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 .
Allowable Subject Matter
Claims 7 and 14 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.
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, 8 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,401,566. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8 and 15 capture a broader version of the elements already patented in claim 1 of U.S. Patent No. 12,401,566.
Claims 5, 12 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,401,566. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 12 and 19 capture a broader version of the elements already patented in claim 5 of U.S. Patent No. 12,401,566.
Claims 6, 13 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,401,566. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 6, 13 and 20 capture a broader version of the elements already patented in claim 19 of U.S. Patent No. 12,401,566.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 8-9, 11-13, 15-16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipate by Duval (Pub No US 2019/0132633). Hereinafter, referenced as Duval.
Regarding claim 1, Duval discloses a system comprising:
a configuration tool (e.g. dongle device 104) comprising: one or more processing devices (Paragraphs [0014] [0035] figure 1; dongle 104);
one or more interfaces to communicatively couple with a media device (e.g. STB 102), wherein the media device is configured to output A/V content for display with at least one television of a set of one or more televisions (Paragraphs [0014] [0023] figure 1; dongle 104 connected to STB 102 via a USB connection);
and memory communicatively coupled with and readable by the one or more processing devices and having stored therein processor-readable instructions which, when executed by the one or more processing devices, configure the media device (e.g. STB 102) to perform operations with respect to a local network (Paragraphs [0035]-[0037] figure 1; STB 102 connected to television 106);
wherein the configuration tool is adapted to communicatively couple with the media device via at least one interface of the one or more interfaces to configure the media device to extend an ability of the media device to access features of a television (Paragraphs [0035] [0037] [0042] [0043] figure 1; dongle 104 extends the capabilities of STB 102 to be able to distribute 4K content to 4K television 106, wherein the connected dongle 104 processes the 4K video content that STB 102 would otherwise be unable to process);
and wherein the media device (e.g. STB 102) configured with the configuration tool (e.g. dongle device 104): receives audio/video (A/V) content via an Internet connection (Paragraphs [0021] [0034] figure 1; receive content over network 108 which may be a web server);
and provides the A/V content for display with a set of one or more televisions comprising the television (Paragraphs [0035] [0037] [0042] [0043] figure 1; display processed 4K content on television 106).
Regarding claim 2, Duval discloses the system as recited in claim 1; moreover, Duval discloses that the configuration tool (e.g. dongle device 104) is configured to overtake one or more interfaces of the media device (Paragraphs [0027] [0033] [0038] figure 1; user interface UI code, e.g. menu, corresponding to functionality previously performed by STB 102 may be offloaded to dongle 104).
Regarding claim 4, Duval discloses the system as recited in claim 1; moreover, Duval discloses that the configuring the media device (e.g. STB 102) also allows the media device to integrate with voice commands of the television (Paragraphs [0044] [0046] [0047] figure 1; receiving commands from a microphone, and directing the dongle device 104 to execute command functionalities and features absent from the STB 102, e.g. UI-based events).
Regarding claim 5, Duval discloses the system as recited in claim 1; moreover, Duval discloses that the media device (e.g. STB 102) configured with the configuration tool (e.g. dongle 104) operates as a server in the local network (Paragraphs [0035] [0037] [0042] [0043] figure 1; dongle 104 allows STB 102 to process and redistribute 4K content to one or more televisions, e.g. 106; paragraph [0042]).
Regarding claim 6, Duval discloses the system as recited in claim 1; moreover, Duval discloses that the configuration tool is configured to extend functionalities of the media device (Paragraphs [0035] [0037] [0042] [0043] figure 1; dongle 104 extends the capabilities of STB 102 to be able to distribute 4K content to 4K television 106, wherein the connected dongle 104 processes the 4K video content that STB 102 would otherwise be unable to process).
Regarding claims 8-9 and 11-13, Duval discloses all the limitations of claims 8-9 and 11-13; therefore, claims 8-9 and 11-13 are rejected for the same reasons stated in claims 1-2 and 4-6, respectively.
Regarding claims 15-16 and 18-20, Duval discloses all the limitations of claims 15-16 and 18-20; therefore, claims 15-16 and 18-20 are rejected for the same reasons stated in claims 1-2 and 4-6, respectively.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Duval in view of Gordon et al. (Pub No US 2014/0096166). Hereinafter, referenced as Gordon.
Regarding claim 3, Duval discloses the system as recited in claim 1; moreover, Duval discloses that the media device (e.g. STB 102) is communicatively coupled to the television (Paragraph [0035] figure 1).
However, it is noted that Duval is silent to explicitly disclose that the media device is communicatively coupled to the television indirectly via a second media device.
Nevertheless, in a similar field of endeavor Gordon discloses the media device (Master STB 110) is communicatively coupled to the television (e.g. Television 340) indirectly via a second media device (Paragraphs [0048] [0049] figure 3; Master STB 110 is indirectly connected to Television 340 by means of dependent STB 115).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Duval by specifically providing the elements mentioned above, as taught by Gordon, for the predictable result of implementing a centralized management of content distribution at a user’s premise, which allows for sharing of resources and lower hardware costs.
Regarding claim 10, Duval and Gordon disclose all the limitations of claim 10; therefore, claim 10 is rejected for the same reasons stated in claim 3.
Regarding claim 17, Duval and Gordon disclose all the limitations of claim 17; therefore, claim 17 is rejected for the same reasons stated in claim 3.
Conclusion
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JUNIOR O. MENDOZA
Primary Examiner
Art Unit 2424
/JUNIOR O MENDOZA/Primary Examiner, Art Unit 2424
