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 .
DETAILED ACTION
This office action is in response to application 19/216,609 filed 5/22/25. Claims 1-20 are pending with claims 1, 10, and 19 in independent form.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 10-17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Averbuch US 2006/0048192 A1.
Averbuch teaches:
Re: claim 1, A computer-implemented method comprising: receiving, at a delivery server, a triggering action performed by a viewer via a remote control while video content is being shown to the viewer on a display device associated with the remote control; identifying, via the delivery server and in response to the triggering action, data associated with a product displayed in the video content at a time of the triggering action; and delivering, via the delivery server, the data associated with the product to a device of the viewer ([0012]-[0016] selecting the info key pauses the DVD playback operation…a user can retrieve the metadata layer during DVD playback and view all available products and put the DVD playback into pause mode to tabs through and highlight the products that are wanted…the system compares the timecode with the timecode of the metadata to retrieve the information about the products…the user can purchase a product on display at a specific timecode of DVD playback which can be a downloadable digital product such as a movie, music, etc. that is downloaded to the DVD player).
Re: claim 2, The computer-implemented method of claim 1, wherein the triggering action comprises a pause of the video content ([0003], [0013]-[0014]).
Re: claim 3, The computer-implemented method of claim 2, wherein the pause of the video content is triggered by a pause button being selected on the remote control ([0003], [0013]-[0014]).
Re: claim 4, The computer-implemented method of claim 3, further comprising receiving, via the remote control, selection of the product for purchase via the display device ([0014]).
Re: claim 5, The computer-implemented method of claim 2, further comprising: detecting that the video content has been un-paused; causing the display device to display the data associated with the product after the video content has been un-paused ([0012]-[0016]).
Re: claim 6, The computer-implemented method of claim 1, wherein the video content comprises an advertisement ([0009]).
Re: claim 7, The computer-implemented method of claim 1, wherein the video content comprises at least one of a show or a movie (abstract; [0003], [0009]).
Re: claim 8, The computer-implemented method of claim 1, wherein: the data associated with the product comprises information about purchasing the product; and the method further comprises receiving, at the delivery server and responsive to the data associated with the product being displayed to the viewer, a request to purchase the product ([0012]-[0016]).
Re: claim 10, A system comprising: one or more physical processors; and physical memory comprising computer-executable instructions that, when executed by the one or more physical processors, cause at least one of the one or more physical processors to: receive, at a delivery server, a triggering action performed by a viewer via a remote control while video content is being shown to the viewer on a display device associated with the remote control; identify, via the delivery server and in response to the triggering action, data associated with a product displayed in the video content at a time of the triggering action; and deliver, via the delivery server, the data associated with the product to a device of the viewer ([0012]-[0016] selecting the info key pauses the DVD playback operation…a user can retrieve the metadata layer during DVD playback and view all available products and put the DVD playback into pause mode to tabs through and highlight the products that are wanted…the system compares the timecode with the timecode of the metadata to retrieve the information about the products…the user can purchase a product on display at a specific timecode of DVD playback which can be a downloadable digital product such as a movie, music, etc. that is downloaded to the DVD player).
Re: claim 11, The system of claim 10, wherein the triggering action comprises a pause of the video content ([0003], [0013]-[0014]).
Re: claim 12, The system of claim 11, wherein the pause of the video content is triggered by a pause button being selected on the remote control ([0003], [0013]-[0014]).
Re: claim 13, The system of claim 12, wherein the computer-executable instructions, when executed by the one or more physical processors, cause at least one of the one or more physical processors to receive, via the remote control, selection of the product for purchase via the display device ([0014]).
Re: claim 14, The system of claim 11, wherein the computer-executable instructions, when executed by the one or more physical processors, cause at least one of the one or more physical processors to: detect that the video content has been un-paused; and cause the display device to display the data associated with the product after the video content has been un-paused ([0012]-[0016]).
Re: claim 15, The system of claim 10, wherein the video content comprises an advertisement ([0009]).
Re: claim 16, The system of claim 10, wherein the video content comprises at least one of a show or a movie (abstract; [0003], [0009]).
Re: claim 17, The system of claim 10, wherein: the data associated with the product comprises information about purchasing the product; and the computer-executable instructions, when executed by the one or more physical processors, cause at least one of the one or more physical processors to receive, at the delivery server and responsive to the data associated with the product being displayed to the viewer, a request to purchase the product ([0012]-[0016]).
Re: claim 19, A non-transitory computer-readable medium comprising computer-executable instructions that, when executed by one or more physical processors of a computing device, cause the computing device to: receive, at a delivery server, a triggering action performed by a viewer via a remote control while video content is being shown to the viewer on a display device associated with the remote control; identify, via the delivery server and in response to the triggering action, data associated with a product displayed in the video content at a time of the triggering action; and deliver, via the delivery server, the data associated with the product to a device of the viewer ([0012]-[0016] selecting the info key pauses the DVD playback operation…a user can retrieve the metadata layer during DVD playback and view all available products and put the DVD playback into pause mode to tabs through and highlight the products that are wanted…the system compares the timecode with the timecode of the metadata to retrieve the information about the products…the user can purchase a product on display at a specific timecode of DVD playback which can be a downloadable digital product such as a movie, music, etc. that is downloaded to the DVD player).
Re: claim 20, The non-transitory computer-readable medium of claim 19, wherein the triggering action comprises a pause of the video content ([0003], [0013]-[0014]).
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Averbuch US 2006/0048192 A1 in view of Bradley et al. WO 2013/126382 A1.
The teachings of Averbuch have been discussed above.
Averbuch fails to specifically teach re: claims 9 and 18, wherein the product comprises a QR code associated with a link to information about the product.
However, Bradley teaches scanning a QR code shown on a television show, movie, informercial, video game, etc. with a smartphone and performing an actionable event such as opening a website linking to a product that can be purchased by a user ([004]-[005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Bradley into the method of system of Averbuch as an obvious matter of design choice to allow a viewer to easily identify and purchase products seen in media or television thereby increasing sales of products ([003]).
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-50 of copending Application No. 18/947,517 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite similar limitations of the ‘517 application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,416,918 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite similar limitations of the ‘918 patent.
For instance, in claim 1 of the current application and in the ‘517 application and the ‘918 patent, the applicant claims:
Application No. 19/216,609
Application No. 18/947,517
Patent No. 11,416,918 B2
1. A computer-implemented method comprising: receiving, at a delivery server, a triggering action performed by a viewer via a remote control while video content is being shown to the viewer on a display device associated with the remote control; identifying, via the delivery server and in response to the triggering action, data associated with a product displayed in the video content at a time of the triggering action; and delivering, via the delivery server, the data associated with the product to a device of the viewer.
1. A computer-implemented method comprising: receiving, at a delivery server, a triggering action performed by a viewer while video content is being shown to the viewer; identifying, via the delivery server and in response to the triggering action, a product displayed in the video content at a time of the triggering action; ascertaining, via the delivery server, a preference of the viewer, wherein at least one of: the product is displayed in the video content based on the preference of the viewer of the video content, or data associated with the product is selected based on the preference of the viewer; facilitating purchase or license of the product by delivering, via the delivery server, the data associated with the product to a device of the viewer.
1. An automated method for identifying for purchase one or more products in digital content, comprising: displaying digital content on a display of an electronic display device, the digital content representing at least one product; analyzing via one or more processors the digital content to identify the product; ascertaining via said one or more processors any product placement data associated with the product; communicating electronically, if there is no product placement data associated with the product, data representing the identified product or data corresponding to the product with at least one external server over a computer network, said at least one external server representing a recognition server; receiving a recognized product from the recognition server that performs product recognition processing on the communicated data to ascertain the recognized product; ascertaining via data from one or more external servers if the recognized product is available for purchase; receiving input from a viewer of the digital content to initiate purchase of the recognized product available for purchase.
Therefore, in respect to above discussions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of claims 1-50 of co-pending application 18/947,517 and claims 1-48 of the ‘918 patent as a general teaching for a method and system of purchasing a product at a delivery server, to perform the same function and method as claimed in the instant application. The claims of the instant application obviously encompass the claimed invention of the ‘517 application and the ‘918 patent and differ only in terminology.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTY A HAUPT whose telephone number is (571)272-8545 and email address is kristy.haupt@uspto.gov. The examiner can normally be reached on Mon-Sun 5:30 AM- 10PM; Flex during day.
If all attempts to reach the examiner by telephone and email are unsuccessful, the examiner’s supervisor, Michael Lee, can be reached at telephone number 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTY A HAUPT/
Primary Examiner, Art Unit 2876
KAH