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 .
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 1-20 of U.S. Patent No. 12,212,704. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,212,704 recite similar claimed subject mattes as specified in claims 1-20 of the instant application except for the customized property or the modified property including features such as a color of a hair of the face image, a texture of the hair of the face image, a volume of the hair of the face image, a spatial orientation of the hair of the face image, a length of the hair of the face image or an animation style of a text message. It would have been obvious to one skilled in the art to have the customized property or the modified property included such features, for the advantage of expanding the applications of the device.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,895,260. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 11,895,260 recite similar claimed subject mattes as specified in claims 1-20 of the instant application except for the customized property or the modified property including features such as a color of a hair of the face image, a texture of the hair of the face image, a volume of the hair of the face image, a spatial orientation of the hair of the face image, a length of the hair of the face image or an animation style of a text message. It would have been obvious to one skilled in the art to have the customized property or the modified property included such features, for the advantage of expanding the applications of the device.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to the claimed subject matters is Voss (11,393,134). Voss discloses a system and a method for customizing soundtracks in modifiable videos in MMAs, according to some example embodiments. The method 1100 can be performed by PCD 105. The method 1100 may commence in block 1105 with determining, via the MMA and based on messages of the user in a communication chat, context of the messages. The context of the messages can be determined via an ANN. In block 1110, the method 1100 may include providing, via the MMA and based on the context, a list of soundtracks. The list of soundtracks can be selected from a soundtrack library of the user. The selection of soundtracks can be based on historical data indicating preferences of the user. In block 1115, the method 1100 may include prompting, via the MMA, the user to select a soundtrack from the list of soundtracks. In block 1120, the method 1100 may include determining, via the MMA, that the user has selected the soundtrack from the list of soundtracks. The list of soundtracks, the selected soundtrack, and the context can be stored in a statistical log. The statistical log can be further used to determine the historical data of preferences of the user and to train an algorithm for selection of soundtracks from the library of the user. In block 1125, the method 1100 may include adding the soundtrack to a personalized video. The process of generation of the personalized video is described in FIG. 11. Prior to adding the soundtrack, the soundtrack can be modified based on a voice sample of the user (See figs. 1-3 and 11). However, none of cited prior arts of record, alone or in combination, discloses or suggests a device and a method for customizing modifiable videos, the method comprising: analyzing recent messages associated with a user in a multimedia messaging application to determine an emotional state of the user; determining, based on the emotional state, a customized property of a modifiable feature of a modifiable video, the modifiable video including a preset property of the modifiable feature; replacing the preset property of the modifiable feature with the customized property of the modifiable feature; providing a user interface enabling the user to view the modifiable video and modify the customized property of the modifiable feature to a modified property; and upon determining that the user has modified the customized property, storing information concerning the emotional state, the customized property, and the modified property to a statistical log, as specified in claims 1, 11 and 20.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See PTO-892 for a listing of cited prior arts of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUAN A TRAN whose telephone number is (571)272-7858. The examiner can normally be reached Mon-Fri: 7:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wesley Kim can be reached at (571) 272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TUAN A TRAN/Primary Examiner, Art Unit 2648
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