DETAILED ACTION
This communication is in response to Application No. 18/816,780 filed on 8/27/2024. Claims 1-20 have been examined.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/27/2024 is being considered by the examiner.
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 1-18 of U.S. Patent No. 12,107,810 (hereinafter Patent ‘810). Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘810 teaches as follows:
Applicant’s claims 1 and 11
Claims 11 and 12 in Patent ‘810
A system comprising: storage circuitry; and control circuitry configured to:
A system comprising: memory; control circuitry configured to (see, claim 10):
select a media asset on a device;
select, from a database of personal graphical elements associated with metadata comprising a person identifier and an emotion, a plurality of personal graphical elements based on the determined emotion and the identified participants involved in the conversation (see, claim 10);
modify a portion of an image from the media asset to form a personal graphical element;
obtain a portion of an image to form a personal graphical element, wherein the image is from the digital media asset (see, claim 11);
determine a first emotion, the first emotion associated with the personal graphical element;
determine an emotion (equivalent to applicant’s first emotion) associated with the personal graphical element (see, claim 11);
identify a person in the personal graphical element;
identify at least one person from a digital media asset (see, claim 11);
retrieve metadata corresponding to the identified person;
retrieve metadata corresponding to the identified person (see, claim 11);
store, in a database, the personal graphical element associated with both the retrieved metadata and the first emotion;
associate each of the obtained personal graphical element with the retrieved metadata and the determined emotion (see, claim 11);
detect a message conversation on the device; analyze at least one message of the message conversation to determine a second emotion, the second emotion associated with the message conversation;
analyze at least one message in a conversation stored in memory to determine an emotion (see, claim 10);
wherein analyzing at least one message in a conversation to determine an emotion (equivalent to applicant’s second emotion) is selectively applied to a specific portion of the conversation (see. claim 17);
identify one or more participants of the message conversation;
identify participants involved in the conversation (see, claim 10);
based on determining that (a) the first emotion associated with the personal graphical element matches the second emotion associated with the message conversation and (b) there is a relationship between the one or more participants of the message conversation and the person in the personal graphical element, suggest the personal graphical element for inclusion in the message conversation.
determine relationships between each of the identified participants involved in the conversation and each person identifier for each of the plurality of personal graphical elements;
rank in order the one or more personal graphical elements based on whether each of the plurality of the personal graphical elements feature persons mutually known to the participants of the conversation; and
provide in ranked order the one or more personal graphical elements to a user for potential inclusion in the conversation (see, claim 10).
Therefore, Patent ‘810 teaches similar limitations as presented above.
Dependent claims 2-10 and 12-20 are also rejected for the dependency on rejected claims 1 and 11 respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeong S Park whose telephone number is (571)270-1597. The examiner can normally be reached Monday through Friday 8:00-4:30 ET.
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/JEONG S PARK/Primary Examiner, Art Unit 2454
June 8, 2026
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