DETAILED ACTION
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 .
This is a response to U.S. Patent Application No. 18/780,967 filed on 07/23/2024 in which Claims 1 – 20 were filed for examination.
This application is a Continuation of U.S. Pat. App. No. 18/170,417 which is now U.S. Patent No. 12,079,759.
Status of the Claims
Claims 12, 13, 15 – 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph and Claims 1 – 20 are rejected on the ground of nonstatutory double patenting.
Specification
The disclosure is objected to because of the following informalities:
Par [001] recites “This application is a continuation of U.S. Patent Application No. 18/170,417…”.
The disclosure should be amended to indicate that U.S. Patent Application No. 18/170,417 is now U.S. Patent No. 12,079,759.
Appropriate correction is required.
Claim Objections
Claims 2 and 11 are objected to because of the following informalities:
Claim 2, line 1 , recites “the assembling further includes.”, ending in a period instead of a colon (:).
Claim 2, fourth limitation, should include “and” after the semicolon..
Claim 2, last limitation should conclude the claim with a period instead of a semicolon.
Claim 11, is missing the period to complete the claim limitation.
Appropriate correction 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 12, 13, 15 – 19 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.
Claim 12 recites "creating a data file of the second acting performance to upload to the acting module" in last limitation of claim 12. This claim language is indefinite because it is unclear if said data file is the same data file associated with the second acting performance in claim 1 or if this is a different data file that is created for the second acting performance.
For purposes of examination the examiner is interpreting the claim as reciting “the data file”, thus creating the data file that is receive by the acting module.
Due to at least their dependency upon Claim 12, Claims 13, 15 – 19 are also indefinite.
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 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 14 and 16 – 20 of U.S. Patent No. 12,079,759. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claims 1 – 20, although the claims are not identical, they are not patentably distinct from Claims 1, 3 – 14 and 16 – 20 of U.S. Patent No. 12,079,759, because Claims 1, 3 – 14 and 16 – 20 of U.S. Patent No. 12,079,759 anticipate all limitations of Claims 1 – 20 (See the table below).
U.S. Patent Application No. 18/780,967
U.S. Patent
No. 12,079,759
1
1
2
1, 14
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
12
13
13
14
19
15
12
16
16
17
17
18
12
19
18
20
20
Allowable Subject Matter
Claims 1 – 20 will be allowable if the set forth rejections (35 U.S.C. 112 and Double patenting) above are overcome.
Reasons for Allowance
The following is a statement of reasons for the indication of allowable subject matter:
Based on the broadest reasonable interpretation (BRI) and in light of the Specification the Examiner finds the claimed invention as recited in Claims 1 – 20 patentably distinct from the prior art of record.
The closest prior art Balabhadrapatruni et al. (US 2017/0294208) discloses a method of choreographic editing of multimedia and other streams. The method includes receiving, one or more multimedia clips. The multimedia clips are displayed to a user, who can then select one or more of the clips. The user creates one or more synchronization points. An embodiment automatically adjusts the selected multimedia clips using the synchronization points. Thereafter a finished media file is created (See Abstract). Balabhadrapatruni in par 0031 and Fig. 2 – 3, further teaches usage of “synchronization points,” also known as “sync points.” Synchronization points indicate where content should be aligned. In this system, a clip has at least two synchronization points. Synchronization points may also be manually defined by the user such that they are located elsewhere on each clip. For example, an editor can set synchronization points by simply placing the video editing cursor at the desired location and creating a synchronization point.
Gutfreund et al. (US 6,665,835) discloses an ability for capturing an event, such as a seminar style presentation with visual aids, in real-time and coordinating other related events as they occur, and then processing the combination to create a synchronized multimedia record of events. The presentation is captured in real-time, and the audio/video converted to digital format, and using post-processing techniques, within a very short period thereafter, the related presentation material such as slides and user notes are combined and synchronized therewith. The new presentation is then made available on a network such as the Internet through a media journal player. The player is, for example, web browser based and allows the user to view the whole presentation, or allows for seeking to different places in the presentation while maintaining the synchronization (See Gutfreund’s Abstract).
Sung et al. (US 2018/0350338) teaches that vocal audio of a user together with performance synchronized video is captured and coordinated with audiovisual contributions of other users to form composite duet-style or glee club-style or window-paned music video-style audiovisual performances (See Sung’s Abstract). Sung in par 0035, further teaches that a content server (or service) can mediate such coordinated performances by manipulating and mixing the uploaded audiovisual content of multiple contributing vocalists.
However, none of the prior art of record, teaches or suggests the independent Claims 1, 12, 14 and 20 as claimed.
Due to at least their dependency upon Claims 1 or 12, the prior art also fails to disclose Claims 2 – 11, 13 and 15 – 19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIEL MERCADO VARGAS whose telephone number is (571)270-1701. The examiner can normally be reached M-F 8:00am - 4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott Baderman can be reached at 571-272-3644. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARIEL MERCADO-VARGAS/Primary Examiner, Art Unit 2118
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