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 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`I
`
`11/563,227
`
`FILING DATE
`
`11/27/2006
`
`I
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Safi Qureshey
`
`1116-028A
`
`1577
`
`02/02/2011
`7590
`71739
`WITHROW & TERRANOVA CT
`100 REGENCY FOREST DRIVE, SUITE 160
`CARY, NC 27518
`
`I
`
`EXAMINER
`
`TRAN, PABLO N
`
`I
`
`ART UNIT
`
`PAPER NUMBER
`
`2618
`
`MAIL DATE
`
`02/02/2011
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`Yamaha Corporation of America Exhibit 1009 Page 1
`
`

`

`Office Action Summary
`
`Application No.
`
`11/563,227
`Examiner
`
`Applicant(s)
`
`QURESHEY ETAL.
`
`Art Unit
`
`2618
`Pablo N. Tran
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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.
`-
`this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of
`- 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)E Responsive to communication(s) filed on _____
`2b) This action is non-final.
`2a)E This action is FINAL.
`3)E 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 0G. 213.
`
`Disposition of Claims
`
`4) Claim(s) j. is/are pending in the application.
`4a) Of the above claim(s) _____ is/are withdrawn from consideration.
`5)E Claim(s) _____ is/are allowed.
`6) Claim(s) ..L is/are rejected.
`7)E Claim(s) _____ is/are objected to.
`8)E Claim(s) ______ are subject to restriction and/or election requirement.
`
`Application Papers
`9)E The specification is objected to by the Examiner.
`10)E The drawing(s) filed on _____ is/are: a)E accepted or b)E 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).
`1 1)E The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.
`
`Priority under 35 U.S.C. § 119
`
`12)E Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)E All b)E Some * c)E None of:
`1 . Certified copies of the priority documents have been received.
`2.E Certified copies of the priority documents have been received in Application No. _____
`3.E 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.
`
`1)
`2)
`3)
`
`Attachment(s)
`Notice of References Cited (PTO-892)
`Notice of Draftsperson's Patent Drawing Review (PTO-948)
`Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date .
`J.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`4)
`
`5)
`6)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`Notice of Informal Patent Application
`Other:
`
`Office Action Summary
`
`Part of Paper No/Mail Date 20110131
`
`Yamaha Corporation of America Exhibit 1009 Page 2
`
`

`

`Application/Control Number: 11/563,227
`Art Unit: 2618
`
`Page 2
`
`DETAILED ACTION
`
`Double Patenting
`
`1.
`
`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
`
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`
`are not identical, but at least one examined application claim is not patentably distinct
`
`from the reference claim(s) because the examined application claim is either anticipated
`
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1 .321 (c) or 1.321(d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Yamaha Corporation of America Exhibit 1009 Page 3
`
`

`

`Application/Control Number: 11/563,227
`Art Unit: 2618
`
`Page 3
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`2.
`
`Claims 1-26 are provisionally rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 1, 6, 8, 10, 12,
`
`and 17 of copending Application No. 11/563,232 and unpatentable over claim 31 of
`
`copending Application No. 09/805,470. Although the conflicting claims are not identical,
`
`they are not patentably distinct from each other because claims 1, 6, 8, 10, 12, and 17
`
`of copending Application No. 11/563,232 and claim 31 of copending Application No.
`
`09/805,470 encompass all the limitations of claims 1, 9, and 15 of the instant
`
`application. Claims 2-8, 10-14, and 16-26 are dependent claims, respectively, and are
`
`rejected for the same reasoning.
`
`This is a ijrovisional obviousness-type double patenting rejection because the
`
`conflicting claims have not in fact been patented.
`
`Allowable Subject Matter
`
`3.
`
`The following is a statement of reasons for the indication of allowable subject
`
`matter:
`
`Regarding claims 1, 9, and 1 5, none of the prior arts of record, in combination or
`
`individual, show or make it obvious a network-enable audio device of identifying ones of
`
`the plurality of songs in the playlist that are not stored on the electronic device and
`
`providing information to the electronic device enabling the electronic device to obtain
`
`Yamaha Corporation of America Exhibit 1009 Page 4
`
`

`

`Application/Control Number: 11/563,227
`Art Unit: 2618
`
`Page 4
`
`the ones of the plurality of songs that are not stored on the electronic device from at
`
`least one remote source (check the electronic device's data storage space for songs
`
`listed on the assigned playlist and a network connection is made to upload the file if the
`
`songs needed to from the playlist are not stored on the electronic device's data storage
`
`space, see specification 0021). Claims 2-8, 10-14, and 16-26 are dependent claims,
`
`respectively, and are allow for the same reasoning..
`
`4.
`
`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
`
`accompany the issue fee. Such submissions should be clearly labeled !!Comments on
`
`Statement of Reasons for Allowance.!!
`
`Conclusion
`
`5.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Pablo Tran whose telephone number is (571)272-7898.
`
`The examiner normal hours are 9:30 -5:00 (Monday-Friday). If attempts to reach the
`
`examiner by telephone are unsuccessful, the examiners supervisor, Edward Urban, can
`
`be reached at (571)272-7899. The fax phone number for the organization where this
`
`application or proceeding is assigned is (571)273-8300.
`
`6.
`
`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.
`
`Yamaha Corporation of America Exhibit 1009 Page 5
`
`

`

`Application/Control Number: 11/563,227
`Art Unit: 2618
`
`Page 5
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see httpr//pair-directauspto.gov. Should
`
`You have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-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 -272-1 000.
`
`January 31, 2011
`
`/Pablo N Tran/
`
`Primary Examiner, Art Unit 2618
`
`Yamaha Corporation of America Exhibit 1009 Page 6
`
`