DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see Remarks at page 9, filed 8 September 2025, with respect to the objections to the specification, the title, abstract, drawings, and claim 10 have been fully considered and are persuasive. The objections have been withdrawn.
Applicant’s arguments, see Remarks at page 9, filed 8 September 2025, with respect to the rejection of claims 16-19 under 35 U.S.C. 112(d) have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant’s arguments, see Remarks at page 9, filed 8 September 2025, with respect to the rejections of claims 1-19 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant’s arguments, see Remarks at pages 9-10, filed 8 September 2025, with respect to the rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been considered. Applicant argues “Kim, Hoarty and Petrovic disclose embedding data via the watermark technique and submits that these references would not have taught the claimed features (A)-(C).” As to Kim, the rejection of claims 1 and 10 under 35 U.S.C. 102 is withdrawn as necessitated by applicant’s amendment, particularly the limitations “a first area comprising a plurality of pixels each including an RGB value” and “replacing the RGB value of each of the plurality of pixels in the first area …”. While Kim discloses embedding the watermark into “specific pixels” (par. 85), Kim does not explicitly teach an area of multiple pixels and replacing each pixel in the area. Accordingly, the rejections under 35 U.S.C. 102 and 35 U.S.C. 103 are withdrawn as necessitated by Applicant’s amendment and applicant’s remaining arguments are moot because they do not apply to any outstanding rejection.
Claim Objections
Claim 13 is objected to because of the following informalities: “which one of” should be changed to “which is one of” to improve clarity. Appropriate correction is required.
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 1-20 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 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, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, in part, “receiving first data for controlling a predetermined device to execute, in synchronism with a first video signal, processing related to the first video signal” (emphasis added). Claim 10 recites similar claim language. Paragraphs 55 and 56 of the specification describe the reproduction processing of the second video signal and the processing related to the first data being performed/executed “synchronously” by a terminal. The method of claim 1 and the processor-implemented instructions of claim 10 are directed to the embodiment of FIG. 4, where various steps are performed to process the first data and the first video signal in order to generate the MPEG4-encoded second video signal, which is processed by a terminal according to paragraphs 55 and 56.
Applicant’s disclosure does not describe synchronizing a predetermined device (e.g., terminal 30) with the first video signal (original video signal). Rather, the second video signal includes first data that is “reproduced in synchronization with the frame” (par. 55). In other words, a terminal simultaneously reads the embedded first data and reproduces the corresponding frame of the second video signal containing the embedded first data. The terminal does not synchronize anything with the first video signal because the first video signal is modified to create the second video signal by including the embedded data in RGB values in the first video signal.
Furthermore, the specification does not describe the video signal processing device as receiving first data to control “a predetermined device” to execute “processing related to the first video signal” that is synchronized “with the first video signal” as recited in claim 10. Rather, as described by, for example, FIG. 7 and paragraphs 41 and 45, the terminal, not the video signal processing device, controls the “processing related to the first video signal” (illumination control data) by reading the received embedded first data after decoding the second video signal received from the server.
Therefore, claims 1 and 10 contain 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, at the time the application was filed, had possession of the claimed invention. Dependent claims 2-9 and 11-20 include this subject and are therefore rejected for the same reasons.
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 1-9 and 20 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.
Claim 1 recites, in part, “receiving first data for controlling a predetermined device to execute, in synchronism with a first video signal, processing related to the first video signal” (emphasis added). Claim 10 recites similar claim language. It is unclear whether patentable weight should be given to “for controlling a predetermined device to execute, in synchronism with a first video signal, processing related to the first video signal”. Claim 1 is a method and while “receiving first data” is considered part of the method of claim 1, the claim language that follows implies a subsequent, unclaimed use of the received first data. Claim 10 is a device and the processor-implemented instructions include an instruction to “receive first data”, but it is implied the “predetermined device” performs the synchronous execution, not the video signal processing device of claim 10. Indeed, as shown in FIG. 1, the video signal processing device is a separate component than the terminal (predetermined device) and server. Thus, it is unclear whether the scope of the method of claim 1 and the scope of the device of claim 10 includes “controlling a predetermined device to execute, in synchronism with a first video signal, processing related to the first video signal” or if the method and device merely need to receive first data capable of “controlling a predetermined device to execute, in synchronism with a first video signal, processing related to the first video signal”.
For purposes of applying prior art, the examiner interprets claim 1 as including an additional step apart from the two “receiving” and “generating” steps, the additional step being controlling the predetermined device to execute, in synchronism with the first video signal, processing related to the first video signal. For purposes of applying prior art, the examiner interprets claim 10 as a system including the “predetermined device” where the video signal processing device of claim 10 receives first data and the predetermined device is a terminal that receives the first data to control processing related to the first video signal in synchronism with the first video signal. Dependent claims 2-9 and 11-20 are rejected for inheriting and not curing the deficiencies of claims 1 and 10 respectively.
Claim 1 recites, in part, “receiving first data … in synchronism with a first video signal … receiving a first video signal … generating a second video signal from the first video signal” (emphasis added). The antecedent basis of “the first video signal” is unclear because there are two instances of “a first video signal”. For purposes of applying prior art, the examiner assumes both instances of “a first video signal” are the same signal. Dependent claims 2-9 and 20 are rejected for inheriting and not curing the deficiencies of claim 1.
Conclusion
Applicant's amendment necessitated the new grounds 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN P POTTS whose telephone number is (571)272-6351. The examiner can normally be reached M-F, 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sumati Lefkowitz can be reached at 571-272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN P POTTS/Examiner, Art Unit 2672
/SUMATI LEFKOWITZ/Supervisory Patent Examiner, Art Unit 2672