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
35 USC § 112
Claim limitation “interface module configured to” and “video generation module configured to” have been interpreted under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “interface module” and “video generation module” coupled with functional language “configured to” without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier.
Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 9 and its dependent claims 10-12 are interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation: paragraphs 19-20 appears to teach that the processor of the system implements stored code to allow the functionality of the “interface module” and “video generation module” and is therefore interpreted below as being implemented by the corresponding CPU/processor of the prior arts listed.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112, sixth paragraph.
For more information, see Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Response to Arguments
Applicant's arguments filed 2/2/2026 with regards to claims 5-6 have been fully considered but they are not persuasive.
In re pages 7-9, applicants present the argument that Kalish’s teaching of pausing playback and prompting the user to input “change in parameters data” describes video customization parameter (text, images, personalization fields), which are different from executing “delayed actions” via APIs of external services as recited in claim 5. Similarly, the applicants argue the “during video playback” limitation as well.
In response, the examiner respectfully disagrees. It appears that while the claim language is interpreted in light of the specification, one cannot import the specification into the claims where no such limitation appears in the claim language itself. With respect to the limitations present, it appears that some of the meaning/definition from the specification could be read into the claim language. With regards to the limitation of “change in parameter data”, the term parameter data is open and vague and under BRI, examiner’s position is warranted and well within the scope of the limitation. Similarly, the “during the playback” argument is not persuasive. Paragraphs 23-24, 39-43 teaches wherein the player begins playback, the client is prompted with a displaying to enable the user to input change in parameters data. While this is going on, it appears that the video playback is not happening until the process is completed in which a new video version is received, the playback resumes automatically (para 45)); Further, Kalish discloses a checkup module that reads metadata upon opening the video file and, in at least one embodiment, prompts the user for input while the video is loading or before the updated version is generated and automatically played (Fig. 4A, steps 250A–260A). The Examiner reads "during video session" as the broader operative context, i.e., within the context of a user's video playback session, not necessarily while frames are actively streaming. Kalish's flow from opening the video through user input to automatic playback of the updated version falls within this interpretation.
Applicants further present the argument that the limitation of “API of external service” and “determining an action to be performed on the user device based on pre-defined rules”. Applicants also argue that the “video generation service” is not an “external service” within the meaning of the claims. Applicant cites paragraphs 73-81 of the specification.
In response, examiner respectfully disagrees. It appears that while the claim language is interpreted in light of the specification, one cannot import the specification into the claims where no such limitation appears in the claim language itself. With respect to the limitations. The API is explicitly taught in paragraphs 97 and 165 for using customization parameters for updated video playback. Additionally, the claim is presented in the alternative form, although both instances of API of external service or uploading web page are both anticipated. Even if Applicant's characterization of the video generation server as internal is accepted for the "API of external service" option, Kalish's use of an HTTP-based web interface (Fig. 4A, step 270A; Fig. 1C, step 700C) for submitting user data to the video generation server reads on the alternative "uploading web page using the data" option. Kalish discloses submitting user data along with instruction metadata to a remote server via an HTTP link (paragraphs 97, 99), which constitutes "uploading" data via a web-based interface.
Applicants further argue that “pre-defined rules” are not met by Kalish and that it fails to teach a rule-based decision engine that evaluates customized data against predetermined criteria to trigger specific actions.
The Examiner disagrees. Kalish explicitly discloses checking metadata predefined conditions (Fig. 4A, steps 230A–240A; paragraph 117), where the system evaluates the video metadata against expiration/validation criteria to determine whether editing or refresh is required. Additionally, the metadata itself contains pre-defined customization parameters and business rules including context data and pre-defined information sources (Fig. 2C, element 728; paragraph 105). These pre-defined criteria constitute "pre-defined rules" for determining what action the system takes.
With regards to claim 6, applicants argue that Kalish does not teach storing user data for future delayed actions triggered by in-video events.
In response, the examiner notes that the "saving data for future, delayed action based on trigger within the movie or input data from the user" in claim 6 is presented in the alternative format. However, as discussed above the user’s input are required for the saving data for future delayed action. However, as discussed in the prior Office Action, the language is also readable on Kalish's disclosure of saving customization parameters within the video metadata file (paragraphs 111–112, 150) as “customization parameters” that are then used to regenerate the video when the player subsequently opens and processes the metadata (Fig. 4A, steps 210A–240A). The trigger within the movie corresponds to the expiration/validation check performed upon video opening.
Applicant argues that since claim 5 is not anticipated, claims 7–8 are likewise patentable. The Examiner has maintained the §102 rejection of claim 5 above. Accordingly, the underlying predicate for the §103 rejection of claims 7–8 (Kalish as the base reference) remains intact.
With respect to claim 7's additional limitation of "redirecting to internal links in the video or external hyperlinks during the video playing," Fink (US 8,566,353) teaches redirecting users to websites or mobile applications via hyperlinks presented during video playback (Figs. 2–3; col. 9, line 57 – col. 10, line 9). Applicant's argument that Fink's "simple hyperlink functionality" is insufficient because it lacks the synergistic combination with external service APIs is noted. However, the claim does not require synchronization between hyperlink navigation and external API calls, it merely requires the additional step of redirecting to links during video playing, which Fink plainly discloses. The motivation to incorporate Fink's hyperlink functionality into Kalish's video session system to improve user experience by providing direct navigation to relevant resources (col. 5, lines 42–65) remains reasonable and is not overcome by this argument.
Applicant’s arguments, see pages 10-13, filed 2/2/2026, with respect to claims 1-4 and 9-12 have been fully considered and are persuasive. The rejections of claims 1-4, 9-12 have been withdrawn. Examiner suggest making necessary formatting corrections to remove capitalized letters and correct the misspelled “inherent” in claims 1 and 9.
Applicant’s arguments with respect to Rajendran is noted, but moot since Kalish was the intended reference.
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 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.
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.
Claims 5-6 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Kalish (US 2022/0028425).
Regarding claim 5, Kalish teaches a method for executing delayed actions during video session (Figs. 1A-2C. Paragraphs 23-24 and 39-43 at least teaches editing a video for which a user customized data is implemented on the video. The action to be delayed is met by the action that takes place after the user updates the customization parameters, which in this case, is to update the data to be displayed automatically with the video once the video has been updated), implemented on at least one non-transitory computer readable storage device (paragraphs 2, 21, 174-175) and one or more processors (paragraphs 174-175) operatively coupled to the storage device on which are stored modules of instruction code which when executed by said one or more processors implements:
- receive user customized data during video playing (paragraphs 23-24, 39-43 teaches wherein the player begins playback, the client is prompted with a displaying to enable the user to input change in parameters data. While this is going on, it appears that the video playback is not happening until the process is completed in which a new video version is received, the playback resumes automatically (para 45));
- using customized data with API of external service (paragraphs 97 and 165) or uploading web page (Figs. 4A wherein updates to customization occurs on a HTTP website) using the data for determining an action to be performed on the user device based on pre-defined rules (paragraphs 42-43 teaches wherein a user is able to input customization parameter data to alter/update the video files that already have metadata associated with (see Figs. 1A-1C, video having metadata associated with it. Within the customization parameters, users are allowed to make changes to the parameters (see steps in Fig. 4A) via the web-based video playback. The action to be delayed is met by the action that takes place after the user updates the customization parameters, which in this case, is to update the data to be displayed automatically with the video once the video has been updated);
- applying determined action using external service or sending instruction
to the external service to perform the action (Fig. 4A, steps 270A-280A wherein instructions are initially sent to the video generation service (external service) to implement the delayed action of playing the video automatically with the updated customization parameters).
Regarding claim 6, Kalish teaches the claimed further comprising the step of saving data for future, delayed action based on trigger within the movie or input data from the user (paragraphs 23-24, 39-43 and Fig. 4A, initially pauses a video playback and allows for the user to input customization parameters that are saved with the associated video file on the video generation service and then implemented when the updated customization parameters are automatically played with the new/updated video).
Claim Rejections - 35 USC § 103
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.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kalish (US 2021/0185378) in view of Fink et al. (US 8,566,353).
Regarding claim 7, Kalish teaches the claimed as discussed in claim 5 above, however fails to, but Fink teaches the claimed further comprising the step of redirecting to internal links in the video or external hyperlinks during the video playing, wherein these links can direct users to websites or mobile applications, further integrating the video content with external digital resources (Figs. 2-3 and col. 9, line 57 – col. 10, line 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to incorporate the teachings of Fink into the system of Kalish because such an incorporation allows for the benefit of improving the user experience by giving them a chance to select one of the choices displayed to the user (col. 5, lines 42-65).
Regarding claim 8, Kalish teaches the claimed as discussed in claim 5 above, however fails to, but Fink teaches the claimed further comprising the step of: - pausing video at pre-defined frame by applying rules based on received customized data (Figs. 2-3 and col. 9, line 57 – col. 10, line 9 and col. 5, lines 42-65 teaches pausing video at certain times to display user selection of choices, which includes hyperlinks).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to incorporate the teachings of Fink into the system of Kalish because such an incorporation allows for the benefit of improving the user experience by giving them a chance to select one of the choices displayed to the user (col. 5, lines 42-65).
Allowable Subject Matter
Claims 1-4 and 9-12 are allowed.
The following is an examiner’s statement of reasons for allowance: as discussed in the response filed 2/2/2026, the limitations presented “- Pausing video at pre-defined frame with customized data, starting editing session; - retrieving/identifying data design properties of the predefined video frame including format, location of object on screen, bounding box and color; - Opening and presenting an editing window overlaying the predefined video frame, wherein the editing window is configured to enable the user, entering customized data at the location where the data appears in the original pre-defined video frame, wherein the editing window inherent all design properties of the video pre- defined frame based on known location of all objects and all design properties within the video; - Receive user customized data text or voice, showing user personal data within the opened editing window, wherein the user is enabled to correct or change customized during editing session; - at the end of the editing session, updating the pre-defined frames with the receive user customized data” as recited in claims 1 and 9 are not anticipated by the prior arts of Kalish (US 2022/0028425) and Katcher (US 7,343,617) due to the nature of requirement of the editing window overlaying the predefined video frame which enables the user to enter customized data at the location wherein the data appears in the original pre-defined frame, and the editing window inheriting of all design properties of the video predefined frame based on known location of all objects and all design properties within the video.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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 GELEK W TOPGYAL whose telephone number is (571)272-8891. The examiner can normally be reached M-F (9:30-6 PST).
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, William Vaughn can be reached at 571-272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GELEK W TOPGYAL/Primary Examiner, Art Unit 2481
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