CTNF 18/990,225 CTNF 86157 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 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. 08-34 AIA Claim s 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2 and 4-15 of U.S. Patent No. 12,182,917 . Although the claims at issue are not identical, they are not patentably distinct from each other because the U.S. Patent anticipates the Instant Application . Instant Application - 18-990,225 U.S. Patent No. 12,182,917 1. An electronic device comprising: a camera; a display; at least one processor operably connected to the camera and the display; and memory storing one or more computer programs including computer-executable instructions that, when executed by the at least one processor, cause the electronic device to: based on a first user input, control the camera to record a first video including at least user’s face; generate a first motion file from the first video including the at least user’s face, wherein the first motion file is based on features related to the at least user’s face in the first video; based on a second user input, control the camera to record a second video including at least user’s body; generate a second motion file based on features related to the at least user’s body in the second video; synchronize the first motion file and the second motion file to combine files; and generate a motion emoji based on the synchronized first motion file and second motion file. 1. An electronic device comprising: a camera; a display; a processor operably connected to the camera and the display; and a memory operably connected to the processor, wherein the memory stores instructions that cause, when executed, the processor to: in response to an emoji function being executed, display a menu item supporting entry into an edit mode for one or more body parts, the menu item being included in at least a part of an emoji function user interface displayed on the display; based on a user input requesting entry into a facial expression edit mode in the emoji function user interface, activate the camera to capture a user face image and generate a facial expression motion file from the user face image; based on a user input requesting entry into a body motion edit mode in the emoji function user interface, activate the camera to capture a user body image and generate a body motion file from the user body image; adjust sync for combining the generated facial expression motion file and body motion file; and generate a customized emoji sticker reflecting a user facial expression and a body motion by combining the sync-adjusted facial expression motion file and body motion file. Claim 1 of the instant application is a broader version of claim 1 of the U.S. Patent, using slightly different wording. 2. The electronic device of claim 1, wherein the instructions cause the processor to: update an avatar with a first motion based on the generated first motion file; and update the avatar with a second motion based on the generated second motion file. 2. The electronic device of claim 1, wherein the instructions cause the processor to: update an avatar related to the emoji function with a facial expression corresponding to the face motion file in response to generating the facial expression motion file; and update the avatar with a body motion corresponding to the body motion file in response to generating the body motion file. 3. The electronic device of claim 1, wherein the instructions cause the processor to: extract feature points of the at least user’s face from the first video; convert first motion data to a morph target weight value representing a first motion, based on the feature points; store the first motion file in the memory, based on the morph target weight value; and display a first motion emoji generated based on the first motion file, the first motion emoji being included in a first set emoji list. 4. The electronic device of claim 1, wherein the instructions cause the processor to: extract feature points of the user face from the user face image in case of entrance into the facial expression edit mode; convert motion data of the user face to a morph target weight value representing the facial expression motion, based on the face feature points; store the facial expression motion file in the memory, based on the morph target weight value; and display a customized facial expression emoji generated based on the facial expression motion file, the customized facial expression emoji being included in a facial expression set emoji list provided in response to entering into the facial expression edit mode. 4. The electronic device of claim 1, wherein the instructions cause the processor to: identify joint parts of a user body by extracting feature points of the user body from the second video; convert second motion data to a translation rotation scale (TRS) value representing a second motion, based on the joint parts; store the second motion file in the memory, based on the TRS value; and display a second motion emoji generated based on the second motion file, the second motion emoji being included in a second motion set emoji list. 5. The electronic device of claim 1, wherein the instructions cause the processor to: identify joint parts of a user body by extracting feature points of the user body from the user body image in response to entering into the body motion edit mode; convert body motion data to a translation rotation scale (TRS) value representing the body motion, based on the body joint parts; store the body motion file in the memory, based on the TRS value; and display a customized body emoji generated based on the body motion file, the customized body emoji being included in a body motion set emoji list provided in case of entrance into the body motion edit mode. 5. The electronic device of claim 1, wherein the instructions cause the processor to add the generated motion emoji to an emoji sticker set list provided in an emoji home screen or emoji showroom mode. 6. The electronic device of claim 1, wherein the instructions cause the processor to display the generated customized emoji sticker by adding the same to an emoji sticker set list provided in an emoji home screen or emoji showroom mode. 6. The electronic device of claim 1, wherein the instructions cause the processor to adjust a number of frames of each file such that the number of frames of the first motion file and the number of frames of the second motion file are the same. 7. The electronic device of claim 1, wherein the instructions cause the processor to adjust the number of frames of each file such that the number of frames of the facial expression motion file and the number of frames of the body motion file are the same. 7. The electronic device of claim 6, wherein the instructions cause the processor to: calculate a number of first necessary frames for animation reproduction, based on the first motion file; calculate a number of second necessary frames for animation reproduction, based on the second motion file; calculate a reference frame expressing a characteristic motion from the first motion file and the second motion file; and adjust the number of frames by inserting a supplementary frame according to a number of necessary frames of each motion, based on the reference frame. 8. The electronic device of claim 7, wherein the instructions cause the processor to: calculate a number of first necessary frames for animation reproduction, based on the facial expression motion file; calculate a number of second necessary frames for animation reproduction, based on the body motion file; calculate a reference frame expressing a characteristic motion from the facial expression motion file and the body motion file; and adjust the number of frames by inserting a supplementary frame according to a number of necessary frames of each motion, based on the reference frame. 8. The electronic device of claim 1, further comprising a communication module, wherein the instructions cause the processor to transmit a first motion recognized from the first video or a second motion recognized from the second video to an emoji server through the communication module and, in response to receiving a message or text information corresponding to the first motion or the second motion from the emoji server, insert the received message or text information, as a background, into the motion emoji. 9. The electronic device of claim 1, further comprising a communication module, wherein the instructions cause the processor to transmit a body motion recognized from the user body image to an emoji server through the communication module and, in response to receiving a message or text information corresponding to the body motion from the emoji server, insert the received message or text information, as a background, into the customized emoji sticker. 9. The electronic device of claim 8, wherein the instructions cause the processor to: recognize a sign language pattern based on the first motion or the second motion and, in response to the sign language pattern being recognized, download a sign language emoji list through the communication module to display the sign language emoji list; and generate a sign language emoji, based on an input of sequentially selecting at least one sign language image from the sign language emoji list. 10. The electronic device of claim 1, further comprising a communication module, wherein the instructions cause the processor to: recognize a sign language pattern based on the body motion from the user body image and, in response to the sign language pattern being recognized, download a sign language emoji list through the communication module to display the sign language emoji list; and generate a sign language emoji sticker, based on an input of sequentially selecting at least one sign language image from the sign language emoji list. Claims 2-9 of the instant application are a broader version of claims 2 and 4-10 of the U.S. Patent, using slightly different wording. 10. A method of generating an emoji in an electronic device, the method comprising: based on a first user input, controlling a camera to record a first video including at least user’s face; generating a first motion file from the first video including the at least user’s face, wherein the first motion file is based on features related to the at least user’s face in the first video; based on a second user input, controlling the camera to record a second video including at least user’s body; generating a second motion file based on features related to the at least user’s body in the second video; synchronizing the first motion file and the second motion file to combine files; and generating a motion emoji based on the synchronized first motion file and second motion file. 11. A method of generating an emoji in an electronic device, the method comprising: in response to an emoji function being executed in the electronic device, displaying an emoji function user interface supporting entry into an edit mode for a body part depicted in the emoji on a display; receiving a user input requesting entry into a facial expression edit mode in the emoji function user interface; activating a camera in the facial expression edit mode to capture a user face image and generating a facial expression motion file from the user face image; performing control to display a customized facial expression emoji corresponding to the generated facial expression file on the emoji function user interface; receiving a user input requesting entry into a body motion edit mode in the emoji function user interface; activating the camera in the body motion edit mode to capture a user body image and generating a body motion file from the user body image; performing control to display a customized body motion emoji corresponding to the generated body motion file on the emoji function user interface; and performing control to generate a customized emoji sticker reflecting a user facial expression and a body motion, based on a user input requesting a combination of the customized facial expression emoji and the customized body motion emoji and update the emoji function with the same. Claim 10 of the instant application is a broader version of claim 11 of the U.S. Patent, using slightly different wording. 11. The method of claim 10, further comprising: updating, an avatar with a first motion of the avatar based on the generated first motion file; and updating the avatar with a second motion based on the generated second motion file. 12. The method of claim 11, wherein the performing control to update the emoji function further comprises: updating, in response to a user input for selecting the customized face motion emoji, a face motion of the avatar related to the emoji function with the selected customized face motion emoji; and updating, in response to a user input for selecting the customized body motion emoji, a body motion of the avatar related to the emoji function with the selected customized body motion emoji. 12. The method of claim 10, further comprising: extracting feature points from the first video, converting first motion data of the at least user’s face to a face morph target weight value representing the first motion, based on the face feature points, storing the first motion file in a memory, based on the face morph target weight value; displaying a first emoji generated based on the first motion file in a first set emoji list, identifying joint parts by extracting feature points of the user’s body from the second video, converting second motion data to a translation rotation scale (TRS) value representing the second motion, based on the body joint parts, storing the second motion file in the memory, based on the TRS value; and displaying a second motion emoji generated based on the second motion file in a second motion set emoji list. 13. The method of claim 11, wherein the performing control to display the customized facial expression emoji on the emoji function user interface further comprises: extracting feature points of the user face from the user face image, converting motion data of the user face to a face morph target weight value representing the facial expression motion, based on the face feature points, storing the facial expression motion file in a memory, based on the morph target weight value; and performing control to display the customized facial expression emoji generated based on the facial expression motion file, the customized facial expression emoji being included in a facial expression set emoji list provided in case of entrance into the facial expression edit mode, and wherein the performing control to display the customized body motion emoji on the emoji function user interface further comprises: identifying joint parts of a user body by extracting feature points of the user body from the user body image in response to entering into the body motion edit mode, converting body motion data to a translation rotation scale (TRS) value representing the body motion, based on the body joint parts, storing the body motion file in the memory, based on the TRS value; and displaying a customized body emoji generated based on the body motion file, the customized body emoji being included in a body motion set emoji list provided in response to entering into the body motion edit mode. 13. The method of claim 10, wherein the synchronizing the first motion file and the second motion file further comprises adjusting a number of frames of each file such that the number of frames of the first motion file and the number of frames of the second motion file are the same. 14. The method of claim 11, wherein the performing to update the emoji function further comprises synchronizing the facial expression motion file and the body motion file by adjusting the number of frames of each file such that the number of frames of the facial expression motion file and the number of frames of the body motion file are the same. 14. The method of claim 13, wherein the performing to adjust the number of frames of each file further comprises: calculating number of first necessary frames for animation reproduction, based on the first motion file; calculating number of second necessary frames for animation reproduction, based on the second motion file; calculating a reference frame expressing a characteristic motion from the first motion file and the second motion file; and adjusting the number of frames by inserting a supplementary frame according to a number of necessary frames of each motion, based on the reference frame to synchronize the first motion file and the second motion file. 15. The method of claim 11, wherein the performing to update the emoji function further comprises: calculating number of first necessary frames for animation reproduction, based on the facial expression motion file; calculating number of second necessary frames for animation reproduction, based on the body motion file; calculating a reference frame expressing a characteristic motion from the facial expression motion file and the body motion file; and adjusting the number of frames by inserting a supplementary frame according to a number of necessary frames of each motion, based on the reference frame to synchronize the facial expression motion file and the body motion file. Claims 11-14 of the instant application are a broader version of claims 12-15 of the U.S. Patent, using slightly different wording . Allowable Subject Matter Claims 1-14 would be allowable if rewritten or amended to overcome the Nonstatutory Double Patenting Rejection or if a Terminal Disclaimer is filed to overcome the Nonstatutory Double Patenting Rejection set forth in this Office action. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: None of the prior art teaches or suggests: From claim 1 – “synchronize the first motion file and the second motion file to combine files; and generate a motion emoji based on the synchronized first motion file and second motion file. ” From claim 10 – “synchronizing the first motion file and the second motion file to combine files; and generating a motion emoji based on the synchronized first motion file and second motion file.“ 07-43-03 AIA As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Scapel et al. U.S. Pub. No. 2020/0358725, Van Os et al. U.S. Pub. No. 2022/0070385, Holzer-Zaslansky et al. U.S. Pub. No. 2015/0287403, Stoyles et al. EP 3 404 659 A1, Perigault U.S. Patent 9,684,430, Blackshaw WO 2017/153771 A1, Rinker U.S. Pub. No. 2018/0101135 and Shin et al. WO 2020/054945 Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONNA J RICKS whose telephone number is (571)270-7532. The examiner can normally be reached on M-F 7:30am-5pm EST (alternate Fridays off). 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, Devona Faulk can be reached on 571-272-7515. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Donna J. Ricks/Examiner, Art Unit 2618 /DEVONA E FAULK/Supervisory Patent Examiner, Art Unit 2618 Application/Control Number: 18/990,225 Page 2 Art Unit: 2618 Application/Control Number: 18/990,225 Page 3 Art Unit: 2618 Application/Control Number: 18/990,225 Page 4 Art Unit: 2618 Application/Control Number: 18/990,225 Page 5 Art Unit: 2618 Application/Control Number: 18/990,225 Page 6 Art Unit: 2618 Application/Control Number: 18/990,225 Page 7 Art Unit: 2618 Application/Control Number: 18/990,225 Page 8 Art Unit: 2618 Application/Control Number: 18/990,225 Page 9 Art Unit: 2618 Application/Control Number: 18/990,225 Page 10 Art Unit: 2618 Application/Control Number: 18/990,225 Page 11 Art Unit: 2618 Application/Control Number: 18/990,225 Page 12 Art Unit: 2618 Application/Control Number: 18/990,225 Page 13 Art Unit: 2618 Application/Control Number: 18/990,225 Page 14 Art Unit: 2618 Application/Control Number: 18/990,225 Page 15 Art Unit: 2618 Application/Control Number: 18/990,225 Page 16 Art Unit: 2618 Application/Control Number: 18/990,225 Page 17 Art Unit: 2618 Application/Control Number: 18/990,225 Page 18 Art Unit: 2618 Application/Control Number: 18/990,225 Page 19 Art Unit: 2618 Application/Control Number: 18/990,225 Page 20 Art Unit: 2618 Application/Control Number: 18/990,225 Page 21 Art Unit: 2618 Application/Control Number: 18/990,225 Page 22 Art Unit: 2618 Application/Control Number: 18/990,225 Page 23 Art Unit: 2618 Application/Control Number: 18/990,225 Page 24 Art Unit: 2618 Application/Control Number: 18/990,225 Page 25 Art Unit: 2618 Application/Control Number: 18/990,225 Page 26 Art Unit: 2618 Application/Control Number: 18/990,225 Page 27 Art Unit: 2618 Application/Control Number: 18/990,225 Page 28 Art Unit: 2618 Application/Control Number: 18/990,225 Page 29 Art Unit: 2618 Application/Control Number: 18/990,225 Page 30 Art Unit: 2618 Application/Control Number: 18/990,225 Page 31 Art Unit: 2618 Application/Control Number: 18/990,225 Page 32 Art Unit: 2618 Application/Control Number: 18/990,225 Page 33 Art Unit: 2618 Application/Control Number: 18/990,225 Page 34 Art Unit: 2618 Application/Control Number: 18/990,225 Page 35 Art Unit: 2618 Application/Control Number: 18/990,225 Page 36 Art Unit: 2618 Application/Control Number: 18/990,225 Page 37 Art Unit: 2618 Application/Control Number: 18/990,225 Page 38 Art Unit: 2618 Application/Control Number: 18/990,225 Page 39 Art Unit: 2618 Application/Control Number: 18/990,225 Page 40 Art Unit: 2618 Application/Control Number: 18/990,225 Page 41 Art Unit: 2618 Application/Control Number: 18/990,225 Page 42 Art Unit: 2618 Application/Control Number: 18/990,225 Page 43 Art Unit: 2618 Application/Control Number: 18/990,225 Page 44 Art Unit: 2618 Application/Control Number: 18/990,225 Page 45 Art Unit: 2618 Application/Control Number: 18/990,225 Page 46 Art Unit: 2618 Application/Control Number: 18/990,225 Page 47 Art Unit: 2618 Application/Control Number: 18/990,225 Page 48 Art Unit: 2618 Application/Control Number: 18/990,225 Page 49 Art Unit: 2618
Prosecution Insights