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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Claims 1-23 are pending.
Claim Rejections - 35 USC § 112
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.
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.
Claims 1, 3-16 and 19 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.
Claims 1 and 9 recite “wherein generating video layers and objects is based on entered command, adding the video layers to be inserted in-between layers of the video template, using a program API, adding parameters to be updated by the API, determining the video layers and their position between the layers of the video template.”
Applicant appears to have used para. [0062] from the PGPub of their application as support for this amendment. However, the claim amendment includes extra commas the original paragraph in the specification didn't have, which changes the context, and thus means that the claim language in not supported in the specification as originally filed. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
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.
Claims 1, 3-16 and 19 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.
Claims 1 and 9 recite “wherein generating video layers and objects is based on entered command, adding the video layers to be inserted in-between layers of the video template, using a program API, adding parameters to be updated by the API, determining the video layers and their position between the layers of the video template.”
The claim language is written in such a way as to make it unclear whether the generating is “based on” only an “entered command,” or whether the generating is based on all of the list of items that follow; namely, also based on adding the video layers, using a program API, adding parameters, and determining the video layers.
Is the generating based on all 5 of those things? Because there is no "and." Or is the generating based on just the first thing, and then the claim requires the other 4 things as separate acts?
Applicant appears to have used para. [0062] from the PGPub of their application as support for this amendment. However, the claim amendment includes extra commas the original paragraph in the specification didn't have, which changes the context.
Therefore, the claims are indefinite, as Examiner is unsure what is being claimed, which makes it impossible to determine the metes and bounds of the invention. Appropriate correction is required.
Election/Restrictions
Newly submitted claims 20-23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the claims recite “identifying required actions, scheduling, layer and parameter/properties of each object command; updating each layer of the video template with objects based on the identified required actions, scheduling, layer and parameter/properties.” None of the claims in previous submissions contained any mention of identifying required actions.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 20-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant’s arguments with respect to all claims have been considered but are moot in view of the new grounds of rejection in view the 35 USC § 112 rejections.
Conclusion
Claims 1, 3-16 and 19 are rejected. Claims 2, 17, 18 and 20-23 are withdrawn from consideration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua D Taylor whose telephone number is (571)270-3755. The examiner can normally be reached Monday - Friday 8 am - 6 pm.
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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.
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/Joshua D Taylor/Primary Examiner, Art Unit 2426 May 15, 2026
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