www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/423,756
`
`05/28/2019
`
`Noritaka IGUCHI
`
`2019-0909
`
`1072
`
`Cp
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`EKPO, NNENNA NGOZI
`
`2425
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/09/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eoa@ wenderoth.com
`kmiller@wenderoth.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`) )
`
`Application Papers
`10)CL) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)C] accepted or b)C) objected to by the Examiner.
`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)C) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)LJ None of the:
`b)L) Some**
`a)LJ} All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.0.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210604
`
`Application No.
`Applicant(s)
`16/423,756
`IGUCHI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NNENNA N EKPO
`2425
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 04/15/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`)
`)
`
`Disposition of Claims*
`1-4 and 6-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 9-12 is/are withdrawn from consideration.
`Claim(s) 5 is/are allowed.
`s) 1-4 and 6-8 is/are rejected.
`Claim(s
`[J Claim(s)__ is/are objectedto.
`( Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`04/15/2021 has been entered.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`3.
`
`Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor (or for applications subject to pre-
`
`AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 3
`
`It is not clear to the Examiner wherethe (i) the predetermined data unit, (ii) first
`
`control information which includes the generated presentation time information and (iii)
`
`second control information which includes leap second information indicating whether or
`
`not the presentation time information is a time that is before a leap second adjustmentis
`
`being transmitted to? Clarification is required.
`
`
`
`4. The nonstatutory double patenting rejection is based onajudicially created
`
`Double Patenting
`
`doctrine groundedin 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 claims at issue are notidentical, 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); and /n re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timelyfiled 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 a nonstatutory
`
`double patenting ground provided the reference application or patent either is shown to
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 4
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`be commonly ownedwith this 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 §§ 706.02(I)(1) - 706.02(I)(3) 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 USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/forms/. The 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 maybefilled out
`
`completely online using web-screens. An eTerminal Disclaimer that meetsall
`
`requirements is auto-processed and approved immediately upon submission. For more
`
`information about eTerminal Disclaimers, refer to
`
`http:/Awww.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
`
`Claims 1-8 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-8 of U.S. Patent No. 10,349,091 in view of Kitazato (U.S.
`
`Pub. No. 2017/0012765). Although the claims at issue are not identical, they are not
`
`patentably distinct from each other because the examined application claim is obvious
`
`over the conflicting patent claim.
`
`The difference between the instant and conflicting patent claim is the addition of “the
`
`presentation data unit being presented at the presentation time in a receiving device to
`
`receive the coded stream”in the instant claim.
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 5
`
`It would have been obvious to one of ordinary skill in the art before the effectivefiling
`
`date of the claimed invention to utilize “the presentation data unit being presented at the
`
`presentation time in a receiving device to receive the coded stream”in the method of
`
`the conflicting patent claim, since the receiver 200 obtains the decoding time and the
`
`presentation time for every presentation unit of the transmission media based on the
`
`time acquisition information included in the broadcast signal (see paragraph 0067).
`
`Response to Arguments
`
`5.
`
`Applicant's arguments with respect to claims 1-8 have been considered but are
`
`moot because the new ground of rejection does not rely on any reference applied in the
`
`prior rejection of record for any teaching or matter specifically challengedin the
`
`argument.
`
`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 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
`
`obviousnessrejections setforth 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
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 6
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`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.
`
`6.
`
`Claims 1-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kitazato (U.S. Pub. No. 2017/0012765)in view of Schmidt (U.S. Pub. No.
`
`2014/0282791).
`
`Regarding claim 1, Kitazato discloses a transmitting method of storing data
`
`making up a coded stream into a predetermined data unit and transmitting the stored
`
`data in the predetermined data unit, comprising (see fig. 2 —- Broadcast Transmission
`
`System):
`
`generating presentation time information indicating a presentation time of the
`
`predetermined data unit, based on reference time information received from an external
`
`source (see paragraph 0070 and fig. 2; The packetization/time stamp addition unit 14
`
`packetizes the encoded transmission media and adds the presentation time information
`
`for every presentation unit of the transmission media based on the time information
`
`generated by the clock unit 12), the presentation data unit being presented at the
`
`presentation time in a receiving device to receive the coded stream (see paragraph
`
`0067; the receiver 200 obtains the decoding time and the presentation time for every
`
`presentation unit of the transmission media based on the time acquisition information
`
`included in the broadcastsignal); and
`
`transmitting (i) the predetermined data unit (see paragraphs 0099, 0111 and fig.
`
`12; transporting an media presentation unit (MPU)), (ii) first control information which
`
`includes the generated presentation time information (see paragraphs 0108-0111 and
`
`fig. 12; MPU time stamp descriptor).
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 7
`
`However, Kitazato is silent as to (iii) second control information which includes
`
`leap second information indicating whether or not the presentation time information is a
`
`time that is before a leap second adjustment.
`
`Schmidt discloses(iii) second control information which includes leap second
`
`information indicating whether or not the presentation time information is a time thatis
`
`before a leap second adjustment (see paragraphs 0027-0029, 0052; process 200 for
`
`handling leap seconds in content provisioning and presentation.
`
`In various
`
`embodiments, leap seconds may be addedto time standards in order to account for
`
`changes in the rotation of the earth that would lead to a lack of synchronization between
`
`the time standards and the meansolartime).
`
`Therefore, it would have been obvious before the effective filing date of the
`
`claimed invention to a person having ordinary skill in the art to which said subject matter
`
`pertains to and to modify the method of Kitazato to include second control information
`
`which includes leap second information indicating whether or not the presentation time
`
`information is a time that is before a leap second adjustment as taught by Schmidtfor
`
`the advantage of accommodating the difference between precise time (as measured by
`
`atomic clocks) and imprecise observed solar time (known as UT1 and which varies due
`
`to irregularities and long-term slowndownin the earth's rotation.
`
`Regarding claim 8, Kitazato discloses a receiving method of receiving a
`
`predetermined data unit in which data making up a coded stream is stored, comprising
`
`(see fig. 2 - Receiver):
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 8
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`receiving (i) the predetermined data unit (see paragraphs 0099, 0111 and fig. 12;
`
`receiving an media presentation unit (MPU)), (il) first control information which includes
`
`presentation time information indicating a presentation time of the predetermined data
`
`unit (see paragraphs 0108-0111 and fig. 12; MPU time stamp descriptor).
`
`However, Kitazato is silent as to (iii) second control information which
`
`includes leap second information indicating whether or not the presentation
`
`time information is a time that is before a leap second adjustment; and reproducing the
`
`received predetermined data unit based on the first and second control information that
`
`are received.
`
`Schmidt discloses(iii) second control information which includes leap second
`
`information indicating whether or not the presentation time information is a time thatis
`
`before a leap second adjustment (see paragraphs 0027-0029, 0052; process 200 for
`
`handling leap seconds in content provisioning and presentation.
`
`In various
`
`embodiments, leap seconds may be addedto time standards in order to account for
`
`changes in the rotation of the earth that would lead to a lack of synchronization between
`
`the time standards and the mean solar time); and
`
`reproducing the received predetermined data unit based on the first and second
`
`control information that are received (seefig. 2).
`
`Therefore, it would have been obvious before the effective filing date of the
`
`claimed invention to a person having ordinary skill in the art to which said subject matter
`
`pertains to and to modify the method of Kitazato to include second control information
`
`which includes leap second information indicating whether or not the presentation time
`
`information is a time that is before a leap second adjustment as taught by Schmidt for
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 9
`
`the advantage of accommodating the difference between precise time (as measured by
`
`atomic clocks) and imprecise observed solar time (known as UT1 and which varies due
`
`to irregularities and long-term slowndownin the earth's rotation.
`
`Regarding claim 2, Kitazato and Schmidt discloses everything claimed as
`
`applied above (see claim 1). Kitazato discloses wherein in the generating, the
`
`presentation time information corresponding to each of a plurality of the predetermined
`
`data units is generated for the eachof the plurality of the predetermined data units, and
`
`the second control information transmitted in the transmitting includes the identification
`
`information corresponding to the eachof the plurality of the predetermined data units in
`
`eachloupeof the eachof the plurality of the predetermined data units (see paragraphs
`
`0299 and fig. 12).
`
`Regarding claim 3, Kitazato and Schmidt discloses everything claimed as
`
`applied above (see claim 1). Kitazato discloses wherein the presentation time of the
`
`predetermined data unit is a time to present an accessunit positioned at a head in an
`
`order of presenting plural access units included in the predetermined data unit (see
`
`paragraph 0089; the MPU starts from a random access point (RAP) and includes one
`
`accesspoint (AU) or a plurality of AUs).
`
`Regarding claim 4, Kitazato and Schmidtdiscloses everything claimed as
`
`applied above (see claim 1). Kitazato discloses wherein in the generating, the
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 10
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`presentation time of the predetermined data unit is generated by adding a
`
`predetermined period of time to the reference time information (see paragraph 0012,
`
`0070).
`
`Regarding claim 6, Kitazato and Schmidt discloses everything claimed as
`
`applied above (see claim 1). Kitazato discloses wherein the predetermined data unit is
`
`a media presentation unit (MPU) (see paragraphs 0099, 0111 andfig. 12; transporting
`
`an media presentation unit (MPU)), the first control information is an MPU time stamp
`
`descriptor (see paragraphs 0108-0111 and fig. 12; MPU time stamp descriptor), and the
`
`second control information is an MPU extension time stamp descriptor (see paragraph
`
`0299).
`
`Regarding claim 7, Kitazato and Schmidt discloses everything claimed as
`
`applied above (see claim 1). Kitazato discloses wherein the reference time information
`
`complies with a networktime protocol (NTP) (see paragraphs 0217-0218).
`
`Allowable Subject Matter
`
`Claim 5 is allowed.
`
`The following is a statement of reasons for the indication of allowable subject
`
`7.
`
`8.
`
`matter: Claim 5 is allowed in view of Applicant's Amendmentfiled on 11/18/2020.
`
`Particularly, the prior art of record fails to fairly suggest a transmitting method of storing
`
`data making up a codedstream into a predetermined data unit and transmitting the
`
`stored in the predetermined data unit, comprising: wherein the identification indicates
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 11
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`whether or not the presentation time information is generated based on the reference
`
`time information indicating a time within a time range from a time preceding, by a
`
`predetermined period of time, a time immediately before a leap second adjustment up to
`
`the time immediately before the leap second adjustment is made.
`
`9.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompanythe issue fee. Such submission should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance’.
`
`Citation of Pertinent Prior Art
`
`10.
`
`Shauh
`
`U.S. Pub. No. 2014/000341 7
`
`Lin
`
`U.S. Pub. No. 2014/0028498
`
`Rischar
`
`Akiyama
`
`U.S. Patent No. 7,447,931
`
`U.S. Pub. No. 2012/0201101
`
`Conclusion
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to NNENNA NGOZI EKPO whosetelephone number is
`
`(571)270-1663. The examiner can normally be reached on M-W 10:00am - 6:30pm,
`
`TH-F 8:00am - 4:30pm.
`
`

`

`Application/Control Number: 16/423,756
`Art Unit: 2425
`
`Page 12
`
`Examiner interviews are available via telephone, in-person, and video
`
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`
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Brian Pendleton can be reached on 571-272-7527. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`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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`
`Status information for unpublished applications is available through Private PAIR only.
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`
`NNENNA EKPO
`Primary Examiner
`Art Unit 2425
`
`/NNENNA N EKPO/
`Primary Examiner, Art Unit 2425
`June 4, 2021.
`
`