`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
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`CONF {MATION NO.
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`12/131,846
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`06/02/2008
`
`Mats Hylin
`
`19480—2506US05
`
`6597
`
`06/24/2011
`
`7590
`27723
`KEVIN FARRELL
`PIERCE ATWOOD
`100 SUMMER STREET
`mm
`BOSTON, MA 02110
`
`TRYDER, GREGORY J
`
`2629
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`
`
`
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`06/24/201 1
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`Patent @pierceatwood.c0m
`
`PTOL—90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
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`12/131,846
`
`HYLIN ET AL.
`
`Examiner
`GREGORY .I. TRYDER
`
`Art Unit
`2629
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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 () 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).
`
`Status
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`1)IZI Responsive to communication(s) filed on 02 June 2008.
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`a)I:l This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IXI Claim(s) M is/are pending in the application.
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`4a) Of the above claim(s) _ is/are withdrawn from consideration.
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`5)I:I Claim(s) _ is/are allowed.
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`6)|Zl Claim(s 1-_21is/are rejected.
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`)
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`)
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`(
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`(
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`Application Papers
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`is/are objected to.
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`are subject to restriction and/or election requirement.
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`9)I:I The specification is objected to by the Examiner.
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`0)IZI The drawing(s) filed on 20 October 2008 is/are: a)IZI accepted or b)|:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`11)|:l The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:l AII
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`b)I:l Some * c)IZ| None of:
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`1.IZI Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`4) D Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper N°(5 )/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5)I:I Notice of Informal Patent Application
`3) IZI Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| DateW16”: Other:
`US. Patent and Trademark Office
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`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20110616
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`
`
`

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`Application/Control Number: 12/131 ,846
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`Page 2
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`Art Unit: 2629
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`DETAILED ACTION
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`Double Patenting
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`A rejection based on double patenting of the "same invention" type finds its
`1.
`support in the language of 35 U.S.C. 101 which states that "whoever invents or
`discovers any new and useful process may obtain a patent therefor
`(Emphasis
`added). Thus, the term "same invention," in this context, means an invention drawn to
`identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re
`Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164
`USPQ 619 (CCPA 1970).
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`A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by
`canceling or amending the conflicting claims so they are no longer coextensive in
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`scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection
`based upon 35 U.S.C. 101.
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`2.
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`Claims 1-21 are rejected under 35 U.S.C. 101 as claiming the same
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`invention as that of claims 1-21 of prior U.S. Patent No. 7,382,334 B1. This is a
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`double patenting rejection.
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`Claims 1-21 of the instant application are identical in both scope and numbering
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`to claims 1-21 of prior U.S. Patent No. 7,382,334 B1.
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`The nonstatutory double patenting rejection is based on a judicially created
`3.
`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).
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`

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`Application/Control Number: 12/131 ,846
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`Page 3
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`Art Unit: 2629
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`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.
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`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).
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`4.
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`Claims 1-21 are rejected on the ground of nonstatutory obviousness—type
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`double patenting as being unpatentable over claims 1, 2, 5, 8, 9, 10, 13, 20 and 21
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`of U.S. Patent No. 6,005,534. Although the conflicting claims are not identical, they are
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`not patentably distinct from each other because the essentially claim the same subject
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`matter with the distinction being the control of television sets or cameras versus
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`projectors. Television sets are known in the art to be of the projector type. Wherein said
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`claims detail an exposure list and dynamic booking of information in time for exposure
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`from mediators. Claims 1 and 11 in the present application details a method of
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`coordinating and controlling projectors. Claim 1 and 13 in the patent (534) details a
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`method of coordinating and controlling television sets and or cameras. The distinction
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`being television sets or cameras versus projectors. Televisions are known to have
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`projector systems. Claims 1 and 11 in the present application details generating an
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`exposure list comprising control instructions with regard to what, when, where, and how.
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`Claim 1 and 13 in the patent (534) details generating an exposure list that specifies
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`display content, display location, timing of display, and duration of such display. While
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`worded differently the limitation in each case is essentially the same. Claims 1 and 11
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`in the present application details an exposure list being updated in real time. Claim
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`

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`Application/Control Number: 12/131 ,846
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`Page 4
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`Art Unit: 2629
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`1.and 13 in the patent (534) details an exposure list being updated in real time. While
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`worded differently the limitation in each case is essentially the same. Claims 1 and 11
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`in the present application details independent control of the television or camera as
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`provided by the information in the exposure list. Claim 1 and 13 in the patent (534)
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`details independent control of the projectors as provided for by the information in the
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`exposure list. Claims 1 and 11 in the present application details a control center linking
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`to the television or camera in response to the exposure list being updated by input from
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`a mediator, said control center having a computerized linking or interface. Claims 1 and
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`13 in the patent (534) details a control center linking to the projectors in response to the
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`exposure list being updated by input form a mediator, said control center having a
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`computerized linking or interface. While worded differently the limitation in each case is
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`essentially the same. Generally Claim 1 of the present application is broader in scope
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`but covers the same subject matter with respect to televisions and projectors.
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`Claims 2, 12, and 13 of the present application detail a mediator and drive
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`routines with round the clock updating. Claim 1 and 13 of patent (534) details a
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`mediator and drive routines with real time updating. Claims 3 and 14 of the present
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`application detail a system administrator able to update the exposure list. Claim 2 of
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`patent (534) details a system administrator able to update the exposure list. Claims 4
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`and 15 detail a remote computerized device and database having storage. Claim 5 of
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`patent (534) details a remote station computer and memory buffer for storing received
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`data. Claims 5 and 16 detail a reserved instruction fields. Claims 8 and 20 of patent
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`(534) detail a reserved instruction field. Claims 6 and 17 detail control instructions
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`Application/Control Number: 12/131 ,846
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`Page 5
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`Art Unit: 2629
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`placed in a queue. Claims 9 and 21 of patent (534) detail control instructions placed
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`in a queue. Claims 7 and 18 of the present application details a sensing of non-
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`functioning. Claim 10 of patent (534) details detecting a nonfunctioning state. Claims 8,
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`9, and 19-21 of the present application detail a television having a unique address.
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`Claims 1 and 13 detail having independently selected projectors, which must have an
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`address or switch to be selected. Generally the claims of the present application are
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`broader in scope but cover the same subject matter with respect to televisions and
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`projectors.
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`5.
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`Claims 1-21 are rejected on the ground of nonstatutory obviousness-type
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`double patenting as being unpatentable over claims 1, 2, 5, 8, 9, 10, 13, 20 and 21
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`of U.S. Patent No. RE39,470 E. Although the conflicting claims are not identical, they
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`are not patentably distinct from each other because they essentially claim the same
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`subject matter with the distinction being the control of television sets or cameras versus
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`projectors. As RE39,470 E is a reissue of Patent No. 6,005,534, a separate discussion
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`of the correspondence of each of the respective claims of the current application and
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`RE39,470 E will be omitted. Please refer to the discussion above for a full description
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`of said correspondence.
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`Conclusion
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`6.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`Schoenberger et al. (US 4860379 A) teaches a data communications system.
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`Application/Control Number: 12/131 ,846
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`Page 6
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`Art Unit: 2629
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`Herz et al. (US 5351075 A) teaches a home video club television broadcasting
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`system.
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`Nemirofsky (US 5412416 A) teaches a video media distribution network
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`apparatus and method.
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`Mihara et al. (US 5481757 A) teaches a CATV terminal device in two-way
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`communication with CATV system.
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`Kochanski (US 5512934 A) teaches a system and method for transmission of
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`programming on demand.
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`Budow et al. (US 5521631 A) teaches interactive digital service systems with
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`store and forward capabilities.
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`Hendricks et al. (US 5600573 A) teaches operations center with video storage for
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`a television program packaging and delivery system.
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`Belknap et al. (US 5603058 A) teaches a video optimized media streamer having
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`communication nodes receiving digital data from storage nodes and transmission of
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`said data to adaptors for generating isochronous digital data streams.
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`Moskowitz et al. (US 5629732 A) teaches viewer controllable one-demand
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`multimedia services.
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`Dunn (US 5752160 A) teaches an interactive entertainment network system and
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`method with analog video startup loop for video-on-demand.
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`Sutton, Jr. (US 5923361 A) teaches multiple subscriber video-on-demand
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`systems.
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`Application/Control Number: 12/131 ,846
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`Page 7
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`Art Unit: 2629
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`Treffers et al. (US 5940071 A) teaches a method and apparatus for scheduling
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`the availability of movies-on-demand and interactive services.
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`Decker et al. (US 6009465 A) teaches entertainment and information systems
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`and related management networks for a remote video delivery system.
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`Jonason et al. (US 6507949 B1) teaches an information system for assigning an
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`information-category and a priority of exposure for spots or blocks of information in a
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`digital information system comprising interfaces for data and telecommunication for
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`round-the-clock transmission of information at places accessible to and frequented by
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`the general public including places where television sets are placed.
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`Fenwick et al. (US RE34611 E) teaches a video selection and distribution
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`system.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to GREGORY J. TRYDER whose telephone number is
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`(571 )270-7365. The examiner can normally be reached on 8AM to 5PM, Monday
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`through Friday.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Lun-Yi Lao can be reached on (571)272-7671. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`

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`Application/Control Number: 12/131 ,846
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`Page 8
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`Art Unit: 2629
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`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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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/GREGORY J TRYDER/
`
`Examiner, Art Unit 2629
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`/LUN-YI LAO/
`
`Supervisory Patent Examiner, Art
`Unit 2629
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`