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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 September 2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,439,112 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘112 Patent are narrower and clearly anticipate the claims of the instant application.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Cava (US 2021/0274241 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Cava), in view of Fisher (US 2013/0332971 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Fisher).
Regarding Claim 1, Cava discloses an electronic apparatus [Figs. 1, 12-13] comprising:
a communication interface configured to perform communication with at least one server; [Figs. 1, 12-13: network interface 1316/transceiver 1318 for communicating with video streaming system 1200]
a display; [Fig. 13: display unit 1328] and
a processor [Fig. 13: CPU 1302] configured to perform control to:
transmit a request for a content to the at least one server through the communication interface, [Fig. 2; 0045: an initial manifest may be received by client after a playback request for a video]
based on the transmitted request, receive first data from the at least one server through the communication interface, [Fig. 2; 0045: an initial manifest (first data) may be received by client after a playback request for a video] wherein the received first data includes a first section in which first content data of the requested content is included and a second section in which advertisement content data is insertable, but is not inserted, [Figs. 2-3; 0020-22, 0028-29, 0045-46, 0050: client device may receive initial manifest (first data) that describes content segments for the requested content (first section with first content data) as well as placeholder opportunities for advertisements that do not yet have content selected (second section in which ad content may be inserted, but is not yet)]
control the display to output a portion of content corresponding to the first content data included in the first section of the received first data, [Fig. 2; 0021-22: dynamic content replacement may happen while watching the stream but before the point of an opportunity to insert supplemental content is reached for playout at the content; 0045-46: client may receive and load an initial manifest upon playback request for content]
receive second data from the at least one server through the communication interface while the portion of the content corresponding to the first content data is being output by the display, wherein the received second data includes a first section in which second content data of the requested content is included and a second section into which advertisement content data is inserted, [Figs. 2, 4; 0021, 0028-30: ad resolution requests may be made while client is receiving segments of the presentation from the server; 0029, 0042, 0045-46: resolution of opportunities may occur onLoad to perform when manifest is received or onRequest when conditions are met, at which point manifest server may create supplemental content manifest (second data) with identified supplemental content (second section with ad content inserted) and send the supplement content manifest to the client] and
control the display to continue outputting the requested content, wherein the advertisement content data is inserted, based on the second data. [0042-43, 0055-57, 0068: ad resolution request provides supplement content manifest update to client, which retrieves any updated manifest data to continue playing back video content and supplemental content]
Cava fails to explicitly disclose control the display to continue outputting the requested content, wherein the advertisement content data is inserted, based on the second data, at a timing corresponding to current playback point of the content corresponding to the first content data. (Emphasis on the particular elements of the limitations not explicitly disclosed by Cava).
Fisher, in analogous art, teaches control the display to continue outputting the requested content, wherein the advertisement content data is inserted, based on the second data, at a timing corresponding to current playback point of the content corresponding to the first content data. [0019, 0048-49: where clients may send request for stitched manifests to provide advertisements to fill placeholders in asset lists (e.g., the initial manifest of Cava); 0017-19, 0036-37, 0042-43: where stitched manifest combines URLs of video fragments and additional video fragments (i.e., ads) utilizing timestamps or sequence numbers for proper sequential playback of stream]
It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to modify the apparatus of Cava with the teachings of Fisher to specify that output of the advertisement content is based on a current playback point of the content corresponding to the first and second content data as it is understood that streaming technologies divide video streams into segments that are provided with some sequential numbering or timestamps, even upon updating the stream manifest, for proper sequential playback of the video and ad fragments. [Fisher – 0008, 0013-15, 0018, 0042-43]
Regarding Claim 7, Claim 7 recites a method that performs the operations/functionality of the apparatus of Claim 1. As such, Claim 7 is analyzed and rejected similarly as Claim 1, mutatis mutandis.
Claim(s) 2 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cava and Fisher as applied to claims 1 and 7, respectively, above, and further in view of Hunter et al. (US 2002/0124251 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Hunter).
Regarding Claim 2, Cava and Fisher disclose all of the limitations of Claim 1 as previously discussed with respect to that claim.
Furthermore, Cava discloses wherein the processor is configured to perform control to: identify whether the requested content is provided to a user for a fee. [Cava – 0101: where delivery of video content may include a variety of models, where a user may pay for the viewing of video programs/pay-per-view service, and in other models where sponsors may pay for the right to present advertisements during media programs]
Cava and Fisher fail to explicitly disclose based on identifying that the requested content is provided to the user for a fee, control the display to output content corresponding to the second content data included in the first section of the received second data without outputting the advertisement content.
Hunter, in analogous art, teaches based on identifying that the requested content is provided to the user for a fee, control the display to output content corresponding to the second content data included in the first section of the received second data without outputting the advertisement content. [0042: customers may be permitted to totally avoid advertisements by paying a fee, or may receive content for a reduced or no fee if they are willing to view advertisements]
It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to modify the apparatus of Cava and Fisher with the teachings of Hunter to control output of content without outputting advertisement content as it is readily understood that video delivery pay models may allow users to avoid any targeted advertisements in exchange for paying some fee. [Hunter – 0042]
Regarding Claim 8, Cava and Fisher disclose all of the limitations of Claim 7, which are analyzed as previously discussed with respect to that claim.
Furthermore, Claim 8 recites nearly identical limitations as Claim 2 and is rejected similarly as that claim.
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cava and Fisher as applied to claims 1 and 7, respectively, above, and further in view of Savkar et al. (US 2014/0324603 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Savkar).
Regarding Claim 3, Cava and Fisher disclose all of the limitations of Claim 1 as previously discussed with respect to that claim.
Furthermore, Cava and Fisher disclose wherein the advertisement content is selected by some ad decision server based on request. [Cava – 0027, 0029-30, 0093; Fisher – 0048]
Cava and Fisher fail to explicitly disclose wherein the advertisement content is selected based on a real-time simultaneous bidding method.
Savkar, in analogous art, teaches wherein the advertisement content is selected based on a real-time simultaneous bidding method. [Fig. 1; ABST; 0005, 0037-38: where multiple advertisers may communicate via a real-time bidding (RTB) exchange to select a suitable advertisement to place in a given ad opportunity]
It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to modify the apparatus of Cava and Fisher with the teachings of Savkar to specify a real-time simultaneous bidding method to select advertisement content as RTBs are well known means to efficiently and effectively fill ad opportunities so that companies may successfully attract and promote their products/services to potential customers. [Savkar – ABST; 0003-5]
Regarding Claim 9, Cava and Fisher disclose all of the limitations of Claim 7, which are analyzed as previously discussed with respect to that claim.
Furthermore, Claim 9 recites nearly identical limitations as Claim 3 and is rejected similarly as that claim.
Claim(s) 4-5 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cava and Fisher as applied to claims 1 and 7, respectively, above, and further in view of DeVree (US 2013/0046641 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Devree)
Regarding Claim 4, Cava and Fisher disclose all of the limitations of Claim 1 as previously discussed with respect to that claim.
Cava and Fisher fail to explicitly disclose wherein the processor is configured to perform control to: identify a playback point of the advertisement content and a playback degree of content including content corresponding to the second content data and the advertisement content based on at least one of the first data or the second data, and control the display to output a user interface (UI) corresponding to the identified playback point and playback degree.
DeVree, in analogous art, teaches wherein the processor is configured to perform control to: identify a playback point of the advertisement content and a playback degree of content including content corresponding to the second content data and the advertisement content based on at least one of the first data or the second data, and control the display to output a user interface (UI) corresponding to the identified playback point and playback degree. [Figs. 1-2; 0003, 0043-46: a progress bar may be provided while playing back streaming content (such as the streaming content of Cava and Fisher above) may have an indicator that displays the current position of the viewed program as well as indication of how much of the content has been played so far]
It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to modify the apparatus of Cava and Fisher with the teachings of DeVree to provide a UI indicating a playback position and playback degree of the content as progress bars are well known and ubiquitously utilized interfaces for informing the user their current location/progress in playback as well as providing various time-shifting functionality such as fast forward, rewind, play, pause, etc. [DeVree – 0003-4]
Regarding Claim 5, Cava, Fisher, and DeVree disclose all of the limitations of Claim 4 as previously discussed with respect to that claim.
Furthermore, DeVree discloses wherein the UI is a progress bar including information corresponding to the playback point. [DeVree – Figs. 1-2; 0003, 0043-46]
Regarding Claim 10, Cava and Fisher disclose all of the limitations of Claim 7, which are analyzed as previously discussed with respect to that claim.
Furthermore, Claim 10 recites nearly identical limitations as Claim 4 and is rejected similarly as that claim.
Regarding Claim 11, Cava, Fisher, and DeVree disclose all of the limitations of Claim 10, which are analyzed as previously discussed with respect to that claim.
Furthermore, Claim 11 recites nearly identical limitations as Claim 5 and is rejected similarly as that claim.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cava and Fisher as applied to claims 1 above, and further in view of Cohen (US 2006/0031892 A1) (as provided by the IDS submitted on 11 September 2025, hereinafter Cohen)
Regarding Claim 6, Cava and Fisher disclose all of the limitations of Claim 1 as previously discussed with respect to that claim.
Furthermore, Cava discloses a user interface, [Fig. 13; 0105-107: apparatus 1300 may have some display unit to present information to the user, and input devices for providing inputs]
wherein the processor is configured to perform control to: receive a user input corresponding to a change in a first playback point of content including content corresponding to the second content data and the advertisement content through the user interface. [Cava – 0098: streaming commands may include fast forward, fast reverse, pause, or seeking to skip to a particular part of the file at the client]
Cava and Fisher fail to explicitly disclose to receive a user input corresponding to a change in a first playback point of content including content corresponding to the second content data and the advertisement content through the user interface while the first playback point of the content including the content corresponding to the second content data and the advertisement content is output through the display, and control the display to output the advertisement content inserted between the first playback point and a second playback point, and then output the content corresponding to the second content data from the second playback point in case that the advertisement content is inserted between the first playback point and the second playback point based on the received user input.
Cohen, in analogous art, teaches to receive a user input corresponding to a change in a first playback point of content including content corresponding to the second content data and the advertisement content through the user interface while the first playback point of the content including the content corresponding to the second content data and the advertisement content is output through the display, and control the display to output the advertisement content inserted between the first playback point and a second playback point, and then output the content corresponding to the second content data from the second playback point in case that the advertisement content is inserted between the first playback point and the second playback point based on the received user input. [0008, 0030: while viewing the content, user may operate their device to fast forward/backward, or jump through streamed program, however, based on known ad interval information, prevent skipping over advertisements]
It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to modify the apparatus of Cava and Fisher with the teachings of Cohen to specify playing back the advertisement content in the event that the user input requests a change in playback point in order to ensure VOD users to be allowed to fast-forward of skip parts of a program while curtailing the users from skipping advertisements and inducing them to view said advertisements. [Cohen – ABST; 0003-8]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J KIM whose telephone number is (571)272-2767. The examiner can normally be reached 9:30am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hadi Armouche can be reached at (571) 270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J KIM/Primary Examiner, Art Unit 2409
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