REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 19/255,554 (“the ‘554 application”) for U.S. Patent No. 8,949,917 (“the ‘917 Patent”).
Claims 1-20 have been cancelled. Claims 21-24 have been added and are currently pending.
Related Reissue Applications
The ‘554 application is a continuation reissue of 17/902480 (now RE50478), which was a continuation reissue of 16/784172 (now RE49200), which was a continuation reissue application of 15/424675 (now RE47853), which was a reissue of the ‘917 Patent.
Reason for Reissue
The Reissue Declaration by Inventor (“Reissue Dec by Inventor”) and the Substitute Statement in Lieu of an Oath or Declaration for Reissue Patent Application (“Substitute Statement”) were both filed June 30, 2025. Their error statements say,
“Patentee believes the original patent to be partly inoperative by reason of said patent claiming less than patentee had a right to claim. Specifically, issued Claim 1 is directed to a method comprising "determining user data for the user device" and "determining advertising content based on the user data." It was error to not include claims that do not recite "determining user data for the user device" or "determining advertising content based on the user data."
Further, issued Claim 1 recites "transmitting the first video and the plurality of videos to the user device for automatic sequential presentation of the first video and the plurality of videos based on the presentation order; and transmitting the advertising content to the user device for presentation with the first video and the plurality of videos." It was error to not include claims that recite "transmitting the first video for presentation at the user device" instead of "transmitting the first video and the plurality of videos to the user device." It was also error to not include claims that recite "transmitting the plurality of videos to the user device for automatic sequential presentation based on the presentation order, the automatic sequential presentation occurring after presentation of the first video" as a separate feature.
Newly added Claim 21 is identical to issued Claim 1 but for not claiming "determining user data for the user device," not claiming "determining advertising content based on the user data," and claiming "transmitting the first video for presentation at the user device; and transmitting the plurality of videos to the user device for automatic sequential presentation based on the presentation order, the automatic sequential presentation occurring after presentation of the first video," instead of "transmitting the first video and the plurality of videos to the user device for automatic sequential presentation of the first video and the plurality of videos based on the presentation order; and transmitting the advertising content to the user device for presentation with the first video and the plurality of videos.””
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because it is a copy of the reissue oath/declaration filed with the parent RE50478 and the error statement does not apply to the claims of the ‘554 application. For example, the declaration states that "Newly added claim 21 is identical to issued Claim 1 but for claiming "video metadata about the first video" instead of "user data for the user device"…” However new claim 21 does not recite limitations relating to “video metadata.”
Rejection under 35 U.S.C. 251
Claims 21-24 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Specification
The disclosure is objected to because of the following informalities: The cross-references to related applications should be amended to include that application 17902480 is now RE50478.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘917 Patent
1
23
a processor…in response to executing the computer instructions, the processor performs operations comprising
determining contextual data for the first video
See at least 1:61-65; 6:61-66; 10:21-44
2
23
a processor…in response to executing the computer instructions, the processor performs operations comprising
determining a plurality of videos based on the contextual data
See at least 12:28-47
3
23
a processor…in response to executing the computer instructions, the processor performs operations comprising
determining, based on the contextual data, a presentation order from among a plurality of possible presentation orders for presenting the plurality of videos
See at least 5:51-67; 12:22-27
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
A review of the ‘917 specification shows that claims 23-24 are computer-implemented limitations requiring programming/software. For example, the ‘917 Patent at 7:25-27, “The video content is presented to the user by a video player, which comprises a software program that executes on the user's computing device.”
See also the ‘917 Patent at 16:26-38, “In this embodiment, a plurality of third party web sites contain web pages that include hyperlinks directed to one or more of the plurality of videos stored on the server. As discussed, the hyperlinks typically are embedded in the web page by the operator of the website. When a user clicks on such a hyperlink in a web page (or when the page is loaded), a request for the specific video identified by the hyperlink is sent to the server. At step 519, the server receives a request for the specified video. In addition, clicking on the hyperlink may initiate a software application on the user's computing device (e.g., CLA) that initiates the video player and configure presentation of the videos and display of the still images 316 representing the next five videos to be presented.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
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 21 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 24, respectively, of RE50478. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21 and 23 of the ‘554 application omit the limitations relating to video metadata. See the table provided below for comparison. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 21 of the ‘554 application
Claim 21 of RE50478
A computer implemented method comprising:
A computer-implemented method comprising:
receiving a request for a first video from a user device;
receiving a request for a first video from a user device;
determining video metadata about the first video;
determining contextual data for the first video;
determining contextual data for the first video;
determining a plurality of videos based on the contextual data;
determining a plurality of videos based on the metadata and the contextual data;
determining, based on the contextual data, a presentation order from among a plurality of possible presentation orders for presenting the plurality of videos;
determining, based on the contextual data a presentation order from among a plurality of possible presentation orders for presenting the first video and the plurality of videos;
transmitting the first video for presentation at the user device; and
transmitting the first video for presentation at the user device; and
transmitting the plurality of videos to the user device for automatic sequential presentation based on the presentation order, the automatic sequential presentation occurring after presentation of the first video.
transmitting the plurality of videos to the user device for automatic sequential presentation based on the presentation order, the automatic sequential presentation occurring after presentation of the first video.
Table 2: Claim Comparison Chart
Claims 21 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 28, respectively, of RE49200. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21 and 23 of the ‘554 application omit the limitations relating to video metadata and advertising content. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of RE47853. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the ‘554 application omits the limitations relating to video metadata and advertising content. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art of record discloses:
determining, based on the contextual data, a presentation order from among a plurality of possible presentation orders for presenting the plurality of videos;
transmitting the first video for presentation at the user device; and
transmitting the plurality of videos to the user device for automatic sequential presentation based on the presentation order, the automatic sequential presentation occurring after presentation of the first video.
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘917 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of published reissue applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
