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 .
DETAIL ACTION
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 12/16/2024 and 2/3/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
CLAIM INTERPRETATION
4. The following is a quotation of 35 U.S.C. 112(f): (FP 7.30.03)
(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.
5. 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.
6. 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 management server configured to register an image file and a translation server configured to receive the image file in claim 14.
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.
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. (FP 7.30.06).
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.
Claim 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application 18980938 in view of PARK et al (US 20160147724 A1), if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because it is merely in the terminology used in both sets of claims.
Claim 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application 18980949 in view of PARK et al (US 20160147724 A1), if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because it is merely in the terminology used in both sets of claims.
Below is a list of limitations that perform the same function. However different terminology is used in both sets to describe the limitations.
Instant application- 18982746: - Note* bold means different in instant application
Co-pending application 18980938
1. A method of translating content executed by at least one server, comprising:
receiving an image file of a translation target in relation to an episode of content created based on a language of a first country;
receiving an image file of a translation target related to an episode of content created based on a language of a first country;
extracting a text corresponding to the language of the first country from the image file; and
providing a translation editor for the image file so that a translated episode of the episode is generated based on a language of a second country different from the first country using the image file,
providing a translation editor for the image file so that a translated episode of the episode is generated on the basis of a language of a second country different from the first country using the image file,
wherein the image file of the translation target is output in a first area of the translation editor, and
wherein the translation editor includes a first area in which the image file of the translation target is output, and
an input window for inputting a translated language of the language of the second country for the extracted text is activated in a second area of the translation editor, and
a second area for receiving a translated language in the language of the second country for the extracted text as input, and
the translated episode is generated using the translated language received through the input window.
Wherein in response to a control command for image capturing at least a portion of the output image file received through the first area, an input window for receiving a translated language for the captured image as input is generated in the second area.
This is a provisional nonstatutory double patenting rejection.
The mapping between instant application 18982746 and co-pending application 18980949 is similar to above mapping.
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.
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. As summarized in the 2019 Revised Patent Subject Matter Eligibility Guidance, examiners must perform a Two-Part Analysis for Judicial Exceptions.
Step 1
In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant invention encompasses three sets of claims: a method in claims 1-13 (i.e., a process), a system in claims 14-15 (i.e., a manufacture) and a non-transitory computer-readable recording medium in claims 16 (i.e., a manufacture). All claims are directed to one of the four statutory categories and meet the requirements of step 1.
Step 2A
Prong One
The claimed invention is directed to an abstract idea without significant more. The instant invention is broadly directed to “receiving an image file of an episode of content created on the basis of a language, extracting text form the image file and proving a translated episode with a second language”. Claim 1 recites the following (with emphasis added):
Claim 1: A method of translating content executed by at least one server, comprising:
receiving an image file of a translation target in relation to an episode of content created based on a language of a first country;
extracting a text corresponding to the language of the first country from the image file; and
providing a translation editor for the image file so that a translated episode of the episode is generated based on a language of a second country different from the first country using the image file,
wherein the image file of the translation target is output in a first area of the translation editor, and an input window for inputting a translated language of the language of the second country for the extracted text is activated in a second area of the translation editor, and
the translated episode is generated using the translated language received through the input window.
The bold portions of claim 1 encompass the abstract idea, which is also encompassed by the dependent claims 2-13, and substantially also encompassed by claims 14-15 and 16.
Claims 1, 14 and 16 recite the steps to provide the translated episode of content with different language for a received image file and specify which part of the image file to be output for displayed. These limitations, when given their broadest reasonable interpretation. These limitations, when given their broadest reasonable interpretation, are directed to certain performing of organizing human activity and mental processes, which is abstract idea.
Prong Two
This judicial exception is not integrated into a practical application because mere instruction to implement on computers (i.e. server in calim1 and storage medium or processors in claim 16) or a display (in claim 2 and 15), or merely using computers as a tool to perform the abstract idea, adding insignificant extra solution activity, and/or generally linking the use of the abstract idea to a technological environment for field of use is not considered integration into a practical application. recites receiving an image file of an episode of content created on the basis of a language, extracting text form the image file and proving a translated episode with a second language. Proving a translated episode from received image file with a second language is a generic process, which does not represent a technological improvement. The using of the computer extracting text from an image file process and proving a translated episode does not add improvement to the functioning of a computer or to any other technology field, which failed to enable the abstract idea to integrate into a practical application. The claims are drafted in a result-oriented fashion, without the requisite specificity needed to provide a nonabstract technological solution. The computing system and general process are directed to the components of a system amount to merely field of use type limitations and/or extra solution activity to implement the abstract idea as presented.
Step 2B
Step 2B in the analysis requires us to determine whether the claims do significantly more than simply describe that abstract method. Mayo, 132 S. Ct. at 1297. We must examine the limitations of the claims to determine whether the claims contain an "inventive concept" to "transform" the claimed abstract idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). The transformation of an abstract idea into patent-eligible subject matter "requires 'more than simply stat[ing] the [abstract idea] while adding the words 'apply it."' Id. (quoting Mayo, 132 S. Ct. at 1294) (alterations in original). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'" Id. (quoting Mayo, 132 S. Ct. at 1297) (alterations in original). Those "additional features" must be more than "well-understood, routine, conventional activity." Mayo, 132 S. Ct. at 1298.
The present claims include the additional elements other than the abstract idea which include a server, a processor, storage medium, display and client device with user interface (in claim 1 and 15). These additional elements are merely conventional computer and computer model. Any potentially technical aspects of the claims are well-known generic computer components performing conventional functions (e.g., a processor performing a mental process). The present claims have been analyzed both individually and in combination and, the instant claims do not provide any improvement of the functioning of the computer or improvement to computer technology or any other technical field. There do not appear to be any meaningful limitations other than those that are well-understood, routine and conventional in the field. Thus, the present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claims 1-13 are not patent eligible.
Claims 14-15 and 16 recite similar limitations of claims 1-13, thus are abstract idea and not patent eligible.
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) 1-8, 10 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK et al (US 20160147724 A1) in view of KO et al (JP 2017004483 A).
Regarding claim 1, PARK discloses a method of translating content executed by at least one server [e.g. FIG. 1-2 and 15; translation editor processing; [0040]; server 100], comprising:
receiving an image file [e.g. image data] of a translation target in relation to an episode of content created based on a language of a first country [e.g. FIG. 4-6; episode of cartoon in English]; and
providing a translation editor [e.g. FIG. 5; translations editor] for the image file so that a translated episode of the episode is generated based on a language of a second country different from the first country using the image file [e.g. FIG. 4; translated episodes] of the episode is generated on the basis of a language of a second country different from the first country using the image file [e.g. translated episode in French or THAI],
wherein the image file of the translation target is output in a first area of the translation editor [e.g. FIG. 5-6; 530 including 531 and 532 area], and an input window [e.g. area 540 on the right side of the screen] for inputting a translated language [e.g. French language] of the language of the second country for the extracted text is activated in a second area of the translation editor [e.g. FIG. 5B-5C; inputting French as a translated language], and
the translated episode is generated using the translated language received through the input window [e.g. FIG. 5; translated text content in French].
It is noted that PARK differs to the present invention in that PARK fails to explicitly disclose extracting text from an image.
However, KO teaches the well-known concept of extracting text [e.g. dialogue text data] corresponding to the language of the first country [e.g. Japanese or Korea] from the image file [e.g. FIG 1-3; multilingual web toon image].
It would have been obvious to the person of ordinary skill in the art at the time of the invention to modify the translations editor system disclosed by PARK to exploit the well-known extracting text data from an image technique taught by KO as above, in order to provide reduced the production time of the multilingual web toon [See KO, page 2; lines 1-5].
Regarding claim 2, PARK and KO further disclose converting the extracted text from the image file into a text corresponding to the translated language and displaying the converted text in the first area, in response to an input of the translated language into the input window [e.g. PARK: FIG. 5C].
Regarding claim 3, PARK and KO further disclose a movement guide for receiving a control command for a position movement of a text corresponding to the translated language is output in the first area so as to enable the position movement of the text corresponding to the translated language [e.g. PARK: FIG. 5; editing a background color, transparency, size, angle of rotation, location, etc. of the text data display].
Regarding claim 4, PARK and KO further disclose a translation support tool for recommending the translated language based on a database [e.g. FIG. 2; database] of the languages of the first country and the second country is output in a third area of the translation editor [e.g. PARK: FIG. 4-5; 517; selecting a target language to translate].
Regarding claim 5, PARK and KO further disclose the first area, the second area, and the third area of the translation editor are sequentially arranged along one direction such that the image file and the translation support tool are output on both sides based on the input window [e.g. PARK: FIG. 4-6; e.g. 517, 542, 543 and 530 are sequentially arranged along clock-wise direction].
Regarding claim 6, PARK and KO further disclose in response to an input for selecting one of the extracted text from the image file output in the first area is received, a list for recommending a translated language for the one of the extracted text is output in the third area [e.g. PARK: 517 and 546].
Regarding claim 7, PARK and KO further disclose in response to a translated language being selected from the list, the translated language is input into the input window in response to the selection [e.g. French or Thailand language is selected].
Regarding claim 8, PARK and KO further disclose a selection icon for selecting whether to translate at least one of the extracted text is output in the second area [e.g. PARK: FIG. 5-6; viewing other translations] , and the input window for inputting a translated language in the language of the second country for at least one of the extracted text is deactivated responsive to an input to the selection icon [e.g. PARK: FIG. 5; The ‘cancel’ button 545 may be configured to delete, i.e., reset, a second-language text input to the second-language text input unit 543].
Regarding claim 10, PARK and KO further disclose providing a review editor for reviewing the extracted text and the translated language to enable a reviewer to perform a review of the translated language [e.g. PARK: FIG. 4-6 and 14; user may check how the translation is and input the most appropriate for an image] .
Regarding claim 13, PARK and KO further disclose the translated episode is output in the first area and the image file of the translation target is output in the second area so as to enable a review of the translated episode [e.g. PARK: FIG. 4-6 and 14; [0103]].
Regarding claim 14-15, this is an apparatus that includes same limitation as in claim 1-2 above, the rejection of which are incorporated herein.
Regarding claim 16, this is a non-transitory computer-readable storage medium that includes same limitation as in claim 1 above, the rejection of which are incorporated herein.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK et al (US 20160147724 A1) in view of KO et al (JP 2017004483 A) and KUNIMATSU et al (US 20080059481 A1).
Regarding claim 9, PARK and KO further disclose a speech bubble corresponding to at least one of the extracted text is output in the first area [e.g. PARK: FIG. 5-6], but PARK and KO fail to explicitly disclose the detail of the speech bubble.
However, KUNIMATSU teaches the well-known concept of in response to the input window being deactivated [e.g. FIG. 5-6; mask data created], a speech bubble corresponding to at least one of the extracted text is output in an empty state [e.g. FIG. 5-6; empty bubbles].
It would have been obvious to the person of ordinary skill in the art at the time of the invention to modify the translations editor system disclosed by PARK to exploit the well-known extracting text data from an image technique taught by KO and the well-known concept of masking speech balloon technique taught by KUNIMATSU as above, in order to provide reduced the production time of the multilingual web toon [See KO, page 2; lines 1-5] and reduced processing load to create a translated electric comic book [See KUNIMATSU; [0009]].
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK et al (US 20160147724 A1) in view of KO et al (JP 2017004483 A) and Hwang et al (US 20190065477 A1).
Regarding claim 11, PARK and KO further disclose a first area of the editor, the extracted text is converted into the translated language [e.g. PARK: FIG. 5-6; KO: FIG 1-3], and an image output in the first area of the translation editor is output, and an input window output in the second area of the translation editor is output in a second area of the editor [e.g. PARK: FIG.5-6], but PARK and KO fail to explicitly disclose the detail of the editor.
However, Hwang teaches the well-known concept of in a first area of the review editor [e.g. FIG. 6; left area], the text is converted into the translated language [e.g. translated text data], the translation editor is output in a second area of the review editor [e.g. the right area with translated text data].
It would have been obvious to the person of ordinary skill in the art at the time of the invention to modify the translations editor system disclosed by PARK to exploit the well-known extracting text data from an image technique taught by KO and the well-known concept of providing and displaying a translated webcomic as above, in order to provide reduced the production time of the multilingual web toon [See KO, page 2; lines 1-5] and reduced time and cost for webcomic translation [See Hwang; [0017]].
Regarding claim 12, PARK, KO and Hwang further disclose outputting a comparison window to the review editor [e.g. PARK: FIG. 5-6; Hwang: FIG. 6], wherein an image output in the first area of the translation editor and the image file of the translation target are both output in the comparison window [e.g. PARK: FIG. 5-6; [0103]; user may check how the translation is and input the most appropriate for an image; Hwang: FIG. 1 and 6; secondary translation is manually performed by a translator to increase accuracy of translation].
It would have been obvious to the person of ordinary skill in the art at the time of the invention to modify the translations editor system disclosed by PARK to exploit the well-known extracting text data from an image technique taught by KO and the well-known concept of providing and displaying a translated webcomic as above, in order to provide reduced the production time of the multilingual web toon [See KO, page 2; lines 1-5] and reduced time and cost for webcomic translation [See Hwang; [0017]].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pengelly et al (US 20130114849 A1).
SUNG (US 20240338535 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHUBING REN whose telephone number is (571)272-2788. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richemond Dorvil can be reached at 571-272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZHUBING REN/Primary Examiner, Art Unit 2658
Prosecution Insights