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
Status of Claims
Claim(s) 18-37 have been examined.
Claim(s) 1-17 have been canceled.
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 18-27 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. Specifically, claims 18, 28, and 37 as amended recite “automatically determining an event associated with the partial photo product design based on the two or more photos without receiving user input”. However, the specification at paragraph [0038] recites:
[0038] The user design learning module 220 can automatically determine an event from the user input to the first portion of the photo product design 400 (step 320). For example, the user design learning module 220 can automatically determine an event (e.g. a ski trip) from the content in the photos 440 (e.g. by identifying a snow field and ski gears in the pictures), or from the metadata, key words, annotation, or an album title associated with the photos 440.
As paragraph [0038] clearly states, the determination of the invent is based on receiving user input. Accordingly, 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. Correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 18-37 are rejected under 35 U.S.C. 101 because the claims recite a judicial exception which is not integrated into a practical application and the claims lack an inventive concept.
Step 1 is the first inquiry into eligibility analysis and asks whether the claims are directed to a statutory category. In this instance, the answer must be in the affirmative because they recite a method, medium and system.
Step 2A prong 1 is the next step in the eligibility analyses and asks whether the claimed invention recites a judicial exception. In this instance, the claims recite the following limitations which comprise the abstract idea:
receiving user selections of two or more photos and positions for placement of the two or more photos on a first page of a whole photo product design having a plurality of pages;
generating, based on the received user selections, a partial photo product design of the whole photo product design that includes the first page with the two or more photos placed at the positions on the first page;
automatically determining an event associated with the partial photo product design based on the two or more photos without receiving user input;
selecting, based on the event, photos to include on the plurality of pages in the whole photo product.
automatically generating and providing a plurality of selectable design options for at least one other page in the plurality of pages based on the automatically identified event and the selected photos to include on the plurality of pages, wherein the plurality of selectable design options are generated based on learning from the partial photo product design, including learning from the received user selections of the two or more photos and the positions for placement of the two or more photos on the first page.
This is an abstract idea because it is a certain method of organizing human activity because it involves commercial interactions such as marketing and sales activities and/or behaviors.
Step 2A prong 2 is the next step in the eligibility analyses and looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In this instance, the claims recite the additional elements such as:
providing the partial photo product design as machine learning input;
a processor (claim 28)
generating as machine learning output at a user interface;
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
In addition, the recitations of the additional limitations are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
The dependent claims also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For example, claims 19 and 29 do not amount to an integration according to any one of the considerations above. In addition, claims 20-23, 25-27 are directed to the abstract idea itself. As for claim 24, this also does not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same.
In Step 2A, several additional elements were identified as additional limitations:
providing the partial photo product design as machine learning input;
a processor (claim 28)
generating as machine learning output at a user interface;
These additional limitations, including the limitations in the dependent claims, do not amount to an inventive concept because they are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
In addition, they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
Therefore, the claims lack one or more limitations which amount to an inventive concept in the claims.
For these reasons, the claims are rejected under 35 U.S.C. 101.
Terminal Disclaimer
The terminal disclaimer filed on 03/31/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,182,837 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 03/31/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,651,405 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
(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.
Claim(s) 18-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gowen (US 2014/0096041).
Referring to Claim 18, Gowen teaches a method for creating a photo product, the method comprising:
receiving user selections of two or more photos and positions for placement of the two or more photos on a first page of a whole photo product design having a plurality of pages (see Gowen ¶0567, the user selects photos and then drags and drops them onto the various photo slots on the photo book page);
generating, based on the received user selections, a partial photo product design of the whole photo product design that includes the first page with the two or more photos placed at the positions on the first page (see Gowen ¶¶0138-139, a user may remix a page using a remix option which changes the content on the page);
providing the partial photo product design as machine learning input (see Gowen ¶0362, the layout fabrication is used to remix a layout or dynamically create a layout and uses machine learning to study the page layout);
automatically determining an event associated with the partial photo product design based on the two or more photos without receiving user input (see Gowen ¶¶0556-558, the system may mine the project content for information such as prominent subjects, ideas, themes, places that are prevalent data in the project; if there are several photos about a trip to Europe in the project, the system may analyze the photo metadata and text associated with those photos and generate prominent or primary keywords; the “trip to Europe” is the event);
selecting, based on the event, photos to include on the plurality of pages in the whole photo product (see Gowen ¶0128, the algorithm takes the user’s photos and creates new pages based on the project’s theme and metadata);
automatically generating and providing a plurality of selectable design options for at least one other page in the plurality of pages based on the automatically identified event and the selected photos to include on the plurality of pages (see Gowen ¶¶0128,0362, the automix option dynamically creates new pages based on the theme can also recommend assets such as backgrounds, photos, stickers, frames for photo slots, text boxes, or other items), wherein the plurality of selectable design options are generated based on learning from the partial photo product design (see Gowen ¶0362, the engine is a matching learning routine that learns from a library of prioritized assets including photos, stickers, and other prioritized assets and is adapted to study page layouts containing these assets), including learning from the received user selections of the two or more photos and the positions for placement of the two or more photos on the first page (see Gowen ¶¶0362,360);
Referring to Claim 19, Gowen teaches the method of claim 18, further comprising: wherein each of the plurality of selectable design options includes photos from the selected photos based on the event and different positions for placement of photos on the at least one other page (see Gowen ¶¶0128,0139-140).
Referring to Claim 20, Gowen teaches the method of claim 19, further comprising: receiving a selection of one of the plurality of selectable design options (see Gowen ¶0567).
Referring to Claim 21, Gowen teaches the method of claim 20, further comprising: including the selected design option for the at least one other page in the remaining photo product design of the whole photo product design (see Gowen ¶¶0261-262, the items can be overflowed to more than one page).
Referring to Claim 22, Gowen teaches the method of claim 21, further comprising: automatically making a physical photo product including photos of the event based at least in part on the whole photo product design (see Gowen ¶¶0093,88).
Referring to Claim 23, Gowen teaches the method of claim 21, wherein the whole product design is multiple pages (see Gowen ¶0108).
Referring to Claim 24, Gowen teaches the method of claim 23, further comprising: automatically generating and providing as machine learning output a plurality of selectable design options for the multiple pages (see Gowen ¶0362).
Referring to Claim 25, Gowen teaches the method of claim 19, wherein the learning from the partial photo product design comprises: automatically determining, based at least in part on the event, one or more layout parameters in the partial photo product design, wherein the plurality of selectable design options are generated based on further learning from the one or more layout parameters (see Gowen ¶0362).
Referring to Claim 26, Gowen teaches the method of claim 18, wherein the event is determined based at least in part on metadata stored in association with the two or more photos selected by the user for placement on the first page, wherein the metadata is related to time, location, keyword, title of a photo album, or text caption associated with the photos (see Gowen ¶¶0362,0557).
Referring to Claim 27, Gowen teaches the method of claim 18, wherein the event is defined and stored in an event library (see Gowen ¶0121).
Referring to Claims 28-37, these claims are similar to claims 18-27 and therefore rejected under the same reasons and rationale.
Remarks
Additional prior art relevant to the application but not relied upon includes:
Reference U (see PTO-892) which teaches automatic photo book creation.
Chen (US 2014/0363042) which teaches creating a photo book without user intervention.
Saunders (US 2012/0294514) which teaches automated photo book creation.
In regards to the rejection under 35 U.S.C. 101 the applicant respectfully argues on pages 9-10 that the claims recite an improvement to automatically generating photo product designs with minimal user input. However, the examiner argues that that “automatically generating photo product designs with minimal user input” does not equate to an improvement in the functioning of a computer or to any other technology or technical field. The generation of a photo product design is not the “functioning of a computer” and it is not a “technology or technical field”. In addition, and most importantly, the applicant has not alleged what the improvement comprises. If it’s alleged that the improvement is the reduction in human activity, then the court has held that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)). For these reasons, the applicant’s arguments are not persuasive.
In regards to the rejection under 35 U.S.C. 101 the applicant respectfully argues on pages 10-11 that the claims recite unconventional steps that go well beyond what is well-understood, routine, and conventional. In response, the examiner respectfully argues that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. In addition, the examiner did not previously conclude under revised Step 2A that any additional elements were insignificant extra-solution activity. For these reasons, the applicant’s arguments are not persuasive.
In regards to the double patenting rejection, the rejection has been withdrawn because the applicant has filed a proper terminal disclaimer.
In regards to the rejections under 35 U.S.C. 102, the applicant respectfully argues that the prior art does not teach or suggesting “automatically determining an event associated with the partial photo design based on the two or more images without receiving user input”. The applicant argues that the user must select a theme from the theme-selection page before the “automix option” can create pages. The examiner respectfully argues that the Gowen teaches that “SW 5711 mines data from project 5703 and looks for prominent subjects, ideas, themes, places that are prevalent data in the project and that might be repeated throughout the project.” And “if there are several photos of places in a project about a trip to Europe, the system may analyze the photo metadata and text associated with those photos and generate prominent or primary keywords that can be used singly or in combination to retrieve more photos showing European themes or more places, famous quotes from European figures in history, or theme-based stickers or shapes that might be related to Europe.” (see Gowen ¶¶0556-558). Accordingly, the theme is generated automatically without receiving user input. For these reasons, the applicant’s arguments are not persuasive.
Conclusion
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 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 MATTHEW E ZIMMERMAN whose telephone number is (571)270-5278. The examiner can normally be reached 8-4pm M-T, 8-12pm W.
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, Jeff Smith can be reached at (571)272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW E ZIMMERMAN/Primary Examiner, Art Unit 3688
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