DETAILED ACTION
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.
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Claims 21-36 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,309,463. Although the claims at issue are not identical, they are not patentably distinct from each other because, the major difference between the instant application and the ‘463 patent is the claimed feature “wherein the one or more color hotkeys are configured to assign different colors, and a color indexing of a color hotkey is depicted as a displayed image on a selected user interface to show a currently assigned function.” However, claim 1 lines 40-52 of the ‘463 patent explicitly claim first through third colored hotkeys assigned first through third functions presented on a fourth user interface. These features claimed in line 40-52 would therefore encompass “wherein the one or more color hotkeys are configured to assign different colors, and a color indexing of a color hotkey is depicted as a displayed image on a selected user interface to show a currently assigned function.” Therefore, those of ordinary skill would not consider the redundant claiming of features using different grammatical phrasing and in different portions of the claim as representing a distinct and independent invention.
In regards to claim 22, the feature “wherein the first content application is associated with a silo button on the remote controller” would be implicitly understood by those of ordinary skill based on claim 1. For clarification, claim 1of the ‘463 patent requires features “the one or more shortcut keys being associated with one or more content applications” and “based on that the silo is a first content application.” Those of ordinary skill would understand from these features that the first content application is associated with a button which is associated with a silo. Therefore this feature does not provide any unexpected results. It has been held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” KSR., 127 S. Ct. at 1739, 82 USPQ2d at 1395 (2007) (Citing Graham, 383 U.S. at 12).
In regards to claim 23, the feature “wherein the first content application is configured to provide content via network connection” would be implicitly understood by those of ordinary skill based on claims 7, 10-11, 14, 16, and 20. These claims explicitly claim a live TV application. Those of ordinary skill would understand that live TV content would require a connection to an outside network, either satellite, OTA or internet etc. Therefore, this feature does not provide any unexpected results. It has been held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” KSR., 127 S. Ct. at 1739, 82 USPQ2d at 1395 (2007) (Citing Graham, 383 U.S. at 12).
In regards to claim 24, the feature “wherein the first content application comprises a live TV application” would be implicitly understood by those of ordinary skill based on claims 7, 10-11, 14, 16, and 20. These claims explicitly claim a live TV application. Those of ordinary skill would understand that live TV content could be labeled the first content application. Therefore, this feature does not provide any unexpected results. It has been held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” KSR., 127 S. Ct. at 1739, 82 USPQ2d at 1395 (2007) (Citing Graham, 383 U.S. at 12).
In regards to claims 25-36, these claims are generally analogous to dependent claims of the ‘463 application. See mapping in table below.
Claims 21-36 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,309,463 in view of Fairhurst et al. US 2005/0149990 hereinafter referred to as Fairhurst.
In regards to claim 21, the major difference between the instant application and the ‘463 patent is the claimed feature “wherein the one or more color hotkeys are configured to assign different colors, and a color indexing of a color hotkey is depicted as a displayed image on a selected user interface to show a currently assigned function.” Fairhurst Figure 6 illustrates these features. It would have been obvious for a person with ordinary skill in the art before the invention was effectively filed to have modified ‘463 in view of Fairhurst to have included the features of “wherein the one or more color hotkeys are configured to assign different colors, and a color indexing of a color hotkey is depicted as a displayed image on a selected user interface to show a currently assigned function” because the need remains for a method and system for accessing applets on televisions which addresses these drawbacks inherent in the prior art (Fairhurst [0007]).
In regards to claim 22, Fairhurst teaches “wherein the first content application is associated with a silo button on the remote controller.” Fairhurst teaches in Figure 6 hotkey color buttons associated with various content applications. It would have been obvious for a person with ordinary skill in the art before the invention was effectively filed to have modified ‘463 in view of Fairhurst to have included the features of “wherein the first content application is associated with a silo button on the remote controller” because the need remains for a method and system for accessing applets on televisions which addresses these drawbacks inherent in the prior art (Fairhurst [0007]).
In regards to claim 23, the feature “wherein the first content application is configured to provide content via network connection” would be implicitly understood by those of ordinary skill based on claims 7, 10-11, 14, 16, and 20. These claims explicitly claim a live TV application. Those of ordinary skill would understand that live TV content would require a connection to an outside network, either satellite, OTA or internet etc. Therefore, this feature does not provide any unexpected results. It has been held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” KSR., 127 S. Ct. at 1739, 82 USPQ2d at 1395 (2007) (Citing Graham, 383 U.S. at 12).
In regards to claim 24, the feature “wherein the first content application comprises a live TV application” would be implicitly understood by those of ordinary skill based on claims 7, 10-11, 14, 16, and 20. These claims explicitly claim a live TV application. Those of ordinary skill would understand that live TV content could be labeled the first content application. Therefore, this feature does not provide any unexpected results. It has been held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” KSR., 127 S. Ct. at 1739, 82 USPQ2d at 1395 (2007) (Citing Graham, 383 U.S. at 12).
In regards to claims 25-36, these claims are generally analogous to dependent claims of the ‘463 application. See mapping in table below.
Claim No.
Instant Application 19/187,015
US Patent No. 12,309,463
21
An intelligent television comprising: a display; a memory configured to store instructions and data associated with the display;
one or more input ports configured to physically connect to one or more external devices;
a remote controller comprising one or more color hotkeys and one or more shortcut keys,
wherein the one or more color hotkeys are configured to assign different colors, and a color indexing of a color hotkey is depicted as a displayed image on a selected user interface to show a currently assigned function;
at least one processor in connection with the display, the memory and the one or more input ports and configured to execute instructions stored in the memory to cause the intelligent television to:
receive a designation for a silo via the remote controller, wherein the silo is a logical representation of a content source for the intelligent television;
determine the silo based on the designation;
based on that the silo is associated with one of the one or more external devices:
present in a first user interface a watermark for identifying the silo;
activate the one of the one or more external devices;
determine whether a signal error associated with the silo occurs;
and based on an occurrence of the signal error associated with the silo, present a second user interface for indicating the signal error, and based on no occurrence of the signal error, present a content associated with the silo;
based on that the silo is a first content application:
determine whether the first content application is in an error state;
and based on that the first content application is in an error state, present a third user interface indicating the first content application is in the error state, otherwise, provide a content from the first content application;
and in response to a command associated with the content from the first content application via the remote controller, present a fourth user interface comprising at least one of: a first indicator having a first color of a first hotkey of the one or more color hotkeys indicating a first assigned function for the first hotkey, a second indicator having a second color of a second hotkey of the one or more color hotkeys indicating a second assigned function for the second hotkey, a third indicator having a third color of a third hotkey of the one or more color hotkeys indicating a third assigned function for the third hotkey.
Claim 1 lines 1-4
Claim 1 lines 5—6
Claim 1 lines 7-8
Claim 1 lines 40-52
Claim 1 lines 12-15
Claim 1 lines 16-18
Claim 1 line 19
Claim 1 lines 20-21
Claim1 lines 21-23
Claim 1 line 24
Claim 1 lines 25-26
Claim1 lines 27-31
Claim 1 lines 32-33
Claim 1 lines 34-35
Claim 1 lines 36-39
Claim 1 lines 40-52
22
wherein the first content application is associated with a silo button on the remote controller.
Claim 1 and Fairhurst Fig. 6
23
wherein the first content application is configured to provide content via network connection.
Claims 7, 10-11, 14, 16, and 20
24
wherein the first content application comprises a live TV application.
Claims 7, 10-11, 14, 16, and 20
25
wherein the first assigned function for the first hotkey is activatable by the first hotkey in the fourth user interface while a fourth assigned function for the first hotkey is activatable by the first hotkey in a first state of the silo associated with the one of the one or more external devices, wherein the fourth assigned function is different from the first assigned function.
Claim 5
26
wherein the first assigned function for the first hotkey is activatable by the first hotkey in a second state of the intelligent television while a fifth assigned function for the first hotkey is activatable by the first hotkey in a third state of the intelligent television.
Claim 6
27
wherein the at least one processor is further configured to execute the instructions to cause the intelligent television to: in response to a selection of a functional item in the first content application, provide a fifth user interface comprising at least one of: a sixth indicator having the first color of the first hotkey of the one or more color hotkeys indicating a sixth assigned function for the first hotkey, a seventh indicator having the second color of the second hotkey of the one or more color hotkeys indicating a seventh assigned function for the second hotkey, an eighth indicator having the third color of the third hotkey of the one or more color hotkeys indicating an eighth assigned function for the third hotkey.
Claim 7
28
wherein the at least one processor is further configured to execute the instructions to cause the intelligent television to: based on that the silo is a live TV application, and in response to a selection of a guide menu, launch a full screen EPG comprising at least one of: a ninth indicator having the first color of the first hotkey of the one or more color hotkeys indicating a ninth assigned function for the first hotkey, a tenth indicator having the second color of the second hotkey of the one or more color hotkeys indicating a tenth assigned function for the second hotkey.
Claim 10
29
wherein the at least one processor is further configured to execute the instructions to cause the intelligent television to: based on that the silo is a live TV application, and in response to a command for changing a channel number on the television: render an on-screen channel changer on the display; receive a channel number selection according to a user's selection from the on- screen channel changer; and present a content associated with a selected channel number corresponding to the channel number selection.
Claim 11
30
wherein the on-screen channel changer comprises a number entry bar.
Claim 12
31
wherein the remote controller comprises a global panel button for providing an access to one or more of silos, notifications, a web browser and/or a system setting.
Claim 13
32
wherein the at least one processor is further configured to execute the instructions to cause the intelligent television to: based on that the silo is a live TV application, and in response to a command for information about currently played content on the display: provide an information user interface comprising one or more program information items associated with the currently played content without interrupting the currently played content on the display.
Claim 14
33
wherein the at least one processor is further configured to execute the instructions to cause the intelligent television to: based on that the silo is a live TV application, and in response to a command for information about currently played content on the display: provide an information user interface comprising a navigation bar, a detailed information region or an additional information region.
Claim 16
34
wherein the navigation bar is configured for navigating to different user interfaces.
Claim 16
35
wherein the detailed information region is configured for presenting information on the currently played content.
Claim 16
36
wherein the additional information region is configured for presenting recommended or related items depending on the currently played content.
Claim 16
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E TEITELBAUM, Ph.D. whose telephone number is (571)270-5996. The examiner can normally be reached 8:30AM-5:00PM EST.
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/MICHAEL E TEITELBAUM, Ph.D./Primary Examiner, Art Unit 2422
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