DETAILED ACTION
I. 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 .
II. Priority
A. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 120, 365(c), and/or 386(c) is acknowledged.
B. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is also acknowledged of certified copies of papers required by 37 CFR 1.55.
III. Double Patenting
A. Basis for nonstatutory 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).
B. Anticipatory double patenting
Claims 1-4,6,7,9, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3,12,13, and 16 of U.S. Patent No. 12,081,879 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3,12,13, and 16 of the ‘879 patent anticipate instant claims 1-4,6,7,9, and 11 as follows:
Instant claim
Anticipatory claim of ‘879 patent
1
1
2
2
3
3
4
1
6
12
7
13
9
12
11
16
Instant claims 1-3 recite all the limitations of respective claims 1-3 of the ‘879 patent except claim 1 of the ‘879 patent recites the additional limitation that “wherein the plurality of images included in the image list are used to generate a color filter to be added to the filter list.” Therefore, claims 1-3 of the ‘879 patent anticipate instant claims 1-3. Instant claim 4 differs from claim 1 of the ‘879 patent in that instant claim 4 requires that “at least one image of the plurality of images included in the image list is to be used to generate a color filter to be added to the filter list,” while claim 1 of the ‘879 patent requires that “the plurality of images included in the image list are used to generate a color filter to be added to the filter list.” However, the plurality of images necessarily includes at least one image of the plurality. Therefore, claim 1 of the ‘879 patent anticipates instant claim 4.
Instant claims 6,7, and 11 differ from respective claims 12,13, and 16 of the ‘879 patent in the same way instant claims 1 and 2 differ from claims 1 and 2 of the ‘879 patent. Instant claim 9 differs from claim 12 of the ‘879 patent in the same way instant claim 4 differs from claim 1 of the ‘879 patent. Therefore, claims 12,13, and 16 of the ‘879 patent anticipate instant claims 6,7,9, and 11.
C. Obviousness-type double patenting
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,081,879 B2 in view of the WIPO publication of Hua et al. (WIPO publication number: WO 2018/111786 A1). Instant claim 8 differs from claim 12 of the ‘879 patent in that instant claim 8 requires the step of storing the generated color filter in the memory of the electronic device.
However, in the same field of endeavor as the instant application, Hua et al. teaches a computing device [0018] that transfers the style of a reference image to a source image ([0025]). After training a network with a plurality of images for the style of the reference image, the trained network for applying the style is stored in the memory of the computing device for transfer to new source images ([0061], lines 1-5). In light of the teaching of Hua et al. the examiner submits that it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to supplement the control method of claim 12 of the ‘879 patent with the step of storing the generated color filter in device memory as this would allow the electronic device to apply a particular desired style to new images, thereby increasing the compatibility and versatility of the device.
D. Overcoming the double patenting rejections: terminal disclaimer
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.
IV. Allowable Subject Matter & Additional Pertinent Prior Art
A. Claims 1,6, and 11 recite allowable subject matter. The examiner reiterates the reasons for allowance detailed in parent application, 17/798,842. Furthermore, the examiner has conducted an updated search and submits Chung et al. (US 2024/0422208 A1), who discloses another example of transferring a color style from a reference image to a source image. Furthermore, as explained above in section (III)(C), Hua et al. discloses a computing device that transfers the style of a reference image to a source image and stores instructions for applying the style to new source images. While Chung et al. and any one of the previously-cited references directed to color/style transfer are combinable with Hua et al., that combination still fails to satisfy the claimed processor function/method step of controlling the display to display a second icon representing the generated color filter and a fixed image in which the generated color filter is applied to the target image. Cragg et al. (US # 11,070,717 - cited in parent application) discloses a mobile device in which one of a plurality of selected styles can be applied to an image. When applied, a display displays the stylized image and an icon indicating the selected style. However, those styles are pre-stored; they have not been generated from a first image, added to a list, and then applied to a target image, as required by the claims.
B. Claims 5 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 5 and 10 are allowable because they depend on rejected claims 1 and 6 and are patentably distinct from the claims of the ‘879 patent.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J DANIELS whose telephone number is (571)272-7362. The examiner can normally be reached M-F 9:00 AM - 5:00 PM.
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/ANTHONY J DANIELS/Primary Examiner, Art Unit 2637
1/24/2026