DETAILED ACTION
*Note in the following document:
1. Texts in italic bold format are limitations quoted either directly or conceptually from claims/descriptions disclosed in the instant application.
2. Texts in regular italic format are quoted directly from cited reference or Applicant’s arguments.
3. Texts with underlining are added by the Examiner for emphasis.
4. Texts with
5. Acronym “PHOSITA” stands for “Person Having Ordinary Skill In The Art”.
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 .
Status of Claims
This is in response to applicant’s amendment/response file on 31 March 2026, which has been entered and made of record. Claims 1, 4-5 and 10-12 has/have been amended. Claims 13-20 has/have been added. Claim 2 has been cancelled. Claims 1 and 3-20 are pending in the application.
Response to Arguments
Applicant’s arguments, see p.7-9, filed on 31 March 2026, with respect to the rejection(s) of Claim(s) 1-12 under 35 USC §103 have been fully considered but are moot because the arguments do not apply to any of the references being used in the current rejection. The newly amended Claim(s) 1/11/12 is/are now rejected under 35 USC §103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw). See detailed rejections below.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1, 3, 6-8, 11-13, 16-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw, Dec 9, 2022).
Regarding Claim 1, Yadav discloses a projector ([0099]: Examples of output devices include a display device (e.g., a monitor or projector)) comprising:
an optical device (Yadav does not explicitly disclose the projector includes an optical device. However a projector inherently includes an optical device to project an image to a display surface); and
at least one processor ([0036]: Computing devices that are usable to implement the client device 102 and the collage service system 104 may be configured in a variety of ways, such as a desktop computer, a laptop computer, a mobile device (e.g., assuming a handheld configuration such as a tablet or mobile phone), a server device, and so forth) programmed to operate in a first mode for controlling the optical device to thereby project a third image including a first image having a first size and a white space (Fig.4: notice each image shown in collage 120a includes a white frame arrangement around the peripheral of the each image. Any one of the image can be interpreted as the first image and any frame arrangement including white space around the first image can be interpreted as the second image. In addition, although Fig.4 shows a collage including more than one photo images, Yadav discloses, in [0051], For instance, an image or set of images to be edited can be displayed in the working canvas 302, and various editing actions can be applied to the image(s) within the working canvas 302. Therefore it would have been obvious to a PHOSITA that the collage application can be used in editing one single image. Also see [0027]: By way of example, the image editing system places each digital image into a respective digital frame such that the region of interest for each digital image is centered within the respective digital frame), and
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a second mode for controlling the optical device to thereby project the first image in a second size larger than the first size (Notice the size of the image shown Fig.3 is larger than the size of the same image shown in Fig.4 even if there is only a single image shown in Fig.4 since there would be white frame space around the image).
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Yadav discloses encircles a white space instead of a second image along a contour of the first image. The white space can be broadly interpreted as the second image since it is different than the first image which is a photo image.
Yadav does not explicitly recite wherein a size of the first image in the second mode is substantially equal to a size of the third image in the first mode, such that the first image in the second mode is projected over a region occupied by both the first image and the second image in the first mode.
However Williams, before the effective filing date of the claimed invention, discloses feature of adding image boarder around an entire photo supported by Photoshop. Williams teaches Photoshop supports expanding photo and adding transparent area at edges of the photo and filling those transparent edges with specific colors or patterns (time 0:45, 3:08).
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The border pattern can be interpreted as the second image arranged along a contour of the first image on an outer side of the first image. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to add the limitation of wherein a size of the first image in the second mode is substantially equal to a size of the third image in the first mode, such that the first image in the second mode is projected over a region occupied by both the first image and the second image in the first mode therefore either an unedited first image or an edited first image with a border image arranged along a contour of the first image on an outer side of the first image can be selected by a photo editing user so that the user is able to compare before and after editing effect.
Regarding Claim 3, Yadav moadified by Williams discloses wherein the first image and the second image do not overlap in the first mode (Yadav see Fig.4-6 and [0048]: For instance, for each layout permutation 212, the fitting module 218 positions the digital images from the digital image set 202 into the respective frames 208 and based on the image placement specified by the layout permutation 212. Also see [0028]. Williams video time e.g. 3:22).
Regarding Claim 6, Yadav discloses wherein the optical device includes at least one display panel, and a size of the third image is smaller than a maximum size in which an image can be drawn on the at least one display panel (Fig.4).
Regarding Claim 7, Yadav modified Williams teaches or suggests the at least one processor is further programmed to execute controlling the optical device to thereby project a user interface image including a first candidate image having a first exterior and a second candidate image having a second exterior different from the first exterior and, when receiving, with the user interface image, operation for selecting the first candidate image, projects an image corresponding to the first candidate image as the second image in the first mode (Williams see video 3:10-3:32 regarding boarder pattern selection).
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Regarding Claim 8, Yadav modified Williams further teaches or suggests the user interface image includes an operation piece, a display position of which is changed by operation of a user, and when the operation piece is superimposed on the first candidate image, the at least one processor projects the third image including the image corresponding to the first candidate image as the second image (Williams see video 3:10-3:32 notice the boarder pattern selection through user’s mouse click).
Regarding Claims 11, 13 and 16, Claims 11, 13 and 16 is/are similar to Claims 1, 3 and 6 except in the format of method. Therefore the same reason(s) for rejection(s) is/are applied to Claims 1, 3 and 6 is/are also applied to Claims 11, 13 and 16.
Regarding Claims 12, 17 and 20, Claims 12, 17 and 20 is/are similar to Claims 1, 3 and 6 except in the format of non-transitory computer-readable storage medium. Therefore the same reason(s) for rejection(s) is/are applied to Claims 1, 3 and 6 is/are also applied to Claims 12, 17 and 20.
Claims 4, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw, Dec.9 2022) as applied to Claims 3, 13 and 17 above, and further in view of LNHSDMA (Photoshop: Transform (CTRL+T), downloaded @ https://www.youtube.com/watch?v=N2Wewd7zqIk&t=136s, Nov.20 2020).
Regarding Claim 4/14/18, Yadav modified by Williams discloses the third image includes a first region where the first image is arranged and a second region where the second image is arranged (Yadav Fig.4 and Williams video time 3:22 or screenshot shown below).
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But Yadav as modified does not explicitly disclose when a first aspect ratio of the first region and a second aspect ratio of the first image are different, the at least one processor programmed to project the third image including the first image having the second aspect ratio within the first region.
However LNHSDMA discloses, before the effective filing date of the claimed invention, photoshop editing tool had already provided Transform (Ctrl+T) with “shift” resizing function. LNHSDMA teaches, after Ctrl+T followed by shift key, a user can resize an image without distorting its aspect ration by holding down corner side of the image and resize the image to a wanted size (see video starting at 1:12). By resizing the first image, it is possible to insert the first image into the first region without cutting off any portion of the first image within the third image but only resulting in empty spaces within the first region.
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Since leaving white space within the frame does not effects a user viewing the first image, it would have been obvious to a PHOSITA before the effective filing date of the claimed invention to include the limitation of when a first aspect ratio of the first region and a second aspect ratio of the first image are different, the at least one processor programmed to project the third image including the first image having the second aspect ratio within the first region by resizing the first image while maintaining its second aspect ratio and inserting the resized first image into the available empty space in the first region so that a user can view the first image without any distortion.
Claims 5, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw, Dec.9 2022) as applied to Claims 3, 13 and 17 above, and further in view of DN:TV (The Design Ninja, downloaded @https://www.youtube.com/watch?v=kFAssm07dk4, Oct. 8 2020).
Regarding Claim 5/15/19, Yadav modified by Williams discloses the third image includes a first region where the first image is arranged and a second region where the second image is arranged (Yadav Fig.4 and Williams video time 3:22 or screenshot shown below).
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ut Yadav as modified does not explicitly disclose when a first aspect ratio of the first region and a second aspect ratio of the first image are different, the at least one processor projects the third image including the first image having the first aspect ratio by changing the aspect ratio of the first image to coincide with the first aspect ratio.
However DN:TV discloses, before the effective filing date of the claimed invention, photoshop editing tool had already provided content aware scale feature to modify an image aspect ratio while maintaining specific object’s ratio (see video start at 1:24).
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Therefore it would have been obvious to a PHOSITA before the effective filing date of the claimed invention to incorporate the teaching of DN:TV and to include the limitation of when a first aspect ratio of the first region and a second aspect ratio of the first image are different, the at least one processor projects the third image including the first image having the first aspect ratio by changing the aspect ratio of the first image to coincide with the first aspect ratio by scaling the first image using content aware scaling feature provided by photoshop and inserting the modified first image with the same first aspect ratio as that of the first region so that there is no empty space within the first region.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw, Dec.9 2022) as applied to Claim 1 above, and further in view of Teachers On Fire (How to make a PHOTO COLLAGE in CANVA for Education users, downloaded @ https://youtu.be/LuC5bkUUz5Q?si=Of6ygpORtTGOQDlv, posted April 24, 2022, hereinafter referred as TOF, previous OA referred as Youtube).
Regarding Claim 9, Yadav modified by Williams fails to explicitly recite wherein the at least one processor programmed to control the optical device to thereby project the third image further including a fourth image superimposed on the first image and having transmittance higher than transmittance of the first image.
However TOF discloses having a collage template with frame border and background wallpaper had already been used in photo edition application before the effective filing date of the claimed invention (see figure below left side the two template with brown wallpaper and white paper with hear etc.). The wallpaper can be interpreted as the fourth image. You can see form the template that the wall paper has higher transmittance than the first image since the first image would be on top of the wallpaper when the first image is inserted. Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of TOF into that of Yadav as modified and to include the limitation of wherein the at least one processor programmed to control the optical device to thereby project the third image further including a fourth image superimposed on the first image and having transmittance higher than transmittance of the first image in order to provide options to users who like to include wallpaper when displaying their photo collages.
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Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yadav et al. (US 2020/0143514 A1) in view of Williams (5 EASY Ways To Create A Border In Photoshop, downloaded @ https://www.youtube.com/watch?v=h4OLeDa_1aw, Dec.9 2022) as applied to Claim 7 above, and further in view of Kito (JP 2003348334 A).
Regarding Claim 10, Yadav modified by Williams further discloses the third image includes a first region where the first image is arranged and a second region where the second image is arranged (see Fig.4 of Yada Yadav Fig.4 and Williams video time 3:22 or screenshot shown below).
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But Yadav modified by Williams fails to disclose the user interface image includes the first candidate image and the second candidate image in which a first aspect ratio of the first region coincides with a second aspect ratio of the first image such that the third image maintains the second size regardless of which candidate image is selected.
However Kito discloses setting a frame for surrounding an image as a template ([0010]: In the present invention, it is preferable that a frame for surrounding the image is set as the template, and that the electronic magnification change processing of this frame is performed by setting magnification change rates in both the vertical and horizontal directions so as to surround the image without any gaps, and furthermore, that a picture to be placed in an area other than the image or the frame is set as the template, and that the electronic magnification change processing of this picture is performed by enlarging/reducing this picture so as not to
overlap with the image or the frame). It would only take a routine skill for a PHOSITA before the effective filing date of the claimed invention to create a set of frame templates with the second size and corresponding to the aspect ratio of the first image so that a user only needs to enlarge/reduce the first image to place the first image into the frame template. Therefore it would have been obvious to a PHOSITA to incorporate the teaching of Kito into that of Yadav as modified and to include the limitation of the user interface image includes the first candidate image and the second candidate image in which a first aspect ratio of the first region coincides with a second aspect ratio of the first image such that the third image maintains the second size regardless of which candidate image is selected in order to provide an image synthesis method that can create a composite image by combining an image of any size and aspect ratio with a template such as a photo frame or character in a balanced manner without performing complex operations as suggested by Kito ([0007]).
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 YINGCHUN HE whose telephone number is (571)270-7218. The examiner can normally be reached M-F 8:00-5:00 MT.
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, Xiao M Wu can be reached at 571-272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YINGCHUN HE/Primary Examiner, Art Unit 2613
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