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 .
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 2, 4, 6, 12, 14, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6, 8, 10-11, 13 of U.S. Patent No. 12,375,771 in view of Greenfield (US Pub. 2012/0229588), herein referenced as Greenfield.
Instant Application Claim 2
US Pat. 12,375,771 Claims 1 and 3
A method comprising: … accessing a plurality of user profiles, wherein each respective user profile of the plurality of user profiles is associated with a respective device of the plurality of devices;
A method for operating a group watching session, the method comprising: (Claim 1)
accessing a user profile of the at least one participant of the group watching session to retrieve user preferences; (Claim 3)
comparing data of each user profile of the plurality of user profiles to data describing at least one segment of the at least one content item; based on the comparing, identifying a match between each user profile of a subset of the plurality of user profiles and the data describing the at least one segment; and
accessing metadata associated with the media content item; and comparing the user preferences with the metadata to identify the at least one segment of the media content item determined to be of interest for discussion (Claim 3)
initiating a group communication session for a subset of devices of the plurality of devices that are associated with the subset of the plurality of user profiles.
and initiating a group communication session for the group watching session (Claim 1).
The claim in the instant application recites the additional limitations of initiating a virtual session, wherein a plurality of devices is joined to the virtual session via at least one network; based at least in part on the initiating, causing each device of the plurality of devices to generate for simultaneous consumption at least one content item.
Nevertheless, Greenfield discloses initiating a virtual session, wherein a plurality of devices is joined to the virtual session via at least one network; based at least in part on the initiating, causing each device of the plurality of devices to generate for simultaneous consumption at least one content item ([0026], [0046], [0048], Figs. 1, 5 i.e., virtual communal television watching and discussion session is called a viewing party. The system enables a user to find friends/buddies and other users, even if the other users are not already known to the user, and form a public or open viewing party that any user may join. Users can also initiate a private viewing party with other users, accessible only by invitation. In some embodiments, the system further enables participants in a viewing party to synchronize their viewing sessions, so that all participants share a common viewing experience. Users may enjoy the social experience of communal viewing for any television program of their choosing, including live programs. Additionally, users can further initiate a private two-party conference, called a side bar, even while participating in a viewing party).
It would have been obvious to include initiating a virtual session, wherein a plurality of devices is joined to the virtual session via at least one network; based at least in part on the initiating, causing each device of the plurality of devices to generate for simultaneous consumption at least one content item in claim 1 of patent 12,375,771 for the benefit of enabling users of television content to enjoy the social experience of communal viewing ([0004]).
Claim 4 of the instant application corresponds to patented claim 4.
Claim 6 of the instant application corresponds to patented claim 6.
Claim 12 of the instant application corresponds to patented claim 8, 10.
Claim 14 of the instant application corresponds to patented claim 11.
Claim 16 of the instant application corresponds to patented claim 13.
Allowable Subject Matter
Claims 3, 5, 7-11, 13, 15, 17-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Q Huerta whose telephone number is (571)270-3582. The examiner can normally be reached M-F 9:00 AM-5:00 PM.
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, Brian Pendleton can be reached at (571)272-7527. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished 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.
/ALEXANDER Q HUERTA/Primary Examiner, Art Unit 2425 June 24, 2026
Prosecution Insights