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
`
`03/12/2019
`
`Noritaka IGUCHI
`
`2019-0447
`
`7300
`
`04’17’2020
`- 759°
`”5044
`Wenderoth, L1nd & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`
`Washington DC 20036
`
`ALCON' FERNANDO
`
`2425
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/ 1 7/2020
`
`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 @ wenderothcom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 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
`
`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
`
`1). Responsive to communication(s) filed on 4/3/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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.
`
`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 110Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 3/12/2019 is/are: a). 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`SD 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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200413
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 2
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`Response to Arguments
`
`Applicant’s arguments, see Page 6 of Applicants Remarks, filed 4/3/2020, with respect
`
`to the rejection(s) of c|aim(s) 10 under 35 U.S.C. 102 have been fully considered and are
`
`persuasive. Therefore, the rejection has been withdrawn. However, upon further
`
`consideration, a new ground(s) of rejection is made in view of Howard et al. (US
`
`2005/0138674).
`
`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 c|aim(s) because the examined
`
`application claim is either anticipated by, or would have been obvious over, the reference
`
`c|aim(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).
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 3
`
`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 ofthe A|A as explained in MPEP § 2159.
`
`See MPEP §§ 706.02(|)(1) — 706.02(|)(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 USPTO Internet website contains terminal disclaimer forms which may be used.
`
`Please visit www.uspto.gov/patent/patents—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 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/process/file/efs/guidance/eTD—info—I.jsp.
`
`Claims 1—10 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 2—11 of U.S. Patent No. 10,277,931. Although the claims at issue are
`
`not identical, they are not patentably distinct from each other because the claims of the
`
`present application are anticipated by the corresponding narrower claim features of the parent
`
`application.
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 4
`
`Claims 1—10 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 2—11 of U.S. Patent No. U.S. Patent No. 10,277,931 in view of Howard
`
`et al. (US 2005/0138674).
`
`Regarding claim 1, 9, and 10, U.S. Patent No. 10,277,931 claim 11 discloses a reception
`
`method in a broadcast and broadband cooperation service, the reception method comprising:
`
`receiving broadcast content transmitted through broadcast; receiving broadband
`
`content transmitted through broadband; receiving acquisition information transmitted through
`
`the broadcast, the acquisition information being information on acquisition of the broadband
`
`content, the acquisition information being information used to play back the broadband
`
`content while the broadband content is synchronized with the broadcast content; and
`
`acquiring the broadband content based on the acquisition information, wherein when
`
`the broadband content is not played back while synchronized with the broadcast content, (1)
`
`the broadband content and the broadcast content are played back without synchronization
`
`when a time difference between playback timing of the broadband content and playback timing
`
`of the broadcast content is within a predetermined permissible range, and (2) only the
`
`broadcast content in the broadcast content and the broadband content is played back when
`
`the time difference is outside the predetermined permissible range.
`
`Claim 11 does not explicitly disclose the acquisition information is information for
`
`matching a time difference between a playback timing ofthe broadcast content and a playback
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 5
`
`timing of the broadband content to a predetermined time difference in order to play back one
`
`piece of content constructed with the broadcast content and the broadband content.
`
`Howard discloses that it was known to use timing information to match a time
`
`difference between playback timing of broadcast content and a playback timing of interactive
`
`broadband content to a predetermined threshold in order to playback one piece of content
`
`constructed with broadcast content and the broadband content (See [0037] interactive TV
`
`integrator comparing a correction time offset to a predetermined threshold, See [0033]
`
`interactive content is broadband content).
`
`Prior to the effective filing date of the invention it would have been obvious to one
`
`ordinary skill in the art to modify the known system of U.S. Patent No. 10,277,931 with the
`
`known methods of Howard predictably resulting in the acquisition information being
`
`information for matching a time difference between a playback timing of the broadcast content
`
`and a playback timing ofthe broadband content to a predetermined time difference in order to
`
`play back one piece of content constructed with the broadcast content and the broadband
`
`content by applying the court recognized rational of applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results. The
`
`modification would have the benefit of synchronizing interactive content with broadcast
`
`content as suggested by Howard.
`
`Features of dependent claims 2—8 are each disclosed by counterpart claims 4—10
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 6
`
`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 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.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. l, 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 ofthe 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—7 and 9—10is/are rejected under 35 U.S.C.103 as being unpatentable
`
`overKitahara et al. (WO 2013/099101), hereinafter Kitahara, Kitahara et al. (US 2014/0344884)
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 7
`
`will be cited and relied upon as the English translation, in view of Howard et al. (US
`
`2005/0138674).
`
`Regarding claim 1, 9, and 10, Kitahara discloses a reception method in a broadcast and
`
`broadband cooperation service, the reception method comprising:
`
`A receiver receiving broadcast content transmitted through the broadcast from a
`
`broadcast transmitter (See [0034] information processing apparatus is a receiver for receiving
`
`broadcast, such as ground or satellite waves, AV stream data and see [0040] for displaying the
`
`AV data on a display. See also [0093—0094]);
`
`receiving broadband content transmitted through the broadband from a broadband
`
`transmitter (See [0043—0045] application data acquired from server);
`
`receiving acquisition information transmitted through the broadcast, the acquisition
`
`information being information on acquisition ofthe broadband content, the acquisition
`
`information being information used to play back the broadband content while the broadband
`
`content is synchronized with the broadcast content (See [0087] receiver transmits download
`
`request for an application to the service organization server based on the information in the
`
`broadcast. See [0100—108] application activated based on A|T delivered with the AV broadcast
`
`content. See [0111] A|T indicates location of application. See [0112—0119] Application content
`
`displaying in cooperation with the progress ofthe program, read synchronized); and
`
`acquiring the broadband content based on the acquisition information (See [0124] and
`
`[0138] calculating time to request application from application server based on the A|T
`
`information and receiving the application).
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 8
`
`wherein the acquisition information is information indicating timing relating to start of
`
`the acquisition ofthe broadband content in order to synchronously playback the broadband
`
`content and the broadcast content (See [0120] calculating a timing of the transmission of the
`
`acquisition request and Fig 14).
`
`Kitahara does not explicitly disclose the acquisition information is information for
`
`matching a time difference between a playback timing ofthe broadcast content and a playback
`
`timing of the broadband content to a predetermined time difference in order to play back one
`
`piece of content constructed with the broadcast content and the broadband content.
`
`Howard discloses that it was known to match a time difference between playback
`
`timing of broadcast content and a playback timing of interactive broadband content to a
`
`predetermined threshold in order to playback one piece of content constructed with the
`
`broadcast content and the broadband content (See [0037] interactive TV integrator comparing
`
`a correction time offset to a predetermined threshold, See [0033] interactive content is
`
`broadband content).
`
`Prior to the effective filing date of the invention it would have been obvious to one
`
`ordinary skill in the art to modify the known system of Kitahara with the known methods of
`
`Howard predictably resulting in disclose the acquisition information being information for
`
`matching a time difference between a playback timing ofthe broadcast content and a playback
`
`timing of the broadband content to a predetermined time difference in order to play back one
`
`piece of content constructed with the broadcast content and the broadband content by
`
`applying the court recognized rational of applying a known technique to a known device
`
`(method, or product) ready for improvement to yield predictable results. The modification
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 9
`
`would have the benefit of synchronizing interactive content with broadcast content as
`
`suggested by Howard.
`
`Regarding claim 2, Kitahara further discloses he reception method according to claim 1,
`
`wherein the acquisition information is information indicating timing relating to the acquisition
`
`of the broadband content (See [0054—0056] randomized latency descriptor indicates time range
`
`at which access to the application server is distributed. See [0057] the range and distribution
`
`number correspond to first information, which is to calculate a random timing for each request
`
`for acquiring from the server, and application that can be processed together with broadcast
`
`content.).
`
`Regarding claim 2, Kitahara further discloses the reception method of claim 1, wherein
`
`the acquisition information is information indicating timing relating to completion of the
`
`acquisition ofthe broadband content in order to synchronously playback the broadband
`
`content and the broadcast content (See [0120] randomized latency descriptor describes an
`
`absolute time at which the distribution of the access is ended.
`
`If an absolute time has elapses).
`
`Regarding claim 3, Kitahara further discloses the method of claim 2, wherein the
`
`acquisition information is information indicating timing relating to start of the playback of the
`
`broadband content in order to synchronously play back the broadband content and
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 10
`
`the broadcast content (See [0116—0120] timing information is related to the start of playback of
`
`broadband content. Under the broadest reasonable interpretation the AIT information is
`
`related to a start of playback of broadband content, i.e., tuning/receiving the broadband
`
`stream and extracting AIT.).
`
`Regarding claim 4, Kitahara further discloses the method according to claim 2, wherein
`
`the acquisition information is information providing notification about timing relating to the
`
`acquisition ofthe broadband content so as to indicate that the broadband content can be
`
`acquired at and after the timing (See [0116—0120] absolute time is indicative of a times at which
`
`the application can be acquired, i.e., times before and after).
`
`Regarding claim 5, Kitahara further discloses the method according to claim 4 further
`
`comprising calculating timing relating to start ofthe acquisition ofthe broadband content
`
`based on acquisition information; and starting the acquisition ofthe broadband content at the
`
`calculated timing (See [0116—0120] and [0121—0122] calculating a time to request acquisition of
`
`application).
`
`Regarding claim 6, Kitahara further discloses the method of claim 1, wherein the
`
`acquisition information is information indicating a state in which the broadband content can be
`
`acquired (See [0096—0099] ”autostart" indicated in AIT).
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 11
`
`Regarding claim 7, Kitahara further discloses playing back the broadband content while
`
`the broadband content is synchronized with the broadcast content (See [0042] and Fig 12,
`
`displaying the acquired application simultaneously with the broadcast content).
`
`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara et al.
`
`(WO 2013/099101) in view of Howard et al. (US 2005/0138674) in view of Kitahara et al. (WO
`
`2013/065274), hereinafter Kitahara (’274), Kitahara (US 2014/0201800) relied upon for
`
`citation/translation.
`
`Regarding claim 8, Kitahara and Howard disclose the method according to claim 1, but
`
`does not explicitly disclose the broadcast content in the broadcast content and the broadband
`
`content is played back when the broadband content is unsuccessfully acquired.
`
`Kitahara (’274) discloses it was known to display the broadcast content when the
`
`broadband content is unsuccessfully acquired (See Fig 7 displaying the broadcast content and
`
`see [0063] failure to acquire the application content results in error processing).
`
`Prior to the invention being made it would have been obvious to one ordinary skill in the
`
`art to modify the known system of Kitahara with the known methods of Kitahara (’274)
`
`predictably resulting in the broadcast content in the broadcast content and the broadband
`
`content is played back when the broadband content is unsuccessfully acquired by applying the
`
`court recognized rational of applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results. The modification would have the
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 12
`
`benefit of allowing a user to continue to view content even when an application acquisition
`
`fails.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to FERNANDO ALCON whose telephone number is (571)270—5668.
`
`The examiner can normally be reached on Monday—Friday, 9:00am—7:00pm.
`
`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, 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 Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866—217—9197(to|l—free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`FERNANDO . ALCON
`
`

`

`Application/Control Number: 16/299,440
`Art Unit: 2425
`
`Page 13
`
`Examiner
`
`Art Unit 2425
`
`/FERNANDO ALCON/
`
`Primary Examiner, Art Unit 2425
`
`