DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The following is a non-final, first office action on the merits, in response to application filed 6/13/2025. Claims 21-31 have been examined and are currently pending.
Claimed Foreign Priority
The Applicant claims benefit of foreign benefit of Spain filed on 4/27/2009. Receipt is NOT acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have Not been placed of record in the file.
This application discloses and claims only subject matter disclosed in prior application
18/638070 (now patent 12,346,930), filed 4/17/2024, which is in turn a continuation of
18/168107 (now patent 11,989,752), filed 2/13/2023, which is in turn a continuation of 17/399906 (now patent 11,593,834), filed 8/11/2021, which is in turn a continuation of 16/408592 (now Patent 11,093,965), filed 5/10/2019, which is in turn a continuation of 14/858110 (now Patent 10,341,406), filed 9/18/2015, which is in turn a continuation of 12/767684 (now Patent 9,154,532), filed 4/26/2010, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation of 18/638070.
Response to Amendment
The amendment filed on 8/15/2025 cancelled claim 1-20. No claim was previously cancelled. New claims 21-31 are added. No claim has been amended. Therefore, claims 21-31 are examined and pending.
Information Disclosure Statement
Part of the information disclosure statement (IDS) submitted on 9/5/2025 does not follow the provisions of 37 CFR 1.97. The foreign references, international search report, English translation of the international search report, and non-patent literature (NPL) shown in the IDS has Not been received.
Accordingly, these documents that has been lined through have not been received and thus not been considered as to the merits.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-31 (method) are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over current allowed co-pending independent claims 1, 8, 15 of U.S. Application 18/638070 (now patent 12,346,930). Although the conflicting claims are not identical, they are not patentably distinct from each other of claim 21, respectively of the instant application because all the elements of the instant application claim 21 are to be found in patent claims 1, 8, 15. The difference between the instant application claims and the patent claims lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of the claims 1, 8, 15, of the patent is in effect a “species” of the “generic” invention of the instant application claim 21. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant application claim 21 are anticipated by the claim 1, 8, 15 of the patent, it is not patentably distinct from the claims of the patent.
For reference, the following table matches the primary limitations of allowed claim 1 of application 18/638070 (now patent 12,346,930) with the similar limitations of claim 21 of the instant application (differences highlighted in bold type).
Allowed Claims in patent application 18/638070 (now Patent 12,346,930)
Current Application 19/238048 which is a Continuation of patent Application 18/638070, (now Patent 12,346,930)
Claim 1 (apparatus)
An apparatus comprising:
A server
receive, from a user computing device, a first internet protocol communication comprising a request for a digital multimedia file and identifying data for one of a plurality of affiliated or referring websites;
in response to the request, transmit to the user computing device: (i) first data usable to establish a streaming session with the server; and (ii) the identifying data of the one of the plurality of affiliated or referring websites associated with the request from the user computing device;
receive a second internet protocol communication comprising the identifying data and an initiation message based on the first data;
after receiving the second internet protocol communication, stream requested content to the user computing device via the streaming session based on the first data transmitted to the user computing device;
associate the streaming session with the one of the plurality of affiliated or referring websites via the identifying data and by assigning a session identifier to the streaming session and storing the session identifier in a database;
track advertisements transmitted to the user computing device via the streaming session; and
effect remuneration to the one of the plurality of affiliated or referring websites using data related to the tracked advertisements transmitted to the user computing device.
Claim 21 (method)
analyzing a first content of a referring web site;
analyzing a second content of a multimedia file;
automatically selecting a particular multimedia file for association with the referring website based on similarities between the first content and the second content;
associating the referring website with the particular multimedia file;
generating an advertising link to a digital file to represent the association of the referring website and the particular multimedia file;
providing the advertising link to the referring website;
receiving, by a web server, in response to a computing device clicking the advertising link, a request for the digital file associated with the referring website and data identifying the referring web site;
updating the digital file by the web server to incorporate an advertisement and the referring web site identifying data; and
transmitting, by the web server, the updated digital file to the computing device.
This is a nonstatutory double patenting rejection because the patentably indistinct claims have in fact been patented.
Therefore, as discussed above, the scope of claim 21 (method) of the present application and allowed claim 1 (apparatus) respectively of U.S. Application No. 18/638070 (now patent 12,346,930) are practically identical.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the same method steps, and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other invention.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include “storing the session identifier”, “effect remuneration to the referring website”, claimed in this application as taught or suggested by claims 1, 8, 15 of patent application 18/638070 because instant application claims 21-31 would have been obvious over the reference claims 1-20 in allowed application 18/638070. An approved Terminal Disclaimer is required.
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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-31 are NOT rejected under the Alice/Mayo styled 35 U.S.C. 101 because the claimed invention is NOT found to be directed to an abstract idea. The claim, as a whole, the combination of elements renders a special way of how the streaming/advertising link controls the tracking of advertisement transmitted to the user computing device, which is meaningful, non-conventional, and is integrated into a practical application in computer computer-related technology to overcome Alice 101 rejection.
This statement is simply made to inform the record that the claims were considered under the Alice/Mayo analysis.
Allowable Subject Matter
The instant continuation application has the allowable features presented in 18/638070 (now patent 12,346,930), filed 4/17/2024. As to the prior art rejections, upon further search and consideration, it is found that claims 21-31 are allowable subject to outstanding double patenting issues. An approved terminal disclaimer is required.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The closest prior art of record are:
Fernandez (US 2008/0250029),
Cohen (US 2006/0031892),
Maes (US 2009/0132717),
Stokking et al. (US 2011/0010459),
Jung, (US 2009/0271525),
Dey et al. (US 2008/00865780),
Paul (US 2003/0191801), and
Nurminen et al. (US 2009/0049004),
NPL1--J. Brassil and H. Schulzrinne, "Structuring Internet media streams with cueing protocols," in IEEE/ACM Transactions on Networking, vol. 10, no. 4, pp. 466-476, Aug. 2002, doi: 10.1109/TNET.2002.801418. (Year: 2002)
NPL2--M. Bolic, Z. Begic and E. Secerbegovic, "Streaming Media Transport Protocols On Basis Of Next Generation Internet," 2008 IEEE International Symposium on Signal Processing and Information Technology, Sarajevo, Bosnia and Herzegovina, 2008, pp. 357-362, doi: 10.1109/ISSPIT.2008.4775645. (Year: 2008)
are cited or referenced because they are pertinent to applicant's disclosure.
The prior art made of record and Not relied upon is considered pertinent to applicant’s disclosure.
Farago et al. (US 2007/0083611), determines content of a multimedia item, and a distribution component that facilitates presentation of one or more advertisements associated with the content. Advertisement presentation, selection and/or generation can be based on context information pertaining to the item and/or end user as well as ratings influenced by advertisers, among other things.
Pulitzer (US patent 6928413), teaches using a broadcast system in conjunction with a packet-switched network to advertise the products.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm. Fax is 571-270-6489.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi, can be reached on 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUN M LI/Primary Examiner, Art Unit 3685
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