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 .
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,831,951. Although the claims at issue are not identical, they are not patentably distinct from each other because 11,831,951 places limitations regarding the transmission methods being MMT and MPEG2-TS in the independent claim rather than in dependent claims and does not explicitly disclose a remote control.
Application No. 19/217,709 Claim 1
U.S. Patent No. 11,831,951 Claim 1
A broadcast receiving apparatus comprising:
A time controlling method for a broadcast receiving apparatus,
a receiver configured to receive a 4K broadcasting service and a 2K broadcasting service and demodulate the 4K broadcasting service and the 2K broadcasting service;
the broadcast receiving apparatus being allowed to receive a broadcasting wave via a broadcast transmission path, simultaneous broadcasting of a 4K broadcasting service and a 2K broadcasting service being executed by the broadcasting wave,
a display;
a first displaying step configured to receive the 4K broadcasting service included in the broadcasting wave and transmitted by an MMT method
a remote control receiver configured to receive a signal from a remote controller; and
a controller, wherein the receiver is configured to receive the 4K broadcasting service transmitted by a first transmission method and demodulate the 4K broadcasting service, and the controller is configured to control the display to display a broadcasting program of the 4K broadcasting service,
demodulate the 4K broadcasting service, and display a broadcasting program of the 4K broadcasting service;
wherein the receiver is configured to receive the 2K broadcasting service transmitted by a second transmission method and demodulate the 2K broadcasting service, and the controller is configured to control the display to display a broadcasting program of the 2K broadcasting service,
a second displaying step configured to receive the 2K broadcasting service included in the broadcasting wave and transmitted by an MPEG2-TS method, demodulate the 2K broadcasting service, and display a broadcasting program of the 2K broadcasting service
wherein the controller is configured to control clock synchronization processing for the 4K broadcasting service and clock synchronization processing for the 2K broadcasting service, and wherein the controller is configured to control:
a time controlling step configured to control clock synchronization processing for the 4K broadcasting service and clock synchronization processing for the 2K broadcasting service,
the clock synchronization processing for the 2K broadcasting service to continue even when the broadcasting program of the 4K broadcasting service is displayed on the display; and
wherein in the time controlling step, even when the broadcasting program of the 4K broadcasting service is displayed in the first displaying step, the clock synchronization processing for the 2K broadcasting service is continued; and
the clock synchronization processing for the 4K broadcasting service to continue even when a broadcasting program of the 2K broadcasting service is displayed on the display.
even when a broadcasting program the 2K broadcasting service is displayed in the second displaying step, the clock synchronization processing for the 4K broadcasting service is continued.
Claims 2-6 are similarly unpatentable over Claim 1 of U.S. Patent No. 11,831,951, which recites the 4K services is transmitted by an MMT method and the 2K services is transmitted by an MPEG2-TS method.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-6 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 of prior U.S. Patent No. 12,348,818. This is a statutory double patenting rejection. The claims of the outstanding application have been copied verbatim from U.S. Patent No. 12,348,818.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC D SALTARELLI whose telephone number is (571)272-7302. The examiner can normally be reached 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Flynn can be reached at (571) 272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC D SALTARELLI/Primary Examiner, Art Unit 2421
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