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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/134,877
`
`12/28/2020
`
`Noritaka Iguchi
`
`2020-3 146
`
`3943
`
`Cp
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`ALCON, FERNANDO
`
`2425
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/27/2021
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-4 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 12/28/2020 is/are: a)[¥) accepted or b)(.) 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.[v} Certified copies of the priority documents have beenreceived in Application No. 15044203.
`3.2.) 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)
`
`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) (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 20210708
`
`Application No.
`Applicant(s)
`17/134,877
`Iguchi et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`FERNANDO ALCON
`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
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`1) Responsive to communication(s) filed on 12/28/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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 incorporated into 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.
`
`

`

`Application/Control Number: 17/134,877
`Art Unit: 2425
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application is being examined under the pre-AlA first to invent provisions.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent
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`possible harassment by multiple assignees. A nonstatutory double patenting rejection is
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`appropriate where the conflicting claims are not identical, but at least one examined
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`application claim is not patentably distinct from the reference claim(s) because the examined
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`application claim is either anticipated by, or would have been obvious over, the reference
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`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman,
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`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
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`used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`examined application, or claims an invention made as a result of activities undertaken within
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`the scope of a joint research agreement. See MPEP § 717.02 for applications subject to
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`examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
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`

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`Application/Control Number: 17/134,877
`Art Unit: 2425
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`Page 3
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`See MPEP § 2146 etseq. for applications not subject to examination under the first inventor to
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`file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`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 befilled out completely
`
`online using web-screens. An eTerminal Disclaimer that meetsall requirements is auto-
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`processed and approved immediately upon submission. For more information about eTerminal
`
`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`Claims 1-4 rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 2-11 of U.S. Patent No. 10,277,931. Although the claims at issue are
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`not identical, they are not patentably distinct from each other because the claims of the
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`present application are anticipated by the corresponding narrower claim features of the parent
`
`application.
`
`Claims 1-4 rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-10 of U.S. Patent No. 10,911,805. Although the claims at issue are
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`not identical, they are not patentably distinct from each other because the claims of the
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`present application are anticipated by the corresponding narrower claim features of the parent
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`application.
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`

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`Application/Control Number: 17/134,877
`Art Unit: 2425
`
`Page 4
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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
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`U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`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 been obvious before the
`effective filing date of the claimed invention to a person having ordinaryskill 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 for establishing a background for determining obviousness under
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`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 obviousnessor
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`nonobviousness.
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`Claims 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara etal.
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`(WO 2013/099101), hereinafter Kitahara, in view of Laurentet al. (US 2012/0230389). Kitahara
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`et al. (US 2014/0344884)is cited and relied upon as the English translation.
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`

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`Application/Control Number: 17/134,877
`Art Unit: 2425
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`Page 5
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`Regarding claims 1-4, Kitahara discloses a reception method, reception device in a
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`broadcast and broadband cooperation service, the reception method comprising:
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`Transmitting and receiving first content transmitted (See [0034] [0040] [0093-0094]
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`information processing apparatus is a receiver for receiving broadcast);
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`A transmitter and receiver for receiving first content (See [0033-0035] and Fig 1);
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`receiving acquisition information transmitted through broadcast, the acquisition
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`information being information on acquisition of second content transmitted, the acquisition
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`information being information used to play back the second content while the second content
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`is synchronized with the first content (See [0087] receiver transmits download request for an
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`application to the service server based on the information in the broadcast. See [0100-0108]
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`application activated based on AIT delivered with the AV broadcast content. See [0111] AIT
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`indicates location of application. See [0112-0119] application content displaying in cooperation
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`with the progress of the program reads on synchronization);
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`acquiring the second content based on the acquisition information (See [0124] [0138]
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`calculating time to request application from application server based on AIT information and
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`receiving application.
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`[0111] AIT indicates location of application.); and
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`Kitahara does not explicitly disclose receiving, through one of the broadcast and
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`broadband, information indicating a delay tolerance in synchronized display of the first content
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`and the second content.
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`Laurent discloses that it was known to use timing information received through one of
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`the broadcast and broadband, information indicating a delay tolerance in synchronized display
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`of the first content and the second content (See [0050] comparing broadcast timestamps to
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`

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`Application/Control Number: 17/134,877
`Art Unit: 2425
`
`Page 6
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`PCR. See [0052] comparing broadband timestamp to PCR,i.e., time difference to PCR and
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`corresponding timestampsis indicative of a delay tolerance for synchronized display of the
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`broadband content and broadcast content.).
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`Prior to the invention being made it would have been obvious to one ordinaryskill in the
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`art to modify the known system of Kitahara with the known methods of Laurent predictably
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`resulting in receiving, through one of the broadcast and broadband, information indicating a
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`delay tolerance in synchronized display of the first content and the second content by applying
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`the court recognized rational of applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results. The modification would have the
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`benefit of ensuring a synchronization of broadband and broadcast contentis timely by
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`detecting incoming frames of data that are too late to be presented as suggested by Laurent.
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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 whosetelephone 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.
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`

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`Application/Control Number: 17/134,877
`Art Unit: 2425
`
`Page 7
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`If 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 for the
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`organization wherethis application or proceeding is assigned is 571-273-8300.
`
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`
`FERNANDO. ALCON
`
`Examiner
`
`Art Unit 2425
`
`/FERNANDO ALCON/
`Primary Examiner, Art Unit 2425
`
`