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 .
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.
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 1-10, 12-20 of U.S. Patent No. 11,985,385. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower patented claims fully disclose and encompass every claimed limitation of the instant application with any differences amounting to minor obvious variations between a system and computer readable medium performing the method.
For example:
Claim 1 of the instant application Claim 1 of Patent No. 11,985,385
A method for controlling media-content presentation based on user presence, the method comprising:
A method for controlling media-content presentation based on user presence, the method comprising:
determining, by a computing system, a quantity of users present at a media-presentation device, wherein the quantity is at least one; and
determining, by a computing system, a quantity of users present at a media-presentation device, wherein the quantity is at least one; and
based on the determining, using, by the computing system, the determined quantity of users present at the media-presentation device as a basis to control what media content the media-presentation device presents,
based on the determining, using, by the computing system, the determined quantity of users present at the media-presentation device as a basis to control what media content a media player outputs for presentation by the media-presentation device,
wherein using the determined quantity of users as a basis to control what media content the media presentation device presents comprises
wherein using the determined quantity of users as a basis to control what media content the media player outputs for presentation comprises
(i) finding from past-usage data that the media-presentation device has presented given media content when the same determined quantity of users was present at the media-presentation device and
(i) finding from past-usage data that the media player has played given media content when the same determined quantity of users was present at the media-presentation device; and
(ii) based on the finding, causing the media-presentation device to present the given media content.
(ii) based on the finding, causing the media player to output the given media content for presentation by the media-presentation device.
Similarly, claims 2-20 of the instant application correspond to claims 2-10, 12-20 of US Patent No. 11,985,385.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,348,815. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower patented claims fully disclose and encompass every claimed limitation of the instant application with any differences amounting to minor obvious variations between a system and computer readable medium performing the method.
For example:
Claim 1 of the instant application Claim 1 of Patent No. 12,348,815
1. A method for controlling media-content presentation based on user presence, the method comprising:
1. A method for controlling media playout based on user presence, the method comprising:
determining, by a computing system, a quantity of users present at a media-presentation device, wherein the quantity is at least one; and
determining, by a computing system, a quantity of users present at a media-presentation device, wherein the quantity is at least one; and
based on the determining, using, by the computing system, the determined quantity of users present at the media-presentation device as a basis to control what media content the media-presentation device presents,
based on the determining, using, by the computing system, the determined quantity of users present at the media-presentation device as a basis to control providing of media to a media player for playout on the media-presentation device,
wherein using the determined quantity of users as a basis to control what media content the media presentation device presents comprises
wherein using the determined quantity of users as a basis to control providing of media to the media player for playout on the media presentation device comprises
(i) finding from past-usage data that the media-presentation device has presented given media content when the same determined quantity of users was present at the media-presentation device and
(i) finding from past-usage data that the media player has played out given media content when the same determined quantity of users was present at the media-presentation device and
(ii) based on the finding, causing the media-presentation device to present the given media content.
(ii) based on the finding, providing the given media content to the media player for playout on the media-presentation device.
Similarly, claims 2-20 of the instant application correspond to claims 2-20 of US Patent No. 12,348,815.
Allowable Subject Matter
Claims 1-20 would be allowable upon timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) so as to overcome the rejections based on nonstatutory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James R Sheleheda whose telephone number is (571)272-7357. The examiner can normally be reached M-F 8 am-5 pm CST.
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, 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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/James R Sheleheda/Primary Examiner, Art Unit 2424
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