DETAILED ACTION
This is the initial Office action based on the application filed on May 8, 2025. Claims 1-20 are currently pending and have been considered below.
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 1-22 of U.S. Patent No. 11,115,722 and claims 1-24 of US Patent 12,328,480. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘722 and the ‘480 Patents anticipate the instant claims.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 5, 9, 11-13 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mallinson (US Patent Application Publication 2011/0246495) in view of Gavade et al (US Patent Application Publication 2012/0066594).
Claims 1, 9 and 17: Mallinson discloses a method, a device and a non-transitory computer-readable medium comprising:
recording, by a user device, audio of a content item being output by a content device [0023]. [See at least capturing at least audio information.]
Mallinson alone does not explicitly disclose the rest of the limitations.
However, Mallinson and Gavade disclose:
receiving, by the user device, user-provided data and a user request to associate the user-provided data with a time point in the content item [Gavade: 0019]. [See at least associating user commentary with time stamps.]
sending, based on the user request, an upload request to associate the user-provided data with the time point in the content item [Gavade:0055]. [See at least uploading “the transcribed text of commentary.”],
wherein the upload request comprises:
a portion of the recording, wherein the portion was recorded by the user device prior to receiving the user request, and indicates the time point [Mallinson:0023]. [The audio was captured prior to a user request to associate user data with the content.]
the user-provided data [Gavade: 0019].
As such, it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Mallinson with Gavade. One would have been motivated to do so in order to let a user create supplemental content for capture media.
Claims 2 and 12: Mallinson as modified discloses the method and the device of Claims 1 and 9 above, and Mallinson further discloses wherein the user device comprises a mobile phone, the method further comprising: recording, via the mobile phone within a proximity of the content device and based on the content item being output by the content device, the audio of the content item being output by the content device [0022]. [See at least using a cell phone to capture audio within a proximity to at least a television.]
Claims 3 and 11: Mallinson as modified discloses the method and device of Claims 1 and 9 above, and Mallinson further discloses receiving, by the user device, user input indicating a request to identify the content item being output by the content device, wherein recording the audio of the content item being output by the content device is based on receiving the user input [0024, 0029]. [See at least “a recognition module or other such component, for identifying content…”]
Claims 5 and 13: Mallinson as modified discloses the method and device of Claims 1 and 9 above, and Mallinson further discloses wherein recording the audio of the content item being output by the content device is further based on a user launching a metadata upload application on the user device [0050].
Claims 4, 15 and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mallinson (US Patent Application Publication 2011/0246495) in view of Gavade et al (US Patent Application Publication 2012/0066594) and further in view of Datha et al (US Patent Application Publication 2011/0113315).
Claims 4, 15 and 19: Mallinson as modified discloses the method, the device and the medium of Claims 1, 9 and 17 above, but Mallinson alone does not explicitly disclose causing, based on sending the upload request to associate the user-provided data with the time point in the content item, the content item to be paused for a period of time.
However, Gavade [0055] discloses uploading particular data, and Datha [0042] discloses pausing a content stream during content uploads.
As such, it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Mallinson with Gavade and Datha. One would have been motivated to do so in order to pause a stream “in a graceful manner if there are likely going to be delays due to ongoing content uploads.”
Claims 6-8, 10, 14 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mallinson (US Patent Application Publication 2011/0246495) in view of Gavade et al (US Patent Application Publication 2012/0066594) and further in view of Ibasco et al (US Patent Application Publication 2014/0089309).
Claims 6 and 10: Mallinson as modified discloses the method and device of Claims 1 and 9 above, but Mallinson alone does not explicitly disclose determining, for the first content item, a first time period to record an audio output by the content device, wherein the first time period comprises a minimum duration sufficient to identify the content item; and determining, for a second content item, a second time period to record an audio output by the content device, wherein the second time period comprises a minimum duration sufficient to identify the content item different from the first time period.
However, Mallinson [0023] discloses recording audio and Ibasco [0043-0045] discloses using particular audio for any amount of audio samples to identify content. Each sample has to be a minimum amount of time to identify content.
As such, it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Mallinson with Ibasco. One would have been motivated to do so in order to be able to identify content based on particular audio.
Claims 8, 14 and 18: Mallinson as modified discloses the method, the device and the medium of Claims 1, 9 and 17 above, but Mallinson alone does not explicitly disclose wherein recording the audio of the content item comprises a plurality of audio samples of the content item and wherein the user device stores the plurality of audio samples based on a first in first out storage implementation.
However, Ibasco [0047, 0049] discloses storing audio samples in “a First-In-First-Out queue system.”
As such, it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Mallinson with Ibasco. One would have been motivated to do so in order to be able to identify content based on particular audio in the order it was received.
Claims 7, 16 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mallinson (US Patent Application Publication 2011/0246495) in view of Gavade et al (US Patent Application Publication 2012/0066594) and further in view of Slavin et al (US Patent Application Publication 2013/0111514).
Claims 7, 16 and 20: Mallinson as modified discloses the method, the device and the medium of Claims 1, 9 and 17 above, but Mallinson alone does not explicitly disclose selecting, based on the user-provided data, a point within the portion of the recording, wherein the point indicates a time point preceding the user-provided data.
However, Slavin [0198] discloses identifying time points of particular content that is at least prior to a match for the content.
As such, it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Mallinson with Slavin. One would have been motivated to do so in order to have an ability to match particular content.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX GOFMAN whose telephone number is (571)270-1072. The examiner can normally be reached Monday-Friday 8-5.
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/ALEX GOFMAN/Primary Examiner, Art Unit 2163