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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 6, 7 and (corresponding system, computer readable medium and device) claims 8, 13, 14, 15, 20, 21, 22 and 28 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 18-20 of prior U.S. Patent No. 12,413,812. This is a statutory double patenting rejection.
Instant Application
Patent 12,413,812
1. A method comprising:
determining, during outputting of content, based on data received from one or more sensors, a reaction of a primary user that indicates a first presence of one or more secondary users of the content; and
in response to the first presence, modifying, based on the determined reaction satisfying one or more criteria, the outputting of the content.
18. A method comprising:
determining, during outputting of content, based on data received from one or more sensors, a reaction of a primary viewer that indicates a first presence of one or more secondary viewers of the content; and
in response to the first presence, modifying, based on the determined reaction satisfying one or more criteria, the outputting of the content.
6. The method of claim 1, wherein the one or more sensors comprise a heart-rate sensor configured to detect a heart-rate of the primary user, and wherein the reaction of the primary user that indicates the first presence of the one or more secondary users is based on fluctuations of the heart-rate of the primary user.
19. The method of claim 18, wherein the one or more sensors comprise a heart-rate sensor configured to detect a heart-rate of the primary viewer, and wherein the reaction of the primary viewer that indicates the first presence of one or more secondary viewers is based on fluctuations of the heart-rate of the primary viewer.
7. The method of claim 1, wherein the one or more sensors comprise a camera, and wherein the reaction of the primary user that indicates the first presence of the one or more secondary users comprises the primary user gazing away from the content being outputted for greater than a threshold amount of time.
20. The method of claim 18, wherein the one or more sensors comprise a camera, and wherein the reaction of the primary viewer that indicates the first presence of one or more secondary viewers comprises the primary viewer gazing away from the content being outputted for greater than a threshold amount of time.
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 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,413,812. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims are broader in every aspect than the patent claims and it’s, therefore, an obvious variant thereof.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5, 7-12, 14-19, 21-26 and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dhiman et al. (hereinafter ‘Dhiman’, Patent No. 11,368,751).
Regarding claims 1, 8, 15 and 22, Dhiman teaches a system (Fig. 4) (with corresponding device, method and non-transitory computer readable media) comprising:
a computing device (400, 401, Fig. 4); and one or more sensors (418, 420, Fig. 4);
wherein the computing device is configured to:
determine, during outputting of content, based on data received from the one or more sensors, a reaction of a primary user that indicates a first presence of one or more secondary users of the content (col. 5 line 45 to col. 6 line 64; col. 7 lines 9-49); and
in response to the first presence, modify, based on the determined reaction satisfying one or more criteria, the outputting of the content (col. 7 lines 20-49; col. 21 lines 9-46), and
wherein the one or more sensors are configured to:
send data to the computing device (col. 6 lines 14-64).
Regarding claims 2, 9, 16 and 23, Dhiman teaches wherein the modifying the outputting of the content comprises one or more of:
stopping the outputting of audio of the content; reducing a volume of audio of the content; stopping the outputting of video of the content; or outputting alternative content that is different from the content (col. 21 lines 9-20).
Regarding claims 3, 10, 17 and 24, Dhiman teaches further comprising:
determining a first portion of the content associated with one or more predefined types of content, and wherein the modifying the outputting of the content comprises outputting, instead of the first portion, a second portion of the content (col. 21 lines 9-20. Bostick: [0017]; [0036]; [0039]; [0040]).
Regarding claims 4, 11, 18 and 25, Dhiman teaches further comprising:
based on the determined reaction and based on determining that metadata associated with the content comprises one or more key words associated with one or more predefined types of content, generating additional metadata indicating that the content is provocative and a time associated with the reaction of the primary user to the first presence (col. 6 lines 35-64; col. 7 line 20 to col. 8 line 24; col. 21 lines 9-46, where upon user’s reaction to incoming of a second user and the metadata attached to each frame or segments, the content and relationship table is modified).
Regarding claims 5, 12, 19 and 26, Dhiman teaches wherein the first presence comprises one or more of:
the one or more secondary users coming within a predefined distance of the primary user, a door opening, or a light being turned on or off (col. 6 lines 14-64).
Regarding claims 7, 14, 21 and 28, Dhiman teaches wherein the one or more sensors comprise a camera, and wherein the reaction of the primary user that indicates the first presence of the one or more secondary users comprises the primary user gazing away from the content being outputted for greater than a threshold amount of time (col. 3 line 57 to col. 4 line 13).
Claim(s) 6, 13, 20 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dhiman et al. (hereinafter ‘Dhiman’, Patent No. 11,368,751) in view of Rajanna et al. (hereinafter ‘Rajanna’, Pub. No. 2023/0038347).
Regarding claims 6, 13, 20 and 27, Dhiman teaches all the limitations of the claim it depends on. On the other hand, Dhiman does not explicitly teach
wherein the one or more sensors comprise a heart-rate sensor configured to detect a heart-rate of the primary user, and wherein the reaction of the primary user that indicates the presence of one or more secondary users is based on fluctuations of the heart-rate of the primary user.
However, in an analogous art, Rajanna teaches a system for modifying the content of the media content based on the users’ reactions. Rajanna teaches that the system determines the reaction of users, and therefore, their presence while watching content using different methods. The measurement of heart rate data of the users help to determine their reactions ([0051]; [0057]; [0058]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Dhiman’s invention with Rajanna’s feature of using the heart rate of the users to indicate their presence and reactions to the content for the benefit of more accurately understand when and what the reaction is to the content from the users.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR S PARRA whose telephone number is (571)270-1449. The examiner can normally be reached M-F: Mostly 10-6PM.
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/OMAR S PARRA/Primary Examiner, Art Unit 2421
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