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
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 7 and 10 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.
Referring to claim 7, the claim limitation of “the monitored media content comprises media content presented via the media presentation device” is logically indefinite in view of the antecedent basis presented in claim 1 that states, “monitoring media content resulting in monitored media content, the monitoring being performed without presenting the monitored media content via a media presentation device.” It is indefinite as to whether there is, or is not, presentation of monitored media content at a media presentation device.
Referring to claim 10, the claim limitation of “the primary media content” possesses no antecedent basis anywhere prior in claim 10, nor in antecedent claim 1. It is indefinite as to whether this limitation is referring to any of the prior “media content” limitations or if it is intended to be a new limitation. For the purpose of expediting prosecution of the instant application, the Examiner will interpret this claim limitation as “the monitored media content”.
Clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In stating “the monitored media content comprises media content presented via the media presentation device”, claim 7 fails to include all the limitations of, nor further define, claim 1, upon which it depends, which states “monitoring media content resulting in monitored media content, the monitoring being performed without presenting the monitored media content via a media presentation device”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-12, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sparrell US 20080168503.
Referring to claim 1, Sparrell discloses a system, comprising:
a processor and a memory that stores executable instructions that, when executed by the processor of the system, facilitate performance of operations (see paragraph 0049), the operations comprising:
monitoring media content resulting in monitored media content, the monitoring being performed without presenting the monitored media content via a media presentation device (see Paragraphs 0021, 0039, and 0047 for disclosing media content in the form of a baseball game is monitored while not being presented via a media presentation device/television);
obtaining supplementary data describing the monitored media content and presenting the supplementary data via a user interface (see Figs. 4 and 5, and Paragraphs 0039-0043 for disclosing supplementary data describing the events of the non-presented baseball game is obtained and presented via a user interface).
Referring to claim 2, Sparrell discloses the monitored media content is secondary media content, and wherein the operations further comprise presenting primary media content via the media presentation device (as seen in the rejection of claim 1, wherein the baseball game (e.g., BOS vs KC) is secondary media content because the user has elected to watch primary media content (e.g., SF vs LA baseball game) on the media presentation device).
Referring to claim 3, Sparrell discloses presenting the supplementary data comprises presenting the supplementary data via the media presentation device (as seen in the rejection of claim 1 in Figs. 4-5).
Referring to claim 4, Sparrell discloses based on user input via an interactive interface of the user interface, switching from presenting the primary media content via the media presentation device to presenting the secondary media content via the media presentation device (see Figs. 4-5 and Paragraphs 0039-0043 for disclosing the user can supply input via the interactive interface overlays seen in the user interface to switch from presenting the SF v LA game to presenting the BOS v KC game on the media presentation device/television).
Referring to claim 5, Sparrell discloses the supplementary data is first supplementary data, and wherein the operations further comprise detecting interaction with the interactive interface, and in response to the detecting, switching from presenting the primary media content via the media presentation device to presenting the secondary media content via the media presentation device, monitoring the primary media content to obtain second supplementary data, and presenting the second supplementary data without presenting the primary media content via the media presentation device (see Paragraph 0043 for disclosing the supplementary data is first supplementary data regarding the BOS v KC game, and after switching the television from displaying the SF v LA game to displaying the BOS v KC game via the television, the SF v LA game is monitored and second supplementary data regarding the events related to the SF v LA game are provided without presenting the SF v LA game on the television).
Referring to claim 7, Sparrell discloses the monitored media content comprises media content presented via the media presentation device (see Paragraph 0039-0041 for disclosing the monitored media content is later displayed/presented by the media presentation device).
Referring to claim 8, Sparrell discloses the monitored media content comprises at least one of previously presented media content, or to be presented media content (see Paragraphs 0021 and 0039-0044 for disclosing the monitored media content in the form of the BOS v KC baseball game or news segments that can be either content that has previously been presented or will (to) be broadcast/presented).
Referring to claim 9, Sparrell discloses monitoring the media content comprises determining whether the monitored media content is relevant to a user based on relevance criterion data representative of a relevance criterion, and wherein presenting the supplementary data occurs in response to the monitored media content satisfying the relevance criterion (see Paragraphs 0019, 0022, 0034-0035, 0038-0039, 0047 for disclosing monitoring media content comprises determining whether the media content is relevant to a user based on relevance criterion data representative of a relevance criterion (i.e., [relevance criterion data/user preferences or actions] indicating [relevance criterion/positive interest]).
Referring to claim 10, Sparrell discloses the monitoring the media content comprises identifying scenes of the monitored media content, wherein obtaining the supplementary data comprises obtaining scene summary data describing the scenes of the monitored media content, and wherein presenting the supplementary data comprises presenting the scene summary data (see Paragraph 0047).
Referring to claim 11, Sparrell discloses presenting the supplementary data to a user comprises outputting at least one of audio data, text data, graphics data, file data or image data (see Figs. 4-5 and Paragraphs 0039-0043).
Referring to claim 12, Sparrell discloses the monitored media content is secondary media content, wherein the supplementary data is first supplementary data, and wherein the operations further comprise:
presenting primary media content via the media presentation device, wherein the user interface comprises an interactive interface that outputs the supplementary data and allows for interaction to switch from presenting the primary media content via the media presentation device to presenting the secondary media content via the media presentation device;
detecting user input via interaction with the interactive interface that selects a portion of the supplementary data, resulting in a selected portion of the supplementary data; and
in response to the detecting, switching from presenting the primary media content via the media presentation device to presenting the secondary media content via the media presentation device from an output position corresponding to the selected portion of the supplementary data (as seen in the rejection of claim 5 and all intervening claims, further noting the claim limitation of “a portion of the supplementary data” is interpreted as any one alert of the plurality of alerts received regarding topics of interest to the user occurring in other monitored media content).
Claim 14 is rejected on the same grounds as claim 9, further noting it is the method being performed by the system seen in the rejection of claim 9.
Claim 15 is rejected on the same grounds as claim 9.
Claim 16 is rejected on the same grounds as claim 3.
Claim 17 is rejected on the same grounds as claim 2.
Claim 18 is rejected on the same grounds as claim 4.
Claim 19 is rejected on the same grounds as claim 9, further noting Sparrell discloses a non-transitory machine-readable medium, comprising executable instructions that, when executed by a processor, facilitate performance of operations, wherein the operations comprise the operations performed by the system as seen in the rejection of claim 9.
Claim 20 is rejected on the same grounds as claim 12.
Claim Rejections - 35 USC § 103
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sparrell US 20080168503 in view of Kim et al (hereinafter Kim) US 10341742.
Referring to claim 6, Sparrell discloses the media presentation device is a first media presentation device (e.g., a television), wherein the monitored media content comprises secondary media content, wherein presenting the supplementary data comprises presenting the supplementary data, and wherein the operations further comprise presenting primary media content via the first media presentation device as seen in the rejection of claim 5 and all intervening claims.
Sparrell is unclear as to presenting supplementary data via a second media presentation device.
Kim discloses presenting supplementary data via a second media presentation device (see Col. 7, Lines 5-14).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the output of data to a smart phone of Kim with the system of Sparrell in order to ensure the user can perceive the alert/supplementary data when it is determined that the user is directing their attention to the second device based on determining that the second device is greater than a threshold distance away from the first device (see Kim, Col. 6, Line 64 – Col. 7, Line 4).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sparrell US 20080168503 in view of Palmateer et al (hereinafter Palmateer) US 20170182283.
Referring to claim 13, Sparrell discloses the claim limitations as seen in the rejection of claim 1.
Sparrell is unclear as to evaluating, via data from a monitoring device, user attentiveness data and in response to determining that the user attentiveness data indicates user inattentiveness, communicating with a program to take action based on the user inattentiveness
Palmateer discloses evaluating, via data from a monitoring device, user attentiveness data and in response to determining that the user attentiveness data indicates user inattentiveness, communicating with a program to take action based on the user inattentiveness device (see Paragraphs 0155-0156, 0167, 0171 for disclosing obtaining biometric sensor data indicating a user is inattentive (i.e., has fallen asleep) to a media presentation device and in response to determining that the user has been asleep/inattentive to the media presentation device, obtaining supplemental data (i.e. a summary) of the portion of the media asset the user missed is prepared (i.e. the media asset is monitored to provide what was missed)).
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the attentiveness monitoring device of Palmateer with the system of Sparrell in order to allow a user to catch up on media assets the user missed while he or she was sleeping when the device has detected that the user has fallen asleep (see Palmateer, Paragraph 0010).
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, 5, and 8, respectively, of U.S. Patent No. 12335560 in view of Sparrell US 20080168503.
Referring to claim 1 of the instant application, claim 8 of the cited patent discloses all of the claim limitations except for monitored media content without presenting the monitored media content via a media presentation device.
Sparrell discloses monitored media content without presenting the monitored media content via a media presentation device as seen in the rejection of claim 1 in the prior art rejection above.
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the monitoring of media that is not being presented of Sparrell in order to fulfill a need for allowing a viewer to view an initial broadcast program while simultaneously monitoring information as to the viewer's desired information, alert the viewer as to new content corresponding to the viewer's desired information, either as it happens or shortly thereafter, and allow the viewer to spontaneously select the new content for immediate playback or recording, and spontaneously playback or record the initial broadcast program being displayed (see Sparrell, Paragraph 0005).
Referring to claim 14 of the instant application, claim 1 of the cited patent discloses all of the claim limitations except for monitored media content without presenting the monitored media content via a media presentation device.
Sparrell discloses monitored media content without presenting the monitored media content via a media presentation device as seen in the rejection of claim 14 in the prior art rejection above.
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the monitoring of media that is not being presented of Sparrell in order to fulfill a need for allowing a viewer to view an initial broadcast program while simultaneously monitoring information as to the viewer's desired information, alert the viewer as to new content corresponding to the viewer's desired information, either as it happens or shortly thereafter, and allow the viewer to spontaneously select the new content for immediate playback or recording, and spontaneously playback or record the initial broadcast program being displayed (see Sparrell, Paragraph 0005).
Referring to claim 19 of the instant application, claim 5 of the cited patent discloses all of the claim limitations except for monitored media content without presenting the monitored media content via a media presentation device.
Sparrell discloses monitored media content without presenting the monitored media content via a media presentation device as seen in the rejection of claim 19 in the prior art rejection above.
Before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to incorporate the monitoring of media that is not being presented of Sparrell in order to fulfill a need for allowing a viewer to view an initial broadcast program while simultaneously monitoring information as to the viewer's desired information, alert the viewer as to new content corresponding to the viewer's desired information, either as it happens or shortly thereafter, and allow the viewer to spontaneously select the new content for immediate playback or recording, and spontaneously playback or record the initial broadcast program being displayed (see Sparrell, Paragraph 0005).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS T CORBO whose telephone number is (571)270-5675. The examiner can normally be reached on Monday - Friday 11am-7pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached at 571-272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS T CORBO/
Primary Examiner, Art Unit 2424
07/27/2026
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