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 .
The current application is a CON of application number 18/515,229, now a US Patent Number 12,328,353 which is a CON of application number 17/492,249, a US Patent Number 11,895,171.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “…during playback of at least a portion of the…” on line 4 and recites limitations “receiving, …to request a first portion of the…” on line 7 and “a second portion of …” on line 8 and it is not clear how the first and second portions relate to the playback portion referred to on line 4. Other independent claims repeat the same set of limitations and are rejected and dependent claims do not remedy the deficiency and are rejected.
Claim 8 recites the limitation “…from another computing device, …” on line 5 and “… from the other computing device, …” and to avoid any confusion about the computing device being the same in both cases, use the same “first device” and “second device” claim construction in claim 1.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,895,171 and claims 1-17 of U.S. Patent No. 12,328,353. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are obvious variants of each other in the choice of words and phrases and not scope.
Claim 1 of current application: 1. A method comprising: receiving, from a first computing device, by a second computing device, a casting request to playback a plurality of segments of content at the second computing device, wherein the casting request is received during playback of at least a portion of the plurality of segments of content at the first computing device; and receiving, from the first computing device, by the second computing device, a manifest comprising instructions to request a first portion of the plurality of segments of content from the first computing device and a second portion of the plurality of segments of content from a content source different from the first computing device.
Claim 1 of 11,895,171: 1. A method comprising: receiving, by a first computing device, from a content source, a plurality of segments of content; receiving, via the first computing device, during playback of a first portion of the plurality of segments of content, a first request to cast the content to a second computing device; generating and sending, by the first computing device and based on the first request to cast the content, to the second computing device, a manifest comprising instructions for the second computing device to request a second portion of the plurality of segments of content from the first computing device and further request subsequent portions of the plurality of segments of content from the content source; receiving, by the first computing device, from the second computing device, a second request for the second portion of the plurality of segments of content based on the manifest; and sending, by the first computing device, to the second computing device, the second portion.
Claim 1 of 12,328,353: 1. A method comprising: receiving, by a first computing device, a first request to cast a plurality of segments of content to a second computing device, wherein the first request is received during playback of the plurality of segments of content at the first computing device; and causing, based on the first request, a manifest to be sent to the second computing device, the manifest comprising instructions to request a first portion of the plurality of segments of content from the first computing device and a second portion of the plurality of segments of content from a content source different from the first computing device.
Allowable Subject Matter
Claims 1-20 are allowed if 112 issues are overcome and an eTD over previous two patents is filed and approved. The prior art closest to the claimed invention is US 20160077710, [Figure 3] which supports continuity of playback from one device to another but does not explicitly mention sending a manifest for the buffered items on the first device or for the items to be retrieved from a content source. Prior art does not teach all of the limitations of the independent claims when taken in the environment of the full claim language.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PADMA MUNDUR whose telephone number is (571)272-5383. The examiner can normally be reached 9:30 AM to 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICHOLAS TAYLOR can be reached at 571 272 3889. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PADMA MUNDUR/Primary Examiner, Art Unit 2443
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