DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
This is an application to reissue US Patent No. 11,659,228 (“the ‘228 patent”). In a 02/20/2026 response to the non-final Office action, the applicant has added new claims 43-44. Claims 1-42 are unamended. Claims 1-44 are currently pending.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,659,228 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant’s Response
The previous Office action rejected claim 1 over a combination of Nobori and Doumuki. See non-final action pg. 5-8. The applicant traverses this rejection, stating that “nothing in Nobori discloses, teaches or suggests that the ‘thumbnail’ of Nobori displayed in the image information region 310A is a moving image.” Remarks pg. 12. This is not persuasive.
Nobori discloses that “image information” from a selected input is displayed in the form of a thumbnail. Nobori ¶49 and Fig. 3. To device generates this thumbnail by “scaling down” the video that is received from the inputs. Id. ¶37. Because the image that is scaled down and displayed as a thumbnail is itself video (see id. ¶6), the POSITA would conclude that the thumbnail is also video. There is no disclose that in scaling the input video into a thumbnail, it is converted to a still image. Nobori only states that the video is scaled down. See id. ¶37. The POSITA would not conclude, as the applicant appears to suggest, that a thumbnail is necessarily a still image. In addition, by explicitly referring to the thumbnail as “image information,” which is previously defined as video (see ¶6), Nobori discloses that the thumbnails that are shown in Fig. 3: 310 are video, or moving images. As a result, it is respectfully maintained that the combination of Nobori and Doumuki renders obvious the invention that is recited in claim 1.
New claims 43-44 have been added, and recite that the “second position on which the second moving image is displayed is different from the first position on which the first moving image is displayed.” The applicant points to the specification at 3:66-5:14 and Figures 2 and 3 as providing support for this limitation. Remarks pg. 6. The examiner submits that these claims do not find support in the specification.
The ‘228 patent provides no disclosure regarding the location of the “second moving image.” Fig. 2 shows that when the video game console is selected, imagery from the console is displayed. It is not described what occurs when another input, for example the DVD, is selected. Because the specification lacks any discussion of the display location of the moving images, it cannot be concluded that that the “second moving image” from the DVD input is displayed in a different position than the “first moving image” from the video game console.
Claim limitations “must be expressly, implicitly, or inherently supported in the originally filed disclosure.” MPEP 2163. There is no express disclosure in the specification that the first and second moving images are displayed in different locations. “When an explicit limitation in a claim ‘is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.’" Id. The applicant has not shown, and the POSITA would not conclude, that the specification of the ‘228 patent requires the two image display locations to be different. For example, it could equally be the case that in the example of Fig. 2, when the user selects the DVD, the image from the DVD is displayed in the same location as was the image from the game console, and the list to the left of the images scrolls upwards. The specification is silent regarding the relative locations of the images, and a claim that requires the two images to be displayed in different locations is drawn to an unsupported invention.
The applicant submits that because the two images “correspond to different port information” they will be displayed in “different positions.” Remarks pg. 16. This is not persuasive. As described above, there is nothing in the claims or specification that shows that this must be the case. That the images “correspond” to respective connection port information only requires that, for example, the video game image corresponds to (that is, has a same source, or is in agreement with1) the “Video – NINTENDO WII” connection port information. See ‘228 patent Fig. 2 and 3. This provides no limitation on the location where the images are displayed.
The applicant argues that claim 1 likewise requires that the “first and second position of claim 1 are different positions.” Remarks pg. 16. For reasons given above, this is not persuasive. Claim 43 depends from claim 1, and explicitly recites that the positions are different. Therefore by claim differentiation, because claim 43 must further limit claim 12, the scope of claim 1 includes something different – namely, that the positions are not different. It is therefore maintained that the Nobori-Doumuki combination renders these claims obvious. In addition, these comments introduce uncertainty in claim scope. See below.
Furthermore, Nobori discloses displaying the first and second images in different locations. See the rejection of claims 43 and 44 below.
Terminal Disclaimer
The terminal disclaimer filed on 02/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12,096,066 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 43-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 43-44 recite that the “second position on which the second moving image is displayed is different from the first position on which the first moving image is displayed.” This is not disclosed in the specification. See the discussion above regarding why the ’228 patent specification does not support this claim limitation.
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 1-44 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 displaying a first moving image at a first position, and a second moving image at a second position. The applicant argues that the “first and second position of claim 1 are different positions.” See 02/20/2026 Remarks pg. 16. However, claim 43 depends from claim 1, thus provides a further limitation on claim 1, and requires the positions to be different. Therefore by claim differentiation, claim 1 includes in its scope something different than claim 43, including that the positions are not different. Because the applicant argues that the positions must be different, but the claim scope encompasses that the positions are not different, the scope of the claim is uncertain. Claims 2-21 and 43 depend from claim 1 and inherit this indefiniteness. Claims 22-42 and 44 include similar language and are rejected for reasons described above.
Claim Rejections - 35 USC § 103
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, 5-11, 13-24, 26-32, and 34-44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nobori, US 20050200811 in view of Doumuki, US 20090015723 (support for the passages that are relied upon in this rejection is found in 60/936,056, filed 06/18/2007).
Claim 1: Nobori discloses a display device (Fig. 1), comprising:
a display (Fig. 1: 123: see also ¶25);
a first external interface configured to be connected to a first external device (Image input interface 21 is configured to be connected to a first external device 201. See Fig. 1: 21 and ¶25);
a second external interface configured to be connected to a second external device (Image input interface 22 is configured to be connected to a second external device 202. See Fig. 1: 22 and ¶25); and
a controller (Fig. 1: 40 and 110 are CPUs that control operations of the device. ¶¶ 26 and 29) configured to:
display, on the display, an external source list menu including first connection port information for identifying the first external interface and second connection port information for identifying the second external interface (A list of external interfaces is displayed in an external source list menu. See Fig. 3:310B and ¶50.),
after detecting a first connection signal indicating the first external device is connected to the first external interface, display, on the external source list menu, a first moving image from the connected first external device after receiving a first command signal (In a preview screen, image information (which is a moving image, or video: see ¶6) that is received from a connected external device is displayed in the source list menu. ¶49. This preview display is performed in response to a user selection in the menu. Id. Therefore this occurs after receiving a command signal. In addition, the display of the first moving image inherently occurs after detecting a first connection, as the image information is received from the connected device), wherein the first moving image is displayed on a first position corresponding to the first connection port information identifying the first external interface in the external source list menu (The video is displayed in location 310A, having the lower tab that indicates the selected source. See Fig. 3 and ¶52. This position therefore corresponds to the first connection port information (in this case, 3RCA) and identifies the interface by which the external device is connected), and
after detecting a second connection signal indicating the second external device is connected to the second external interface, display, on the external source list menu, a second moving image from the connected second external device after receiving a second command signal from the user, wherein the second moving image is displayed on a second position corresponding to the second connection port information identifying the second external interface in the external source list menu (The user may select a second external source / interface, after which a second video preview image from that source is displayed in the region 310A. Fig. 3 and ¶¶49-54. This second video image is displayed in region 310B having the lower tab that indicates the selected source. Id. This disclosure meets the broadest reasonable interpretation (BRI) of the “second position” when that term is interpreted in light of the specification. See e.g. ‘228 patent at 5:66-6:6. In particular, neither the claims nor the specification describe that the claimed “first position” and “second position” are different positions.).
Nobori fails to disclose that the command signals are received from a remote controller.
Doumuki discloses a display device that includes interfaces to connect to a plurality of external source devices. See Fig. 1 and ¶22. The display device displays a list of sources, which include HDMI and broadcast tuners. ¶38. Command signals to select a particular source are received from a remote controller. ¶43.
It would have been obvious to a skilled artisan before the time of the invention to modify the system of Nobori with the teachings in Doumuki by enabling a television tuner as a connected source and enabling the user to perform selections using a remote controller. The rationale for this modification would have been to improve user convenience while also providing access to a greater variety of content.
Claim 2: Nobori-Doumuki discloses that the controller is further configured to display, on the external source list menu, the first moving image from a first time when the first command signal is received until a second time when the second command signal is received (A first-selected preview video is displayed when the source is selected, and display of the preview video changes when a second source is selected. Nobori ¶¶49-54.).
Claim 3: Nobori-Doumuki discloses that the first command signal is a signal indicating the first moving image is to be displayed on the first position corresponding to the first connection port information, and wherein the second command signal is a signal indicating the second moving image is to be displayed on the second position corresponding to the second connection port information (Each preview video is displayed upon selection, i.e. upon a first and second command signal. Nobori ¶¶49-54.).
Claim 5: Nobori-Doumuki discloses that the controller is further configured to display the external source list menu in a form of an OSD (on-screen-display) (Nobori Fig. 3 shows an on-screen display of the list of sources).
Claim 6: Nobori-Doumuki discloses a tuner to receive a broadcast signal, wherein the controller is further configured to display an image of a broadcast program included in the broadcast signal on the display (Doumuki ¶¶29 and 38.).
Claim 7: Nobori-Doumuki discloses that the external source list menu includes text describing at least one of the first and second external interfaces and the first and second external devices (Nobori Fig. 3).
Claim 8: Nobori-Doumuki discloses that the controller is further configured to display only one of the first and second moving images at one time (Nobori ¶¶49-54 and Fig. 3).
Claim 9: Nobori-Doumuki discloses that the external source list menu includes connection state information of the first or second external devices connected to the display device (The source list displays interfaces “to which the image input devices are connected.” Nobori ¶48. An interface having no connected device is indicated with “no-signal” text. Id. ¶¶ 53 and 56. Therefore the source list depicts connection state information).
Claim 10: Nobori-Doumuki discloses that the first moving image is displayed with a border (Nobori Fig. 3).
Claim 11: Nobori-Doumuki discloses that the first moving image is used as a first label representing the first external device, and the second moving image is used as a second label representing the second external device (The disclosure in Nobori Fig. 3 and ¶¶49-54 meets the BRI of this limitation. The ‘228 patent describes this “label” as a “moving image” (i.e., video: see 3:61-65) that is “representing information of the connected external device” (see 2:33-44). The video that is provided as a preview in Nobori therefore meets the BRI of the claim term “label.”).
Claim 13: Nobori-Doumuki discloses a memory configured to store the first and second moving images as the first and second connection port information, respectively (The preview images, which are first and second connection port information, are stored in frame memory 115. Nobori ¶37).
Claim 14: Nobori-Doumuki discloses that the external source list menu is displayed on the display in response a selection of a key (Nobori ¶¶48-49) on the remote controller (Doumuki ¶43).
Claim 15: Nobori-Doumuki discloses that the first external interface is a broadcast external interface for receiving a broadcast program from a broadcasting source (Duomuki ¶38), and the second external interface is one of a HDMI (High Definition Multimedia Interface) external interface for connecting to an external source via the HDMI external interface and an external terminal interface for connecting to an external terminal via the external terminal interface (Duomuki ¶38 and Nobori ¶6).
Claim 15: Nobori-Doumuki discloses that the external source is a digital disc player connected to the display device via the HDMI external interface (Duomuki ¶22 and ¶38 – the DVD player is an HDMI source device, connected via an HDMI external interface. See also ¶¶3-7.).
Claim 17: Nobori-Doumuki discloses that the controller is configured to display the first moving image by placing the first moving image on the first position corresponding to the first connection port information (Nobori Fig. 3. See also the treatment of this language in the rejection of claim 1.).
Claim 18: Nobori-Doumuki discloses that the controller is configured to display the second moving image by placing the second moving image on the second position corresponding to the second connection port information (Nobori Fig. 3. See also the treatment of this language in the rejection of claim 1.).
Claim 19: Nobori-Doumuki discloses that the first moving image is an image content currently being output from the first external device and the second moving image is an image content currently being output from the second external device (The preview image shows the video signal currently output from the external device. Nobori Figure 5 steps ST1 and ST8-ST10; ¶64.).
Claim 20: Nobori-Doumuki discloses that the controller is further configured to: if the first connection signal or the second connection signal is not detected, continue to display the first connection port information for identifying the first external interface and the second connection port information for identifying the second external interface on the external source list menu (Connection port information is displayed whether or not the connection signal is detected. See Nobori Fig. 2: 300C; Fig. 3: 310C; and ¶53).
Claim 21: Nobori-Doumuki discloses that the first moving image and the first connection port information are mapped, and wherein the second moving image and the second connection port information are mapped (Nobori ¶¶48-54 and 56 shows that the video preview image from the external device and the connection port information are correlated to each other, or mapped.).
Claim 22: see the rejection of claim 1. In addition, Nobori-Doumuki discloses a non-transitory computer readable medium storing computer-executable instructions that when executed by a processor of a display device, cause the processor to perform the operations of the method of claim 1 (Nobori Fig. 1 and ¶26).
Claims 23-24, 26-32, and 34-42: see rejection of claims 2-3, 5-11, and 13-21, respectively.
Claims 43 and 44: the second position on which the second moving image is displayed is different from the first position on which the first moving image is displayed (A first command signal to select the “3RCA” input results in a first image being displayed as shown in Fig. 3. See Nobori ¶49. Upon a second command signal to select the “LIST” tab, a list of moving images is displayed. Id. Fig. 4. and ¶¶ 54-55. In this list, a second moving image (i.e. “S TERMINAL”) is displayed at different coordinates, therefore at a different position, than the 3RCA image was displayed in Fig. 3. These images are therefore displayed in different positions. Given the specification’s lack of description relating to the “first” and “second position,” this disclosure in Nobori falls within the BRI of this claim language.).
Claims 4 and 25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nobori-Doumuki in view of Meerleer, US 20050117121.
Claims 4 and 25: Nobori-Doumuki fails to disclose the controller is further configured to display a menu for inputting a name of the first and second external devices, or the computer-executable instructions further cause the processor to perform the operation of controlling the display of the display device to display a menu for inputting a name of the first and second external devices.
Meerleer discloses a media device that receives inputs from a variety of sources, and displays a list of those sources. Fig. 4 and ¶88. The device is further configured to display a menu for inputting a name of the first and second external devices. Id.
It would have been obvious to a skilled artisan before the time of the invention to modify Nobori-Doumuki with teachings in Meerleer, the rationale being to enable users to have improved control over how the sources are displayed, which would enable the users to more readily identify source devices.
Claims 12 and 33 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nobori-Doumuki in view of Boger, EP 1096793.
Claims 12 and 33: Nobori-Doumuki fails to disclose that the first command signal includes a first capture start signal and a first capture end signal for capturing the first moving image, and the second command signal includes a second capture start signal and a second capture end signal for capturing the second moving image.
Boger discloses a source list menu that includes a thumbnail banner that depicts images corresponding to a variety of external sources. See Fig. 5 and ¶¶ 36-37. The video images that are shown in the thumbnail banner may come from a variety of sources, or they may be user-defined images. ¶37.
It would have been obvious to a skilled artisan before the time of the claimed invention to modify Nobori-Doumuki with the teachings in Boger to enable user-defined thumbnail videos to be displayed as the preview images in Nobori’s Fig. 3 interface. The rationale for this modification would have been to provide users with greater control over how their guides are presented, thereby enabling an improved user experience.
The Nobori-Doumuki-Boger combination does not disclose how the user-defined images are generated, thus fails to disclose that the first command signal includes a first capture start signal and a first capture end signal for capturing the first moving image, and the second command signal includes a second capture start signal and a second capture end signal for capturing the second moving image. However, official notice is taken this was well known in the art at the time of the invention. Creating a user-defined clip of a particular content source, such as content in Boger’s DVD or VCR (see Boger Fig. 5), using commands indicating a recording start and stop time, was widely known and practiced. Therefore it would have been obvious to the skilled artisan to modify Nobori-Doumuki-Boger to enable users to generate the user-defined preview images based on start/end recording commands to the respective content source (e.g. DVD, VCR, etc.), the rationale being to provide further customization of the user interface.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Signed,
/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
1 correspond. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011)
2 See 35 USC §112(d)