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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a hotspot configuration module”, “a grid setting module”, and “a grid validation module” in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure(s) described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the processor 100 disclosed in Fig. 3 and paragraph 51 of the pre-granted publication, which is a specialized processor when it executes the algorithm illustrated in Fig. 10.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 8 recite “the hotspot identified by the hotspot marker”. It’s not clear which hotspot marker is being referred to, as there is a plurality of hotspot markers. Clarification is required.
Claim Rejections - 35 USC § 112
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 1-14 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.
In particular, independent claims 1 and 8 each recites “if available, receiving one or more hotspot markers…” This phrase is indefinite because "if available" would create uncertainty regarding whether the limitation is mandatory, failing to inform a person skilled in the art of the invention's scope with reasonable certainty. In other words, the phrase would create ambiguity about whether the step “receiving one or more hotspot markers” is optional, therefore rendering the scope unclear. Furthermore, it is not clear whether the term “if not” is referring to “if not available”, or “if the grid is not valid”. Similarly, it is not clear the term “if so” is referring to “if so available” or “if the grid is so valid”.
Other claims are also rejected under 35 U.S.C. 112(b) by virtue of their dependency.
Claim Rejections - 35 USC § 103
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.
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, 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.
Claim(s) 1-3, 5-10 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salaverry et al. (Pub. No. US 2014/0164927), in view of Mandalia et al. (Pub. No. US 2014/0289625).
Regarding claim 1, Salaverry discloses a method for hotspot configuration, the method comprising:
receiving a digital image (Abstract: “A digital image is obtained”);
if available, receiving one or more hotspot markers for the digital image, wherein the hotspot markers indicate a location of a hotspot in the digital image (Par. 349: “This invention allows anybody to take a digital photograph or use an existing photograph from an existing photo library, touch the photograph and leave voice based annotations or tags either with spoken or recorded information related to a point of interest in a photograph inside a tag container inside the photograph which is then visible to anyone who has a copy of the digital photo and is able to access the underlying data associated with that photo and the original point of interest”. In particular, a point of interest could be viewed as a hotspot, and a tag is a hotspot marker);
displaying the digital image, hotspot markers(See Fig. 22 and the associated description);
allowing a user to edit the (See pars. 266 and 267. A person can add additional voice annotations to a tag. A voice annotation can also be converted to text annotation, as disclosed in par. 264)
.
Salaverry does not disclose the above lined-through limitations.
In the same field of graphical user interface (GUI) design, Mandalia describes a GUI in which puzzle pieces visually represent segments of a narrative or plotline. Each puzzle piece corresponds to a narrative segment and is displayed with visual indicia (e.g., icons, labels, or other markers) that identify the content or type of that segment in the story. These puzzle pieces function as visual markers for specific “points of interest” in the narrative structure (e.g., key events, transitions, or scenes) within the displayed composition (See pars. 36 and 37, and Fig. 6). A person of ordinary skill in the art would have understood that representing narrative segments as discrete, visually identifiable elements (puzzle pieces with labels/icons) is analogous to using tags in a digital image to mark points of interest. Substituting conventional “tags” for the puzzle‑piece markers is a straightforward design choice that does not change the underlying functionality of visually identifying and locating important elements in a displayed composition.
Pars. 36 and 37 of Mandalia further describe arranging the puzzle pieces in a structured layout region (e.g., along a track, plotline, or composition area) where each piece occupies a defined position relative to the others. The layout is constrained so that pieces are placed in specific positions or “slots” that reflect their narrative order or structural role (similar to what is described in pars. 341-342 of Salaverry). While Mandalia may not explicitly use the word “grid,” it teaches the use of a structured, position‑constrained layout for visual elements (puzzle pieces). It would have been obvious to a person of ordinary skill in the art to implement such a structured layout as a grid superimposed over the displayed composition (here, a digital image) to manage and constrain the placement of visual markers (tags/puzzle pieces). Grids are a well‑known, predictable tool for organizing visual elements in GUIs and image‑based editors; using a grid overlay to position markers is a routine implementation detail.
Mandalia further describes the system evaluating the arrangement of puzzle pieces to determine whether the narrative structure satisfies certain constraints or rules (e.g., required segments present, proper ordering, dependencies between segments). The system checks whether the puzzle pieces are placed in appropriate positions in the layout; if they are not, the arrangement is considered invalid (See par. 41 and Fig. 14). This corresponds to determining whether the layout structure (analogous to the claimed grid) is “valid” based on where the visual markers (puzzle pieces/tags) are located. A skilled artisan would recognize that checking whether tags fall into appropriate grid cells, regions, or positions is simply an application of the same validity‑checking logic to a grid‑based layout instead of a narrative track layout. Paragraph 41 further suggests that when the arrangement of puzzle pieces does not satisfy the narrative constraints, the system provides feedback to the user (e.g., indicating that the arrangement is invalid or that certain pieces are missing or misplaced) and allows the user to modify the arrangement by moving, changing, adding, or removing puzzle pieces. This directly corresponds to notifying the user that the current configuration is invalid and allowing the user to edit the layout. Adapting this to a grid‑over‑image context - where the user edits the grid or the positions of tags within the grid - is a routine extension of the same interaction pattern.
Paragraph 41 also suggests that when the arrangement of puzzle pieces satisfies the narrative constraints, the system accepts the configuration and proceeds to output or store the finalized narrative composition (e.g., as a completed storyline or authored content). This is analogous to outputting a finalized composition once the layout of markers is valid. A person of ordinary skill would have found it obvious to output the finalized digital image with its tags once the grid‑based validity check passes, just as Mandalia outputs the finalized narrative once the puzzle‑piece arrangement is valid.
The differences between the claimed invention and Mandalia lie primarily in: (1) using a digital image with hotspot markers instead of a narrative composition with puzzle‑piece segments, and (2) explicitly describing a grid overlay instead of a structured narrative layout region. Using hotspot markers on an image to mark points of interest and organizing those markers with a grid overlay are both well‑known techniques in image editing and annotation interfaces. Mandalia already teaches or suggests the following:
- visually representing discrete content elements as markers (puzzle pieces with labels/icons),
- arranging them in a constrained layout with defined positions,
- checking the arrangement for validity,
- notifying the user and allowing correction when invalid, and
- accepting and outputting the composition when valid.
Substituting a grid overlay for the structured layout region would have been an obvious design choice to a person of ordinary skill in the art seeking to apply the same validation and correction workflow to image‑based content instead of narrative segments. This is a predictable use of prior art elements according to their established functions, yielding no unexpected result.
Regarding claim 2, Salaverry in view of Mandalia teaches the method according to claim 1, wherein the preparing a grid comprises:
automatically creating a default grid dividing the digital image into a predetermined number of portions of the digital image (Fig. 14 of Mandalia suggests automatically creating a 4x4 grid where each grid cell is associated with a puzzle piece).
Regarding claim 3, Salaverry in view of Mandalia teaches the method according to claim 2, wherein the predetermined number of portions are equally sized (As shown in Fig. 14 of Mandalia, the grid cells are equally sized).
Regarding claim 5, Salaverry in view of Mandalia teaches the method according to claim 1, wherein the allowing a user to edit comprises:
allowing a user to add, move or delete rows and columns in the grid (Par. 41 of Mandalia describes a game in which a user can add and move puzzle pieces to complete a narrative. Adding and/or removing a puzzle piece results in adding and/or removing a row or column of the grid); and
allowing a user to add, move or delete hotspot markers and related alternative text (See pars. 266 and 267 of Salaverry. Par. 325 further discloses: “Touch the tag to move the [tag] around the photo”).
Regarding claim 6, Salaverry in view of Mandalia teaches the method according to claim 1, wherein the allowing a user to edit further comprises allowing a user to edit the digital image itself (Salaverry, par. 77: “the adjust image step 430 is comprised of both basic image adjustment techniques 431 including but not limited to leveling image 432, improving contrast and brightness 433”).
Regarding claim 7, Salaverry in view of Mandalia teaches the method according to claim 1, wherein the determining if the grid is valid comprises determining if there is more than one hotspot marker in a cell of the grid (It would have been obvious to one skilled in the art before the effective filing date of the claimed invention that in the system of Salaverry as modified by Mandalia, each puzzle piece would have at most one talk tag associated with it. Otherwise, the automatic playback of a plotline cannot determine which talk tag to play when a puzzle piece has more than one tag).
Claims 8-10 and 12-14 recites similar limitations as respective claims 1-3 and 5-7, but they are directed to a system comprising a memory and a processor. Since Salaverry also discloses such a system (See Claim 19, for example), these claims could be rejected under the same rationales set forth in the rejection of their respective claims.
Claim(s) 4 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salaverry in view of Mandalia as applied to respective claims 1 and 8 above, and further in view of Beri et al. (Pat. No. US 11,295,499).
Regarding claim 4, Salaverry in view of Mandalia teaches the method according to claim 1, wherein the preparing a grid comprises:
However, querying a user about the number of rows and columns in a grid and automatically creating a grid based on the number of rows and columns specified by the user is well-known in the art. For example, Beri teaches this limitation in col. 14, ll. 18-24.
Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to further modify Salaverry by querying a user about the number of rows and columns in the grid and automatically creating a grid based on the number of rows and columns specified by the user, as taught by Beri. The motivation would have been to provide the user with flexibility in creating a grid that has a sufficient number of grid cells to accommodate all the talk tags.
Claim 11 recites similar limitations as claim 4, but it is directed to a system comprising a memory and a processor. Since Salaverry also discloses such a system (See Claim 19, for example), claim 11 could be rejected under the same rationale set forth in the rejection of claim 4.
Conclusion
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/PHONG X NGUYEN/ Primary Patent Examiner, Art Unit 2617
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