UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/299,440
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`03/12/2019
`
`Noritaka IGUCHI
`
`2019-0447
`
`7300
`
`11/04/2019
`- 759°
`”5044
`Wenderoth, L1nd & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
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`Washington DC 20036
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`ALCON' FERNANDO
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`2425
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/04/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`eoa @ wenderoth. com
`kmiller @ wenderothcom
`
`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`16/299,440
`Examiner
`FERNAN DO ALCON
`
`Applicant(s)
`IGUCHI et al.
`Art Unit
`2425
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 3/12/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—10 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 3/12/2019 is/are: a). accepted or b)E] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)D Some**
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`C)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190812
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 2
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Double Parenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`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,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 3
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(I)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`Claims 1-10 rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-11 of U.S. Patent No. 10,277,931. Although the claims at
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`issue are not identical, they are not patentably distinct from each other because the
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`claims of the present application are anticipated by the corresponding narrower claim
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`features of the parent application.
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`Claim Rejections - 35 USC § 102
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 4
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(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.
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`Claim(s) 1-7 and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Kitahara et al. (WO 2013/099101), hereinafter Kitahara. Kitahara et al.
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`(US 2014/0344884) will be cited and relied upon as the English translation.
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`Regarding claim 1, 9, and 10, Kitahara discloses a reception method in a
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`broadcast and broadband cooperation service, the reception method comprising:
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`A receiver receiving broadcast content transmitted through the broadcast from a
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`broadcast transmitter (See [0034] information processing apparatus is a receiver for
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`receiving broadcast, such as ground or satellite waves, AV stream data and see [0040]
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`for displaying the AV data on a display. See also [0093-0094]);
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`receiving broadband content transmitted through the broadband from a
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`broadband transmitter (See [0043-0045] application data acquired from server );
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`receiving acquisition information transmitted through the broadcast,
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`the acquisition information being information on acquisition of the broadband content,
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`the acquisition information being information used to play back the broadband content
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`while the broadband content is synchronized with the broadcast content (See [0087]
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 5
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`receiver transmits download request for an application to the service organization server
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`based on the information in the broadcast. See [0100-108] application activated based
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`on AIT delivered with the AV broadcast content. See [0111] AIT indicates location of
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`application. See [0112-0119] Application content displaying in cooperation with the
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`progress of the program, read synchronized.); and
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`acquiring the broadband content based on the acquisition information (See
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`[0124] and [0138] calculating time to request application from application server based
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`on the AIT information and receiving the application).
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`wherein the acquisition information is information indicating timing relating to start
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`of the acquisition of the broadband content in order to synchronously playback the
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`broadband content and the broadcast content (See [0120] calculating a timing of the
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`transmission of the acquisition request and Fig 14).
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`Regarding claim 2, Kitahara further discloses he reception method according to
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`claim 1,wherein the acquisition information is information indicating timing relating to
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`the acquisition of the broadband content (See [0054-0056] randomized latency
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`descriptor indicates time range at which access to the application server is distributed.
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`See [0057] the range and distribution number correspond to first information, which is to
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`calculate a random timing for each request for acquiring from the server, and application
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`that can be processed together with broadcast content.).
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 6
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`Regarding claim 2, Kitahara further discloses the reception method of claim 1,
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`wherein the acquisition information is information indicating timing relating to completion
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`of the acquisition of the broadband content in order to synchronously playback the
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`broadband content and the broadcast content (See [0120] randomized latency
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`descriptor describes an absolute time at which the distribution of the access is ended.
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`If
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`an absolute time has elapses).
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`Regarding claim 3, Kitahara further discloses the method of claim 2, wherein the
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`acquisition information is information indicating timing relating to start of the playback of
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`the broadband content in order to synchronously play back the broadband content and
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`the broadcast content (See [0116-0120] timing information is related to the start of
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`playback of broadband content. Under the broadest reasonable interpretation the AIT
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`information is related to a start of playback of broadband content, i.e., tuning/receiving
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`the broadband stream and extracting AIT.).
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`Regarding claim 4, Kitahara further discloses the method according to claim 2,
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`wherein the acquisition information is information providing notification about timing
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`relating to the acquisition of the broadband content so as to indicate that the broadband
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`content can be acquired at and after the timing (See [0116-0120] absolute time is
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`indicative of a times at which the application can be acquired, i.e., times before and
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`after).
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 7
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`Regarding claim 5, Kitahara further discloses the method according to claim 4
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`further comprising calculating timing relating to start of the acquisition of the broadband
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`content based on acquisition information; and starting the acquisition of the broadband
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`content at the calculated timing (See [0116-0120] and [0121-0122] calculating a time to
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`request acquisition of application).
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`Regarding claim 6, Kitahara further discloses the method of claim 1, wherein the
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`acquisition information is information indicating a state in which the broadband content
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`can be acquired (See [0096-0099] “autostart” indicated in AIT).
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`Regarding claim 7, Kitahara further discloses playing back the broadband
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`content while the broadband content is synchronized with the broadcast content (See
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`[0042] and Fig 12, displaying the acquired application simultaneously with the broadcast
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`content).
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`Claim Rejections - 35 USC § 103
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`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
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 8
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`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.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara
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`et al. (WO 2013/099101) in view of Kitahara et al. (WO 2013/065274), hereinafter
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`Kitahara (‘274), Kitahara (US 2014/0201800) relied upon for citation/translation.
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`Regarding claim 8, Kitahara further discloses the method according to claim 1,
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`but does not explicitly disclose the broadcast content in the broadcast content and the
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`broadband content is played back when the broadband content is unsuccessfully
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`acquired.
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`Kitahara (‘274) discloses it was known to display the broadcast content when the
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`broadband content is unsuccessfully acquired (See Fig 7 displaying the broadcast
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`content and see [0063] failure to acquire the application content results in error
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`processing).
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`Prior to the invention being made it would have been obvious to one ordinary skill
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`in the art to modify the known system of Kitahara with the known methods of Kitahara
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 9
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`(‘274) predictably resulting in the broadcast content in the broadcast content and the
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`broadband content is played back when the broadband content is unsuccessfully
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`acquired by applying the court recognized rational of applying a known technique to a
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`known device (method, or product) ready for improvement to yield predictable results.
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`The modification would have the benefit of allowing a user to continue to view content
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`even when an application acquisition fails.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to FERNANDO ALCON whose telephone number is
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`(571)270-5668. The examiner can normally be reached on Monday-Friday, 9:00am-
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`7:00pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Brian Pendleton can be reached on (571)272-7527. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/299,440
`Art Unit: 2425
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`Page 10
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
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`FERNANDO . ALCON
`
`Examiner
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`Art Unit 2425
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`/FERNANDO ALCON/
`
`Primary Examiner, Art Unit 2425
`
`