DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive.
Applicant requests that the nonstatutory double patenting rejection be held in abeyance until conclusion of prosecution on the merits.
In response, since the Terminal Disclaimer is not received, the nonstatutory double patenting rejection is herein repeated.
Applicant argues that Sussman does not disclose or suggest a control unit that receives information on an operation mode of a broadcast receiver, the operation mode being a number input mode, and then "control the display of the control device to display the UI configured to receive a touch input on the display of at least one number as a displayable user interface window" based on the received operation mode. The functions of the remote control unit 3 are fairly conventional, with the exception that the remote control unit 3 is configured to receive advertisement information from the set-top box. The number input panel 42 is a static, hardware panel that is not part of a UI. Claim 1 recites "control the display of the control device to display the UI configured to receive a touch input on the display of at least one number as a displayable user interface window." The display window 41 is not a UI that includes number entry, and there is no description in Sussman that indicates that this is optimized to input a number based on the operation mode of the broadcast receiver being a number input mode. Furthermore, although Sussman indicates that the keys may be implemented on an entire touch display, there is no suggestion that the keys would no longer be static, as Sussman only describes changing the manual interface of FIG. 3 to a fully touch screen interface. Additionally, the remote control unit 3 does not receive information from the set-top box or TV regarding its own operation mode. This type of communication does not occur in Sussman. The buttons 44-49 are only for retrieving the ad data. See Sussman at col. 5:38-61. Thus, even if the remote control unit 3 would receive information from the TV, this information would not indicate that the operation mode of the broadcast receiver is a number input mode, and Sussman would not further control the display to "display the UI configured to receive a touch input on the display of at least one number as a displayable user interface window". Park fails to cure the deficiencies of Sussman, as Park is silent as to the features of claim 1. Therefore, Applicant respectfully submits that claim 1 is patentable because the cited references, either alone or in any combination thereof, do not teach or suggest all of the features of claim 1.
In response, the Examiner respectfully disagrees. First, it is noted that the claim does not recite the keys of the remote controller is static or not. Sussman discloses in col. 5, lines 32-32 that the remote control has Standard channel input number keys 42. These keys could be used to retrieve directly various ad's stored in the remote control 3. Sussman also discloses in col. 6, lines 32-35 that “Note that the various remote control 3 keys could be implemented, with relative ease as touch-screen options on the remote control's screen 41”. Sussman further discloses from col. 8, line 18 to col. 9, line 13 that the capability of the user to contact advertisers using remote control. Sussman additionally discloses in col. 5, lines 38-43 that “Get-TVInfo 44 key to request transmission of the currently displayed TV ad's page of teletext data from the set-top box 2 to the remote control 3. Note that the remote control 3 has non-volatile memory (NVRAM) and related control circuitry to store the requested page of ad' teletext data received from the set-top box 2”. From the above passage, it is clear that the remote control 3 of Sussman based on the operation mode of the broadcast receiver (see set-top box 2 is “ON” state) being a number input mode (input number keys 42), control the display of the control device to display the UI configured to receive a touch input on the display of at least one number (touch-screen options on the remote control’s screen 41 with the number keys 42) as a displayable user interface window. Thus, Sussman does indeed disclose the alleged claimed features.
Applicant states that the remaining claims are patentable at least reasons discussed in claim 1.
In response, as discussed above, Sussman discloses all the claimed limitations of claim 1.
Double Patenting
3. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,342,028 B2 in view of Sussman (US Patent No. 8,291,465 B2).
Regarding claim 1 of this application, claim 1 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claim 1, except for providing the claimed based on the operation mode of the broadcast receiver being a number input mode, control the display of the control device to display the UI configured to receive a touch input on the display of at least one number as a displayable user interface window. Sussman teaches that a display screen 41 on which data is displayed, the preferred embodiment uses an LCD display, e.g. the Kyocera KHS038AA1AJ-L89 240.times.320 pixel display. (3.2.3) Standard channel input number keys 42, these keys could be used to retrieve directly various ad's stored in the remote control 3 (Fig. 3, col. 5, lines 20-49). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate channel input number keys as taught by Sussman into claim 1 of U.S. Patent No. 12,342,028 B2's system in order to simplify the process of controlling the display.
Regarding claim 2 of this application, claim 2 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claim 2 and the display screen 41 (Fig. 3, col. 5, line 20 to col. 6, line 14 of Sussman).
Regarding claims 3-10 of this application, claims 3-10 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claims 3-10, respectively.
Regarding claim 11 of this application, claim 11 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claim 1, except for providing the claimed based on the operation mode of the broadcast receiver being a number input mode, displaying the UI which is optimized to input a number as a displayable user interface window. Sussman teaches that a display screen 41 on which data is displayed, the preferred embodiment uses an LCD display, e.g. the Kyocera KHS038AA1AJ-L89 240.times.320 pixel display. (3.2.3) Standard channel input number keys 42, these keys could be used to retrieve directly various ad's stored in the remote control 3 (Fig. 3, col. 5, lines 20-49). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate channel input number keys as taught by Sussman into claim 11 of U.S. Patent No. 12,342,028 B2's system in order to simplify the process of controlling the display.
Regarding claim 12 of this application, claim 12 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claim 12 and the display screen 41 (Fig. 3, col. 5, line 20 to col. 6, line 14 of Sussman).
Regarding claims 13-19 of this application, claims 3-9 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claims 13-19, respectively.
Regarding claim 20 of this application, claim 20 of U.S. Patent No. 12,342,028 B2 recites all the limitations of claim 20, except for providing the claimed based on the operation mode of the broadcast receiver being a number input mode, displaying the UI which is optimized to input a number as a displayable user interface window. Sussman teaches that a display screen 41 on which data is displayed, the preferred embodiment uses an LCD display, e.g. the Kyocera KHS038AA1AJ-L89 240.times.320 pixel display. (3.2.3) Standard channel input number keys 42, these keys could be used to retrieve directly various ad's stored in the remote control 3 (Fig. 3, col. 5, lines 20-49). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate channel input number keys as taught by Sussman into claim 20 of U.S. Patent No. 12,342,028 B2's system in order to simplify the process of controlling the display.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
6. Claims 1-2, 9-12 and 19-20 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipate by Sussman (US Patent No. 8,291,465 B2).
In considering claim 1, Sussman discloses all the claimed subject matter, note 1) the claimed a display is met by the display screen 41 (Fig. 3, col. 5, line 20 to col. 6, line 39), 2) the claimed a communication interface is met by the wireless transceiver 40 (Fig. 3, col. 5, line 20 to col. 6, line 39), 3) the claimed a processor configured to: control the communication interface to receive from the broadcast receiver, a menu information comprising information regarding contents provided by the broadcast receiver and information regarding an operation mode of the broadcast receiver, and control the display to display at least one of a user interface (UI) or the menu information, the UI corresponding to the operation mode of the broadcast receiver is met by a viewer uses a remote control 3 to interact with the set-top box 2 in order to obtain the associated page of ad' information for later, or immediate use, the ad' page of information is retrieved from TVInfo Memory 35, transmitted from the set-top box 2 to the remote control 3, stored in the remote control's memory NVRAM and displayed on the remote control's screen 41 (Figs. 1 and 3, col. 6, line 8 to col. 7, line 45), and 4) the claimed wherein the processor is further configured to: based on the operation mode of the broadcast receiver being a number input mode, control the display of the control device to display the UI configured to receive a touch input on the display of at least one number as a displayable user interface window is met by the channel input number keys 42, these keys could be used to retrieve directly various ad's stored in the remote control 3 (Fig. 3, col. 5, line 20 to col. 6, line 39).
In considering claim 2, the claimed wherein the processor is further configured to, based on the operation mode of the broadcast receiver being a content watching mode, control the display to display the UI which is optimized to control content watching as a displayable user interface window is met by a viewer uses a remote control 3 to interact with the set-top box 2 in order to obtain the associated page of ad' information for later, or immediate use, the ad' page of information is retrieved from TVInfo Memory 35, transmitted from the set-top box 2 to the remote control 3, stored in the remote control's memory NVRAM and displayed on the remote control's screen 41 (Figs. 1 and 3, col. 6, line 8 to col. 7, line 45).
In considering claim 9, the claimed wherein the processor is further configured to, based on the menu information being received through the communication interface from the broadcast receiver, identify the control device as a device for displaying the menu information is met by the channel Navigation keys 43 that are used to browse TV channels as well as to browse advertisement teletext data stored both in the remote control 3 and in TVInfo Memory 35. (3.2.5) Get- TVInfo 44 key to request transmission of the currently displayed TV ad's page of teletext data from the set-top box 2 to the remote control 3 and displayed on the remote control's screen 41 (Figs. 1 and 3, col. 6, line 8 to col. 7, line 45).
In considering claim 10, the claimed wherein the UI corresponds to the operation mode of the broadcast receiver, and wherein the corresponding to the operation mode of the broadcast receiver further comprises at least one of a TV mode, a DVD mode or a game mode is met by the channel Navigation keys 43 that are used to browse TV channels as well as to browse advertisement teletext data stored both in the remote control 3 and in TVInfo Memory 35. (3.2.5) Get- TVInfo 44 key to request transmission of the currently displayed TV ad's page of teletext data from the set-top box 2 to the remote control 3 and displayed on the remote control's screen 41 (Figs. 1 and 3, col. 6, line 8 to col. 7, line 45).
Claims 11-12 are rejected for the same reason as discussed in claims 1-2, respectively.
Claim 19 is rejected for the same reason as discussed in claim 9 above.
Claim 20 is rejected for the same reason as discussed in claim 1 above.
Claim Rejections - 35 USC § 103
7. 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 negatived by the manner in which the invention was made.
8. Claims 4-5 and 14-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sussman (US Patent No. 8,291,465 B2) in view of PARK (US Pub. No. 2010/0315563 A1).
In considering claim 4, Sussman discloses all the limitations of the instant invention as discussed in claim 1 above, except for providing the claimed wherein the processor is further configured to: identify a device for displaying the menu information among the control device and the broadcast receiver, and control the communication interface to transmit information regarding the identified device to the broadcast receiver based on the identification result. PARK teaches that the manipulator 110 receives a command to display at least one external device connected to the TV 200 from a user, also, the manipulator 110 receives user's selection of one of external devices connected to the TV 100 to display a control menu, for example, the set-top box 300 is selected from the displayed external devices available for selection (Figs, 1-2, paragraph #0045 to paragraph #0052). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the device selected as taught by PARK into Sussman's system in order to conveniently control the broadcast receiver.
In considering claim 5, the claimed wherein the processor is further configured to identify the device for displaying the menu information based on a user input selecting one of the control device and the broadcast receiver is met by the TV 100 to display a control menu (Figs, 1-2, paragraph #0045 to paragraph #0052).
The motivation to combine the references has been discussed in claim 4 above.
Claim 14 is rejected for the same reason as discussed in claim 4 above.
Claim 15 is rejected for the same reason as discussed in claim 5 above.
Allowable Subject Matter
9. Claims 3, 6-8, 13 and 16-18 would be allowable if rewritten to overcome the rejection under obviousness-type double patenting, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
10. THIS ACTION IS MADE FINAL. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRANG U TRAN whose telephone number is (571)272-7358. The examiner can normally be reached on M-F 10:00AM- 6:00PM.
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, JOHN W. MILLER can be reached on 571-272-7353. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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September 28, 2026
/TRANG U TRAN/Primary Examiner, Art Unit 2422
