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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12418704. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to a species or sub-genus claimed in patent claim 5, i.e., the entire scope of the patent claim 5 falls within the scope of the claim 1 of the application. See Table 1.
Table 1
Instant Application
US 12418704
1. A method comprising:
receiving, at a computing device, input associated with selecting a content item;
identifying that the selected content item is available from a plurality of sources;
determining an available bandwidth of the computing device;
determining, based on metadata associated with the selected content item from the plurality of sources, respective resolutions of the selected content item from each respective source;
determining a recommendation factor for each of the respective resolutions from each of the plurality of sources, wherein the recommendation factor is based on whether the respective resolution is supported by the available bandwidth; and
generating, for output, a list comprising the plurality of sources and a respective resolution of the content item from a respective source of the plurality of sources, wherein:
each available resolution from each of the plurality of sources that has an associated recommendation factor at or above a threshold level is formatted in a first format and
each available resolution from each of the plurality of sources that has an associated recommendation factor below a threshold level is formatted in a second format; and
the list is ordered based on the recommendation factor for each respective source.
1. A method comprising:
receiving, at a computing device, input associated with selecting a content item;
identifying that the selected content item is available from a plurality of sources;
determining an available bandwidth of the computing device;
determining, based on metadata associated with the selected content item from the plurality of sources, respective resolutions of the selected content item from each respective source;
determining a recommendation factor for each of the respective resolutions from each of the plurality of sources, wherein the recommendation factor is based on whether the respective resolution is supported by the available bandwidth; and
generating, for output, a list comprising the plurality of sources and a respective resolution of the content item from a respective source of the plurality of sources, wherein:
is formatted in a first format, and
is formatted in a second format; and
the list is ordered based on the recommendation factor for each respective source.
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.
Claim(s) 1-3, 5, 7, 10-13, 15, 17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over a combination of Christie et al. (US 9591339) and Opaluch (US 2008/0148317).
Regarding claim 1, Christie teaches a method comprising:
receiving, at a computing device, input associated with selecting a content item (Col. 3, line 57 to col. 4, line 7, “Also shown in FIG. 1, one of the particular images 108 is indicated to have ‘focus’. As is understood by those skilled in the art, ‘focus’ generally refers to the selection of a graphical element on a display in order to display information related to the selected item, prepare the item for further selection in order to further traverse a graphical user interface, and so on. … In this manner, selecting play 110 while image 108 is selected (i.e., has focus) may result in episode 1 of season 3 of the modernfamily television series being played on the display 102.” Figs. 1, 3);
identifying that the selected content item is available from a plurality of sources (Col. 5, lines 4-42, “For example, there may be multiple options available for the episode 1, season 3, e.g., episode 1 of season 3 may be available from multiple sources. This particular episode is available from both provider 308 and provider 310. In addition, each of these providers may have this particular episode available in high definition (HD), or standard definition (SD) or both.” Fig. 3);
determining an available band width of the computing device (Col. 21, lines 4-26, “In addition to such preferences, additional factors 2308 may be used to determine which content is provided to a viewer. For example, bandwidth considerations may affect the selection of content. If it is determined that the bandwidth to the viewer's device is limited, HD content may be disfavored (at least temporarily) until the condition eases.”);
determining, based on metadata associated with the selected content item from the plurality of sources, respective resolutions of the selected content item from each respective source (Col. 5, lines 4-42, “For example, there may be multiple options available for the episode 1, season 3, e.g., episode 1 of season 3 may be available from multiple sources. This particular episode is available from both provider 308 and provider 310. In addition, each of these providers may have this particular episode available in high definition (HD), or standard definition (SD) or both.” Fig. 3);
determining a recommendation factor for each of the respective resolutions from each of the plurality of sources (Col. 19, lines 14-22, “When selecting a particular series or episode (or any other content) for a subscription, as noted above there may be many sources available for the content. For example, numerous providers may be available for episodes of Law & Order. In such cases, the viewer may select from the available options to complete the subscription. In various embodiments, the various options may be prioritized or otherwise filtered for presentation to the viewer.” Col. 21, lines 4-26, “Given these possibilities, a viewer may have various preferences regarding how the given content is prioritized when either being presented as being available or when being selected for viewing. For example, a viewer may give a higher priority to free content over paid content. Also, HD content may be given priority over SD content, and so on. Using such preferences, selections from available content may be made for presentation to the viewer or when particular content is selected for viewing. In addition to such preferences, additional factors 2308 may be used to determine which content is provided to a viewer.”),
wherein the recommendation factor is based on whether the respective resolution is supported by the available band width (Col. 21, lines 15-21, “For example, bandwidth considerations may affect the selection of content. If it is determined that the bandwidth to the viewer's device is limited, HD content may be disfavored (at least temporarily) until the condition eases. In such a case, the options indicated by 2320 and 2322 in FIG. 23 may be eliminated.”); and
generating, for output, a list comprising the plurality of sources and a respective resolution of the content item from a respective source of the plurality of sources (Col. 21, lines 27-62, “FIG. 24 depicts one embodiment in which multiple options for content are available. In the example shown, five secondary providers 2402, 2404, 2406, 2408 and 2410 are shown. The particular content in question is Season 3, Episode 2 of a given series. For this given episode, box 2420 shows there are 10 different selections available. There are three secondary providers of the particular content available—iTunes, Netflix, and Amazon. The content is available in both HD and SD.”).
Christie does not expressly teach wherein: each available resolution from each of the plurality of sources that has an associated recommendation factor at or above a threshold level is formatted in a first format and each available resolution from each of the plurality of sources that has an associated recommendation factor below a threshold level is formatted in a second format; and the list is ordered based on the recommendation factor for each respective source.
Opaluch teaches wherein each content that has an associated recommendation factor at or above a threshold level is formatted in a first format and each content that has an associated recommendation factor below a threshold level is formatted in a second format, and a list is ordered based on the recommendation factor for each content ([0027], “Focusing on the other branch, the assisted selection 304 process uses various external inputs or data to order the program titles so as to provide value to the viewer. Specifically, the ordering of the program titles is such that more likely to be viewed programs are listed in order.” [0045], “The ordered listing attempts to order all the programs within a category. A threshold level may be defined in which channels can be likely ascertained as being highly likely, or not. Below such threshold, the channels may be ordered using a random order, or ranked in an order wherein the ordering is not particularly reflective of viewer preference. The threshold may be used by the presentation format for purposes of displaying high level information initially comprising programs ranked above the threshold, and displaying detailed information when requested. Other forms of distinction can be used by the presentation format.”).
In view of Opaluch’s teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Christie wherein: each available resolution from each of the plurality of sources that has an associated recommendation factor at or above a threshold level is formatted in a first format and each available resolution from each of the plurality of sources that has an associated recommendation factor below a threshold level is formatted in a second format; and the list is ordered based on the recommendation factor for each respective source. The modification would serve to facilitate selection of user-preferred content and formats.
Regarding claim 11, Christie teaches a system comprising: control circuitry configured (Col. 12, line 45 to col. 13, line 4; Figs. 13, 25) to perform the method of claim 1. The grounds of rejection under 35 USC §103 presented with respect to claim 1 are similarly applied to claim 11.
Regarding claims 2 and 12, the combination further teaches further comprising displaying the list on a display of the computing device (Opaluch: [0042], “The preferred channel listing can be displayed in a hierarchical arrangement comprising a first column comprising a category 500 and a second column 502 comprising programs in order of likelihood of interest to the viewer.” [0045]).
Regarding claims 3 and 13, the combination further teaches further comprising: automatically requesting and generating for playback a first content item in a first position of the list from the respective content source of the plurality of sources (Col. 5, lines 33-40, “if selecting ‘play’ by the viewer causes the episode to immediately begin playing automatically, then a selection algorithm may be needed to determine which source is used to provide the content.” Col. 21, lines 27-62, “FIG. 24 depicts one embodiment in which multiple options for content are available. In the example shown, five secondary providers 2402, 2404, 2406, 2408 and 2410 are shown. The particular content in question is Season 3, Episode 2 of a given series. For this given episode, box 2420 shows there are 10 different selections available. There are three secondary providers of the particular content available—iTunes, Netflix, and Amazon. The content is available in both HD and SD. The content is available for free (Netflix subscription no additional charge N/C), at a cost of $1.99, $2.99, and $3.99. Finally, the content is available with or without advertisements. All 10 options serve as input to a selection algorithm 2430.” Col. 21, lines 63-67, “Given the available content options and factors 2440, the algorithm 2430 selects one or more of the options for presentation to the viewer.” Fig. 24).
Regarding claims 5 and 15, the combination further teaches further comprising:
determining a capability of the computing device; and omitting from the list sources of the plurality of sources corresponding to a greater capability in which the content cannot be displayed by the computing device (Christie: Col. 21, lines 4-26, “In addition to such preferences, additional factors 2308 may be used to determine which content is provided to a viewer. For example, bandwidth considerations may affect the selection of content. If it is determined that the bandwidth to the viewer's device is limited, HD content may be disfavored (at least temporarily) until the condition eases. In such a case, the options indicated by 2320 and 2322 in FIG. 23 may be eliminated.”).
Regarding claims 7 and 17, the combination further teaches wherein the recommendation factor is further based on a user preference of a respective source of the plurality of sources (Christie: Col. 21, lines 4-26, “Given these possibilities, a viewer may have various preferences regarding how the given content is prioritized when either being presented as being available or when being selected for viewing. For example, a viewer may give a higher priority to free content over paid content. Also, HD content may be given priority over SD content, and so on. Using such preferences, selections from available content may be made for presentation to the viewer or when particular content is selected for viewing. In addition to such preferences, additional factors 2308 may be used to determine which content is provided to a viewer.”).
Regarding claims 10 and 20, the combination further teaches wherein the identifying that the selected content item is available from the plurality of sources comprises accessing one or more content databases (Christie: Col. 10, lines 12-51, “As illustrated in FIG. 7, data store 700 includes multiple databases configured to store data associated with the stored video content. … Subscriber databases 704 may include information regarding primary subscriptions and perhaps secondary subscriptions. Provider databases 706 may include information regarding secondary subscription providers. … View 704 illustrates that differences associated with the video content regarding secondary subscriptions or otherwise are subjugated (e.g., identified via the metadata) to the larger viewing presentation. In this manner, viewers can access all content they are entitled to according to secondary subscriptions with one or more providers from a single provider via a single provider interface”).
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over a combination of Christie, Opaluch, and Austin et al. (US 2017/0178693).
Regarding claims 4 and 14, the combination further teaches further comprising: determining a change in a recommendation factor of the first content item in the first position of the list; reordering the list based on the changed recommendation factor, wherein the reordering causes a second content item to be ordered in the first position of the list (Christie: Col. 21, lines 4-26, “In addition to such preferences, additional factors 2308 may be used to determine which content is provided to a viewer. For example, bandwidth considerations may affect the selection of content. If it is determined that the bandwidth to the viewer's device is limited, HD content may be disfavored (at least temporarily) until the condition eases. In such a case, the options indicated by 2320 and 2322 in FIG. 23 may be eliminated.”).
However, the combination does not expressly teach automatically switching from the playback of the first content item to playback of the second content item.
Austin teaches automatically switching from playback of first content item to playback of the second content item ([0063, “At decision block 660, the processing device 150 may determine whether to switch to a different content source 105, which could be content source 105A or another content source 105 transmitting a higher quality version of the media content instance. The processing device 150 may determine the signal strength of content source 105A to determine whether the signal strength is now above the predetermined level. If so, the process 600 may proceed to block 610 so that future recorded segments may be based on the media content signal received from content source 105A. If the signal strength of content source 105A is still below the predetermined level, the process 600 may proceed to block 635 so that additional segments based on the media content signal received from the content source 105B may be recorded (e.g., stored in the data storage drive 125).”).
In view of Austin’s teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include automatically switching from the playback of the first content item to playback of the second content item. The modification would facilitate user access to user-preferred content and formats.
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over a combination of Christie, Opaluch, and Fujimoto (US 2014/0143814).
Regarding claims 6 and 16, the combination teaches the limitations specified above; however, the combination does not expressly teach wherein the capability of the computing device is one of a resolution capability, a graphics processing unit capability, a processor clock speed capability, or a graphics memory capability.
Fujimoto teaches wherein a capability of a computing device is a resolution capability ([0048], “the processing capability information for the client machine 30 (40, 50) may include, as described above, display resolution information that enables the client machine 30 (40, 50) to best utilize the performance capability of the local machine.” [0054], “In this way, in the home network 100 in the first embodiment, a playback format list that includes playback format information corresponding to the content is published based on the processing capability information for the client machine 30 (40, 50) (the display resolution information and the data transfer rate, taking the communication network into account), thus enabling content that has a playback format that is suited to the processing capability of the individual machine to be played in the client machine 30 (40, 50).”).
In view of Fujimoto’s teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination wherein the capability of the computing device is one of a resolution capability, a graphics processing unit capability, a processor clock speed capability, or a graphics memory capability. By selecting content suited to client device capabilities, the modification would serve to optimize playback of content at client devices.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over a combination of Christie, Opaluch, and Price et al. (US 7296284).
Regarding claims 8 and 18, the combination teaches the limitations specified above; however, the combination does not expressly teach wherein the user preference is based on a user interface experience rating for respective service providers.
Price teaches wherein a user preference is based on a user interface experience rating for respective service providers (Col. 3, lines 4-19, “FIG. 1 shows a client terminal 100, connected to a video distribution system 102 and a display device 104, that provides for displaying ranked program listings in a program guide 106 based upon a selected rating source, according to one embodiment of the present invention.” Col. 3, lines 20-46, “The terminal controller 115 responsive to the user interface 112 and the ranking program 116 allows the user to select a rating source from a list of rating sources 148 displayed on the display device 104, via user input 114. Furthermore, the terminal controller 115 responsive to the ranking program 116 ranks the program listings 107 based upon program rating data associated with the selected rating source and displays the ranked program listings 107 in the program guide 106 on the display device 104.”).
In view of Price’s teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination wherein the user preference is based on a user interface experience rating for respective service providers. The modification would serve to facilitate content and provider selection for users.
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over a combination of Christie, Opaluch, and Gilfix et al. (US 2005/0086690).
Regarding claims 9 and 19, the combination teaches the limitations specified above; however, the combination does not expressly teach further teaches wherein the user preference is based on a trick play rating for respective service providers.
Gilfix provides a teaching for a preference based on trick play functionality of a service provider ([0066], “Video on demand and DVD are preferred sources because they support pausing the video display--which tends to make designating and selecting items more convenient for users.” ).
In view of Gilfix’s teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination wherein the user preference is based on a trick play rating for respective service providers. The modification would serve to enhance the overall user experience.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R TELAN whose telephone number is (571)270-5940. The examiner can normally be reached 9:30AM-6:00PM.
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, Nasser Goodarzi can be reached at (571) 272-4195. 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.
/MICHAEL R TELAN/Primary Examiner, Art Unit 2426
Prosecution Insights