DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
The claimed invention is directed to an abstract idea without significantly more. The claims 1, 8 and 15 recite a mental process, i.e. determining a number of text blocks from video using contrast, and finding the difference to generate an indication of a first image. This judicial exception is not integrated into a practical application because the claims do not provide any limitations on how the first frame is used. The claims not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not provide any applicatio9n of the first image, and the claims are merely implemented on a generic computer and do not require a particular machine. Claims 2-7, 9-14 and 16-21 are considered eligible subject matter because the claims provide limitations that cannot practically be performed in the human mind, i.e. adding content to the video, modifying a scheduled recording, changing a display size.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 8-10 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5m 10, 13, 14, 19, 22 and 23, respectively, of U.S. Patent No. 12081901. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader versions of the patent. Claim 1 of the instant application’s “a method comprising:” corresponds to “A method comprising:” of claim 1 of the patent, “determining, based on contrast between pixels of a first plurality of images of a video, a first quantity of text-containing areas;” of the instant application corresponds to “determining, based on the comparing, a first quantity of text-containing areas of a first subset of the plurality of images”, wherein the comparing is based on contrast between pixels of the images of a video: “comparing a high-contrast pixel density, of each of a plurality of areas of the plurality of images”, of claim 1 of the patent, “determining, based on contrast between pixels of a second plurality of images of the video, a second quantity of text-containing areas;” of the instant application corresponds to “determining, based on the comparing…a second quantity of text-containing areas of a second subset of the plurality of images” wherein the comparing is based on contrast between pixels of the images of a video: “comparing a high-contrast pixel density, of each of a plurality of areas of the plurality of images”, of claim 1 of the patent, “and generating, based on a difference between the first quantity of text-containing areas and the second quantity of text-containing areas an indication of a first image of the video” of the instant application corresponds to “selecting, based on a difference between the first quantity and the second quantity, a first image of the video” of claim 1 of the patent, the indication of the instant application corresponding to the selecting. Claims 8 and 15 of the application are similarly mapped to claims 10 and 19 of the patent as claim 1 of the application is mapped to claim 1 of the patent, except claims 8 claim an apparatus and claim 15 claims one or more non-transitory, computer-readable media. Claim of the application’s apparatus, processor and memory map directly to claim 10 of the patent’s computing device, processors and memory, and claim 15 of the instant application’s non-transitory computer readable media maps directly to claim 19 of the patent’s non transitory computer readable media. Claims 2, 9 and 10 of the application’s “adding, to the video, a second image,” corresponds to “inserting, at the location in the first image, as second image” of claims 4,13 and 22 of the patent, “at a location based on the first image” of claims 2, 9 and 10 of the application corresponds to “at the location in the first image” of claims 4,13 and 22 of the patent. Claims 3, 10 and 17 of the instant application’s “adding, to the video, an interactive information item” corresponds to “inserting, at a location in the first image, an interactive information item” of claims 5, 14 and 23 of the patent, and “at a location based on the first image” of claims 3, 10 and 17 of the instant application corresponds to “, at a location in the first image” of claims 5, 14 and 23 of the patent.
Allowable Subject Matter
Claims 1-21 contain allowable subject matter and would be allowed if the above rejections are overcome.
Claims 1, 8 and 15 contain allowable subject matter regarding determining the claimed first and second quantity of text-containing area based on contrast between pixels of the respective first and second plurality of images (not respective single images, but plurality of images), the first and second plurality of images being of the same video, and generating an indication of a first image of the video based on a difference between the first and second quantity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kathleen Yuan Dulaney whose telephone number is (571)272-2902. The examiner can normally be reached M-F: 9AM-5PM.
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/KATHLEEN Y DULANEY/Primary Examiner, Art Unit 2666 4/29/2026
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