`“x
`‘\\f
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`11/680,452
`
`02/28/2007
`
`Chuck Jennings
`
`406855
`
`5285
`
`11/28/2017 —POLSINELLIPC m
`
`7590
`27148
`
`
`BLA <’ DOUGLAS B
`900 WEST 48TH PLACE
`SUITE 900
`KANSAS CITY, MO 64112-1895
`
`PAPER NUMBER
`
`2442
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/28/2017
`
`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):
`
`uspt @polsinelli.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Applicant(s)
`Application No.
` 11/680,452 JENNINGS ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DOUGLAS BLAIR its“ 2442
`-- The MAILING DA TE 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from 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) 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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 9/27/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)|:I 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 6-35 and 41-132 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)|:I Claim(s)
`7)|Z| Claim(s) 6-35 and 41- 132 is/are rejected.
`
`8)|:I Claim(s)_ is/are objected to.
`* If any)claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`
`
`()
`
`are subject to restriction and/or election requirement.
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`hit z/thvvvtlsnto. ovI’ atentS/init events/
`iindex.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)|:l 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)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`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)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20171121A
`
`
`
`Application/Control Number: 11/680,452
`
`Page 2
`
`Art Unit: 2442
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed 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 l.l7(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 9/27/2017 has been entered.
`
`Response to Arguments
`
`The double patenting rejection is currently withdrawn based on the scope of the current
`
`claims and those in the 13/843,412 application. The rejection could reappear depending upon
`
`amendments made to either appliation.
`
`Applicant’s arguments, see Remarks, filed 9/27/2017, with respect to the rejection(s) of
`
`claim(s) 6—35 and 41—132 under 35 USC section 103 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 35 USC section 112(a).
`
`The applicant’s clarifying remarks show how Eyal does not show, for each segment,
`
`transmitting information instructing the communication device how to communicate with each
`
`of the plurality of resources available to facilitate streaming the segment. Col. 12, lines 14—67
`
`shows how the playlists are created by analyzing multiple websites. This analysis would allow
`
`for multiple resources to contain the same segment but Eyal does not suggest transmitting
`
`
`
`Application/Control Number: 11/680,452
`
`Page 3
`
`Art Unit: 2442
`
`information instructing the communication device on how to communicate with more than one
`
`resource, to obtain the segment. The prior art was not found to teach or suggest this limitation
`
`because the prior art performed selection of a resource in a playlist before it is sent to user.
`
`However, the Examiner cannot indicate that this feature is patentable because it does not
`
`appear that the applicant's originally filed disclosure taught or suggested this feature. The
`
`applicant's current amendment that specified that for each segment, resources are determined and
`
`that information about these resources is transmitted to the communication device was made on
`
`5/20/2016. The applicant’s remarks from 5/20/2016 reference a number of paragraphs that
`
`allegedly provide support for the amendment. After a careful review of these paragraphs and the
`
`rest of the applicant's disclosure, the Examiner cannot find support for the claimed invention
`
`within the applicant's specification. Consequently new rejections are made under 35 USC
`
`section 112(a).
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 USC. 112(a):
`
`(a) IN GENERAL.7The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre—AIA 35 USC. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`
`
`Application/Control Number: 11/680,452
`
`Page 4
`
`Art Unit: 2442
`
`Claims 6—35 and 41—132 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA),
`
`first paragraph, as failing to comply with the written description requirement. The c1aim(s)
`
`contains subject matter which was not described in the specification in such a way as to
`
`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for
`
`pre—AIA the inventor(s), at the time the application was filed, had possession of the claimed
`
`invention.
`
`The following is claim 6:
`
`5. (Previousty Presented) A method comprising:
`
`receiving, by a management system via a communication network and from a communication
`device, a request associated with a user of the communication device to have media content
`streamed to the communication device, the requested media content comprising a pina‘aiity ot
`media content segments and the management system comprising a combination of hardware
`and software; and
`
`tor each one of the oinratity of media content segments, {it determining, by tne
`management system, a oiuraiity of resources avaiiahie to iaciiitate streaming the media content
`segment to the communication device and (it) transmitting, from the management system to
`the communication device, an indication of the media content segment and information
`instructing the communication device how to communicate with each oi the oinraiity oi
`resources to cause the media, content segment to be streamed to the communication device
`in accordance with at least one ruie associated with the requested media content to controi new
`the oiuraiity ot media content segments are to be streamed to the communication device, a
`cacahiiity oi the communication device, and an attribute of the user,
`
`The following is claim 41:
`
`41, (Previonsiy Presented) A system comprising:
`
`a management system comprising a combination of hardware and software to:
`
`receive, via a communication network and from a communication device, a request associated
`with a user of the communication device to have media content streamed to the communication
`
`device, the requested media content comprising a oiuraiity ot segments;
`
`
`
`Application/Control Number: 11/680,452
`
`Page 5
`
`Art Unit: 2442
`
`and for each one at the piuraiity at media content segments, (i) determine a eiuraiity of
`resources, other than the management system; avaiiahie to taciiitate streaming the media
`content segment and (ii) transmit to the communication device an indication of the media
`content segment and information instructing the communication device how to
`communicate with each at the cturaiity ot resources to cause the media content segment to
`be streamed to the communication device in accordance with at ieast one ruie associated with
`
`the requested media content to controi how the oiuraiity of media content segments are to be
`streamed to the communication device, a caeahiiit}.i oi the communication device, and an
`attriioute oi the user:
`
`The following is claim 79:
`
`7’9, (Previousiy Presented) A method comprising:
`
`receiving, by a management system via a communication network and from a communication
`device, a request associated with a user of the communication device to have media content
`streamed to the communication device, the requested media content comprising a oiuraiity of
`media content segments and the management system comprising a combination oi hardware
`and software; and
`
`for each one at the eturaiity at media content segments, (i) determining by the
`management system a piuraiity of resources other than the management system avaiiahie to
`taciiitate streaming the media content segment to the communication device and {ii}
`transmittihgg from the management system to the communication device, an indication of
`the media content segment and information instructing the communication device how to
`communicate with each at the ciuratity ct resources to cause the media content segment to
`toe streamed to the communication device in accordance with at ieast one ruie associated with
`
`the requested media content to controt how the oiuraiity ot media content segments are to be
`streamed to the communication device, a caoahiiity oi the communication device, and an
`attribute of the user.
`
`The following is claim 93:
`
`93. (Previousiy Presented) A system comprising:
`
`a management system comprising a combination of hardware and software to:
`
`receive, via a communication network and from a communication device, a request associated
`with a user of the communication device to have media content streamed to the communication
`
`device, the requested media content comprising a oiuraiity ot media content segments;
`
`
`
`Application/Control Number: 11/680,452
`
`Page 6
`
`Art Unit: 2442
`
`and fer each ene et the piuretity et media eentent segments, (i) determine a pinreiity of
`resources ether than the management system eveiiahie in teeiiitate streaming the media
`eentent segment to the eernmunieetien device and (ii) transmit te the eemmunieetien device
`an indication of the media eentent segment and intermetieh inetrueting the eemmdnieetien
`detriee new te eemmdnieete with each re? the eiureitty et reeedreee to cause the media
`eentent segment to be streamed te the eemmunieetien device in accordance with at least ene
`ruie assoeieted with the requested media eeiiteiit te control how the piureiity of media eentent
`segments are to be streamed to the eemrnunieetieii device, a eaeeeiiity et the eemrnunieetien
`device, and an attribute of the user.
`
`The applicant amended the claims on 5/20/2016 to specify that for each segment,
`
`information instructing the communication device how to communicate with each of the
`
`plurality of resources. In the applicant's 5/20/2016 remarks, the applicant pointed to paragraphs
`
`40, 42, 55, 94, 139, 142, 144, 150, 187, and 345 for allegedly providing support for this
`
`amendment. The Examiner has reviewed these paragraphs and the rest of the applicant’s
`
`disclosure and cannot support for the claim language in question. The applicant did not
`
`originally disclose a method or system Where for each segment, information instructing the
`
`communication device how to communicate with each of the plurality of resources. In
`
`paragraphs 75 and 86, the applicant discloses creating playlists but does not disclose transmitting
`
`information instructing the communication device how to communicate With each of the
`
`plurality of resources to cause one particular segment to be streamed. The applicant provides
`
`support for providing information to the communication device for accessing a resource for each
`
`segment but not multiple resources for each segment. The applicant’s disclosure only covers
`
`sending information instructing the communication device on how to communicate with a single
`
`resource for each particular segment.
`
`
`
`Application/Control Number: 11/680,452
`
`Page 7
`
`Art Unit: 2442
`
`The following is a quotation of 35 U.S.C. ll2(b):
`(b) CONCLUSION.7The 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. ll2 (pre—AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 41 and 93 and their dependents are rejected under 35 U.S.C. ll2(b) or 35 U.S.C.
`
`ll2 (pre—AIA), 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 pre—AIA the
`
`applicant regards as the invention.
`
`Claims 41 and 93 are rejected under 35 U.S.C. ll2(b) or 35 U.S.C. ll2 (pre—AIA),
`
`second paragraph, as being incomplete for omitting essential structural cooperative relationships
`
`of elements, such omission amounting to a gap between the necessary structural connections.
`
`See MPEP § 2172.01. The omitted structural cooperative relationships are:
`
`it is unclear how
`
`any of the limitations of these claims relate to the “combination of hardware and software” that
`
`make up the structure of the system. It is also unclear how the hardware corresponds to the
`
`software since no relationship is established. The applicant's claims appear to cover generic
`
`computing technology that is intended to perform a specific use. Clearly generic computing
`
`technology, by itself, could not be patentable. The applicant is encouraged to claim each
`
`disclosed item that performs each claimed function and make it clear that these items cover
`
`hardware for performing the claimed functions.
`
`Conclusion
`
`
`
`Application/Control Number: 11/680,452
`
`Page 8
`
`Art Unit: 2442
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DOUGLAS BLAIR whose telephone number is (571)272—3893.
`
`The examiner can normally be reached on 9:00am-5:30pm.
`
`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, Glen Burgess can be reached on (571) 272—3949. 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 (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—1000.
`
`/DOUGLAS BLAIR/
`
`Primary Examiner, Art Unit 2442
`
`
`
`Application/Control Number: 11/680,452
`
`Page 9
`
`Art Unit: 2442
`
`