert corresponding to the selected given content element,
Same alert-generation and transmission functionality
the alert including a prompt enabling the client device to connect to the input media stream via the streaming media server;
the alert including a prompt enabling the client device to connect to the input media stream via the streaming media server;
Same limitation
transcode the input media stream in a streaming format compatible with content delivery,
transcode the input media stream in a streaming format compatible with content delivery,
Same transcoding operation
the transcoded media stream being the output media stream.
the transcoded media stream being the output media stream;
Same resulting output media stream
No corresponding multimedia-player limitations in claim
Claim 1 additionally requires a multimedia player executing on the client device that loads the output stream, cues playback based on the timestamp of the selected content element, and starts playback of the output stream.
Claim 23 omits these additional limitations of patent claim 1.
Rejection of claim 23
Claim 23 is not patentably distinct from claim 1 of us patent N0. 11,588,444.
Patent claim 1 already claims the underlying computer-implement media-processing architecture in which encoded media content is parsed int time-stamped individual content elements, and alert request identifying a potential content element is received, the content-element file is monitored to identify a matching content element, an alert permitting connection to the media stream is generated and transmitted, and the media stream is transcoded for content delivery.
Claim 23 retains the same operative sequence and principally characterizes the computer system as an artificial intelligence (AI) computer system, and specifies that an AI module performs the parsing and monitoring operations paten claim 11. However, already requires computer-executed analysis for these functions. In particular, the monitoring operation is performed by loading and executing comparison executing comparison instructions representing a real-time search engine that compares the potential content element with stored individual content elements and facilities selection of a content element upon determining a substantial match.
Claim 23 omits several limitations expressly required by patent 1, including the detailed real-time-search-engine comparison and selection limitations and the multimedia [player limitations directed to leading and commencing playback. Such omission or generalization of limitations does not provide a patentable distinction over the patented claim.
Accordingly, claim 23 ius rejected o the ground of non-statutory double patenting as being an obvious variation of claim 1 of U.S. Patent No. 11,588,444.
Claims 24-44 follow the same invention pattern demonstrated above for application claim 23 relative to claim 1.
Claims 23-44 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-22 respectively, of US patent No. 11,588,444.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jude Jean-Gilles whose telephone number is 571-272-3914. The examiner can normally be reached on Mon-Fri, from 9:00AM-5:00PM.
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/JUDE JEAN GILLES/Primary Examiner, Art Unit 2459
August 22, 2026
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