Notice of Pre-AIA or AIA Status
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
This office action is in response to amendment/reconsideration filed 4/23/2026 and 1/12/2026, the amendment/reconsideration has been considered. Claims 1-14 and 22-23 are pending for examination. Claims 15-21 and 24 have been withdrawn from consideration.
Response to Arguments
Applicant's arguments been fully considered but they are not persuasive. The applicant argues the following issues.
(A) Rejection under 35 U.S.C. 102 and 103
Issue: The applicant argues that the amended claims overcome the current rejections.
This arguments are moot in light of the new ground of the 102 and 103 rejections set forth below.
(B) Restriction requirement
See Examiner’s response in the Election/Restriction section below.
Election/Restrictions
3. Applicant's election with traverse of Group I (claims 1-14) in the reply filed on 4232026 is acknowledged. The traversal is on the ground(s) that a) “Both claims relate to determining surfaces in
content for secondary content placement and modifying parameters to optimize that placement”, b) “both alleged species involve modifying parameters to maximize exposure” and c) “The search burden would not be serious because both alleged species would be found in the same classification areas relating to content modification and advertisement insertion in video content”. This is not found persuasive because of the following reasons.
Regarding the Applicant’s arguments a) and b), i.e., “both claims relate to determining services in content for secondary content placement and modifying parameters to optimize the placement”, and “both alleged species involve modifying parameters to maximize exposure”, the arguments are not convincing because whether two claims relate to a same broader scope, does not precluded the two claims to be species when both recited narrower than the broader scope.
Regarding the Applicant’s argument c), i.e., “The search burden would not be serious because both alleged species would be found in the same classification areas relating to content modification and advertisement insertion in video content”, the argument is not convincing, because the claimed species recite narrower scope than merely “content modification and advertisement insertion in video content”, therefore different search terms would be required if both species were to be examined, which would cause a serious burden.
Claims 22-23 are grouped with claims 1-14 due to the dependencies.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
5. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 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.
6. Claims 1-14 and 22-23 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 claim(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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
a) Claim 8 recites “determining, by a computing device, based on one or more dimensions associated with secondary content, at least one surface of an object in primary content; modifying, based on the one or more dimensions associated with the secondary content, one or more three-dimensional vertices defining the at least one surface of the object in primary content” which are not supported by the originally filed application. The originally filed application supports “determining, by a computing device, at least one surface of an object in primary content” and “modifying, one or more three-dimensional vertices defining the at least one surface of the object in primary content”, but does not disclose that such determining and modifying are “based on one or more dimensions associated with secondary content”. Claims 8-14 and 23 are similarly rejected. All new matters shall be deleted from the claims.
b) Claim 1 recites “modifying, based on secondary content, the orientation data associated with the surface of the object in the primary content” which is not supported by the originally filed application. The originally filed application supports “modifying the orientation data associated with the surface of the object in the primary content”, but does not disclose that such modification is “based on secondary content.” Claims 2-7 and 22 are similarly rejected. All new matters shall be deleted from the claims.
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The 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.
8. The following is a quotation of 35 U.S.C. 112 (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.
9. Claims 8-14 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a) Claim 8 recites “determining, by a computing device, based on one or more dimensions associated with secondary content, at least one surface of an object in primary content; modifying, based on the one or more dimensions associated with the secondary content, one or more three-dimensional vertices defining the at least one surface of the object in primary content”. The scope of these limitations cannot be definitely determined in light of the specification, because the specification is silent on one or more dimensions associated with secondary content is based on to determine at least one surface of an object in primary content and is silent on the same is based on to modify one or more three-dimensional vertices defining the at least one surface of the object in primary content. For the sake of the examination, Examiner presumes that the claimed limitations read “determining, by a computing device, at least one surface of an object in primary content; modifying, one or more three-dimensional vertices defining the at least one surface of the object in primary content.” Claims 9-14 and 23 are similarly rejected.
b) Claim 1 recites “modifying, based on secondary content, the orientation data associated with the surface of the object in the primary content”. The scope of these limitations cannot be definitely determined in light of the specification, because the specification is silent on secondary content is based on to modify the orientation data associated with the surface of the object in the primary content. For the sake of the examination, Examiner presumes that the claimed limitation reads “modifying, the orientation data associated with the surface of the object in the primary content” Claims 9-14 and 23 are similarly rejected.
Claim Rejections - 35 USC § 102
10. 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.
11. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
12. Claims 1-4, 6-8, 10-14 and 22 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Maruyama (US 20180246631).
As to claim 1, Maruyama discloses a method comprising:
determining, by a computing device, a surface of an object in primary content for placement of secondary content (see Fig. 3; Fig. 7 and [0055]-[0057], wherein the placement candidate area such as all or part of the subarea on 5a is all or part of a side surface of a soccer field, which is therefore a surface of an object in primary content. See [0027], “The placement candidate of the virtual object will be described with reference to FIG. 3. In an example illustrated in FIG. 3, a placement candidate area 5 of the virtual object is present around a field for soccer. The placement candidate area 5 is formed of a plurality of areas, i.e., areas 5a to 5e. The area 5a is divided into a plurality of areas, i.e., subareas 51a to 51n. The placement candidate area 5 may be provided over an entire side surface of the field, as represented by the area 5a and the area 5b… The areas 5a to 5d are each a three-dimensional area.” It is to be noted that a sub-surface is also a surface of an object);
determining orientation data associated with the surface in the primary content (see citation in rejection to the preceding limitation, e.g., Fig. 7; and [0055]-[0057], wherein the area of the placement candidate area as part of subareas 51 is orientation data associated with the surface in the primary content. It is to be noted that the claim merely requires “associated with” as the relationship between the orientation data and the surface);
modifying, based on secondary content, the orientation data associated with the surface of the object in the primary content (see 112 rejection and Examiner’s interpterion stated therein. See citation in rejection to limitation 1, e.g., Fig. 7 and [0055]-[0057], wherein the area of placement candidate area as part of subarea 51 is initially defined as comprising 3 consecutive subareas (51f, 51g, and 51h), but is modified to be defined as 5 consecutive subareas that include two additional subareas 51e and 51i to become (51e, 51f, 51g, 51h, 51i), see e.g., Fig. 7F, based on size requirement of the virtual object for the secondary content); and
causing output of the primary content with the secondary content on the surface associated with the modified orientation data (see Fig. 4; [0047]; Fig. 7; Fig. 9; Fig. 12; [0027]; [0055]-[0057]).
As to claim 2, Maruyama discloses the method of claim 1, wherein the orientation data comprises one or more three dimensional coordinates, and wherein the modified orientation data comprises one or more adjusted three dimensional coordinates configured to increase a surface area of the surface (see citation and explanation in rejection to claim 1, e.g., Fig. 7 and [0055]-[0057], wherein the area of the placement candidate area is modified. As a result, the coordinates of the placement candidate area are modified. Since these areas are three-dimensional areas, the coordinates change reflects three-dimensional coordinates change. See [0027], “The placement candidate of the virtual object will be described with reference to FIG. 3. In an example illustrated in FIG. 3, a placement candidate area 5 of the virtual object is present around a field for soccer. The placement candidate area 5 is formed of a plurality of areas, i.e., areas 5a to 5e. The area 5a is divided into a plurality of areas, i.e., subareas 51a to 51n. The placement candidate area 5 may be provided over an entire side surface of the field, as represented by the area 5a and the area 5b… The areas 5a to 5d are each a three-dimensional area”. See also [0057], “The placement information includes, for example, the vertices of a rectangle representing the placement area 52, the coordinates of the center of the rectangle, and the vertical and horizontal lengths of the rectangle”).
As to claim 3, Maruyama discloses the method of claim 1, wherein determining the surface is based on one or more dimensions of the secondary content, and wherein modifying the orientation data comprises translating, in three dimensions, one or more vertices associated with the surface (it is to be noted that the scope of the limitations are interpreted in light of the specification. See citation in rejection to claim 1 and claim 2, e.g., Fig. 7 and [0055]-[0057], wherein determining the placement candidate area is based on the size requirement of the virtual object/advertisement, and wherein modifying the orientations such as enlarging the placement candidate surface area involves translating the original 3-dimentional coordinates to the modified 3-dimentional coordinates corresponding to the enlarged placement candidate surface area).
As to claim 4, Maruyama discloses the method of claim 1, wherein the modified orientation data comprises at least one of: a position, a length, a width, a height, a depth, an area, a volume, a three-dimensional path, a motion, a weighting value, a mass parameter, an importance parameter, a time on screen, or a lighting parameter associated with the surface (see citation in rejection to claim 1, e.g., Fig. 7 and [0055]-[0057], wherein the subarea is an area).
As to claim 6, Maruyama discloses the method of claim 1, further comprising:
determining, based on the orientation data in the primary content associated with the surface, that the surface is a candidate for placement of the secondary content ([0064], “In the present exemplary embodiment, the placement determination unit 202 is described to determine the position, the shape, and the orientation of the virtual object, according to the movement path of the virtual viewpoint. However, this is not limitative, and at least one of the position, the size, the shape, and the orientation of the virtual object may be determined according to the movement path of the virtual viewpoint. Further, information such as the content of the advertisement to be displayed by the virtual object may be determined according to the movement path of the virtual viewpoint”, wherein the movement path affects the placement candidate area hence the orientation data in the primary content, see Fig. 7 and [0055]-[0057]); and
determining, based on the surface being a candidate for placement of the secondary content, at least one output parameter associated with the object (see citation in rejection to claim 1, wherein the modified coordinates are at least one output parameter).
As to claim 7, Maruyama discloses the method of claim 1, wherein the primary content comprises at least one scene, the method further comprising:
based on the surface being a candidate for placement of secondary content, determining at least one output parameter associated with the at least one scene (see citation in rejection to claim 1, e.g., Fig. 7 and [0055]-[0057], wherein the modified coordinates are at least one output parameter, which is associated with the surface of the soccer field, which is at least one scene ); and
causing output of the at least one scene with an adjustment of at least one output parameter configured to increase exposure of the surface during output of the at least one scene (Fig. 4, and Fig. 7 and [0055]-[0057], wherein the output reflects the modified subareas as the placement candidate to host the advertisement, wherein the increased area for the placement candidate area increases exposure of the placement candidate surface area during output of the at least one scene. It is to be noted that the clam does not require a specific type of “exposure” therefore Examiner interprets as any type of exposure).
As to claim 8, Maruyama discloses a method comprising:
determining, by a computing device, based on one or more dimensions associated with secondary content, at least one surface of an object in primary content (see 112 rejection and Examiner’s interpterion stated therein. See Fig. 3; Fig. 7 and [0055]-[0057], wherein the placement candidate area such as all or part of the subarea on 5a is all or part of a side surface of a soccer field, which is therefore a surface of an object in primary content. See [0027], “The placement candidate of the virtual object will be described with reference to FIG. 3. In an example illustrated in FIG. 3, a placement candidate area 5 of the virtual object is present around a field for soccer. The placement candidate area 5 is formed of a plurality of areas, i.e., areas 5a to 5e. The area 5a is divided into a plurality of areas, i.e., subareas 51a to 51n. The placement candidate area 5 may be provided over an entire side surface of the field, as represented by the area 5a and the area 5b… The areas 5a to 5d are each a three-dimensional area.” It is to be noted that a sub-surface is also a surface of an object);
modifying, based on the one or more dimensions associated with the secondary content, one or more three-dimensional vertices defining the at least one surface of the object in primary content (see 112 rejection and Examiner’s interpterion stated therein. See citation and Examiner’s explanation in rejection to limitation 1, e.g., Fig. 7 and [0055]-[0057], wherein the area of placement candidate area as part of subarea 51 is initially defined as comprising 3 consecutive subareas (51f, 51g, and 51h), but is modified to be defined as 5 consecutive subareas that include two additional subareas 51e and 51i to become (51e, 51f, 51g, 51h, 51i), see e.g., Fig. 7F, based on size requirement of the virtual object for the secondary content. As a result, the coordinates of the placement candidate area are modified. Since these areas are three-dimensional areas, the coordinates change reflects three-dimensional vertices change. See [0027], “The placement candidate of the virtual object will be described with reference to FIG. 3. In an example illustrated in FIG. 3, a placement candidate area 5 of the virtual object is present around a field for soccer. The placement candidate area 5 is formed of a plurality of areas, i.e., areas 5a to 5e. The area 5a is divided into a plurality of areas, i.e., subareas 51a to 51n. The placement candidate area 5 may be provided over an entire side surface of the field, as represented by the area 5a and the area 5b… The areas 5a to 5d are each a three-dimensional area”. See also [0057], “The placement information includes, for example, the vertices of a rectangle representing the placement area 52, the coordinates of the center of the rectangle, and the vertical and horizontal lengths of the rectangle”); and
causing output of the primary content and the secondary content, wherein the primary content comprises at least one surface of the object defined by the one or more modified three-dimensional vertices (see Fig. 4; [0047]; Fig. 7; [0055]-[0057]; Fig. 9; Fig. 12; [0027]).
As to claim 10, Maruyama discloses the method of claim 8, further comprising:
causing the secondary content to be inserted into the primary content (see citation in rejection to claim 8 for locating a surface of an object in the primary content and determined placement candidate areas on the surface of the object in the primary content, and see [0047], “In step S45, based on the acquired virtual object information and placement information, the modeling unit 203 generates a three-dimensional model of the virtual object to be inserted into the virtual viewpoint image, and outputs the generated three-dimensional model to the image generation unit 201”).
As to claim 11, Maruyama discloses the method of claim 8, wherein the one or more three dimensional vertices defining the at least one surface further define at least one of: a position, an orientation, a length, a width, a height, a depth, an area, a volume, a flight path, a motion, a weighting value, a mass parameter, an importance parameter, or a lighting parameter to increase exposure of the object (see citation in rejection to claim 8, the subarea is an area).
As to claim 12, Maruyama discloses the method of claim 8, further comprising:
determining at least one output parameter associated with the at least one surface; and outputting the primary content, wherein the primary content comprises an adjustment of at least one output parameter associated with the at least one surface to increase exposure of the at least one surface (see citation and Examiner’s explanation in rejection to claim 8, e.g., Fig. 7 and [0055]-[0057], wherein the modified coordinate/vertices corresponding to the modified subarea are at least one output parameter associated with the at least one surface in the primary content output which is adjusted to increase the placement candidate area of the surface hence increased exposure of the at least one surface as a placement candidate area. It is to be noted that the claim does not require a specific type of “exposure” therefore Examiner interprets as any type).
As to claim 13, Maruyama discloses the method of claim 8, further comprising:
determining at least one output parameter associated with a scene of the primary content (see citation in rejection to claim 1 and claim 12, wherein the coordinates of the placement candidate area is on the side surface of the soccer field therefore is associated with a scene of the primary content); and
outputting the primary content, wherein the primary content comprises an adjustment of at least one output parameter associated with the scene to increase exposure of the at least one surface during output of the scene (see citation and Examiner’s explanation in rejection to claim 8, e.g., Fig. 7 and [0055]-[0057], wherein the modified coordinate/vertices corresponding to the modified subarea are at least one adjusted output parameter associated with the scene to increase the placement candidate area of the surface hence increased exposure of the at least one surface as a placement candidate area. It is to be noted that the claim does not require a specific type of “exposure” therefore Examiner interprets as any type).
As to 14, Maruyama discloses the method of claim 13, wherein the at least one output parameter associated with the scene comprises at least one of: a position, an orientation, a length, a width, a height, a depth, an area, a volume, a three-dimensional path, a motion, a weighting value, a mass parameter, an importance parameter, an on screen time, or a lighting parameter (see citation in rejection to claim 8, wherein the subarea is an area).
As to claim 22, Maruyama discloses the method of claim 1, wherein the modified orientation data comprises a change in one or more three dimensional coordinates associated with the object (see citation in rejection to claim 1, wherein the increased 3-dimentional subarea indicates change of 3-dimentional coordinates of the placement candidate area on the surface of the object therefore is “associated with the object”. It is to be noted that the claim merely requires “associated with” between the changed coordinates and the object).
Claim Rejections - 35 USC § 103
13. 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.
14. 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 of this title, 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.
15. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 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 of the 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.
16. Claims 5, 9, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama as applied to claim 8 above, and further in view of Smith (US 2019/0075339).
As to claim 9, Maruyama discloses the claimed invention substantially as discussed in claim 8, but does not expressly disclose increasing exposure of the object during output. Smith discloses increasing exposure of an object during output ([0048], “the tools can allow the administrator to highlight a region in a frame of the video content, such as by selecting a surface of an object within the video content”, wherein highlighting a surface of an object increases exposure of the object during output).
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine Maruyama with Smith. The suggestion/motivation of the combination would have been to highlight a region in a frame of the video content (Smith, [0048]).
As to claim 23, Maruyama in view of Smith discloses the method of claim 12, wherein the adjusted at least one output parameter associated with the object comprises a brightness level associated with the at least one surface (Smith, see citation in rejection to claim 9, e.g., [0048], wherein highlighting a surface of an object within the video content indicates a brightness level adjustment associated with the surface).
As to claim 5, Maruyama in view of Smith discloses the method of claim 1, further comprising:
selecting, based on the orientation data in the primary content associated with the surface, from a database of content, the secondary content, wherein the secondary content is configured for placement on the surface (Smith, [0018], “the digital advertisement management system selects an advertisement that fits, or can be adapted to fit, within dimensions of the corresponding location within the video content.”); and
causing the secondary content to be inserted into the primary content according to the modified orientation data (see Maruyama, Fig. 4; and Smith, Fig. 4A; Fig. 4B, and Fig. 4C).
Conclusion
17. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUA FAN whose telephone number is (571)270-5311. The examiner can normally be reached on 9-6.
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, Nasser Goodarzi, can be reached at (571) 272-4195. 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.
/HUA FAN/ Primary Examiner, Art Unit 2426
Prosecution Insights