DETAILED ACTION
This is a Non-Final Office Action responsive to the instant application filed 3 January 2025, which is a broadening reissue of application 16/962,379 (US Patent 11,544,830 B2 to Zhang et al., hereinafter “the ‘830 patent”, published 3 January 2023).
The instant application cancels original patent claims 1-20 and presents new claims 21-42. Claims 21 and 32 are independent.
Claims 21-42 are rejected.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which US Patent 11,544,830 B2 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 January 2025, 4 March 2025, 30 October 2025, and 26 January 2026 are noted and have been considered.
Specification
Multiple reissue applications have been filed for the reissue of US Patent 11,544,830 B2, namely the instant application (19/009,059) and reissue application 19/009,031. Per 37 CFR 1.177(a), “[t]he Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application much contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date.” No such notice exists in the instant specification. Subsequently, the specification is objected to. Appropriate correction is required. See MPEP 1451(I).
Claim Rejections - 35 USC § 251
Claims 21-42 are rejected under 35 USC § 251 based upon a defective reissue declaration.
The reissue declaration filed with this application is defective (see 37 CFR § 1.175 and MPEP § 1414) because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR § 1.175 and MPEP § 1414. The oath or declaration must identify a specific error to be relied upon.
As per MPEP § 1414(II)(B):
(B) Applicant need only specify in the reissue oath/declaration one of the errors upon which reissue is based.
…
…What is needed for the oath/declaration statement as to error is the identification of “at least one error” relied upon.
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration "states at least one error" in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required. (emphasis added)
The instant declaration, filed 4 March 2025, attempts to identify the error upon which the reissue is based as: “Assignee seeks to broaden the claims of U.S. Patent No. 11,544,830 through replacement with new claims 21-42.” For a broadening reissue, as cited from MPEP 1414(II)(B) above “it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid”. No “word, phrase, or expression” from the specification or an original claim, and how it renders the patent wholly or partly inoperative or invalid, has been disclosed in the declaration.
Accordingly, claims 21-42 are rejected as being based upon a defective reissue declaration under 35 USC § 251 as set forth above. See 37 CFR § 1.175.
Double Patenting
Claims 21, 22, 32, and 33 of this application is patentably indistinct from claims 22 and 24 of US Application 19/009,031 (“the ‘031 Application”). Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant may be required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 21, 22, 32, and 33 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 22 and 24 of copending Application No. 19/009,031 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 22 and 24 of the ‘031 Application encompasses the scope of claims 21, 22, 32, and 33 of the instant application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following chart illustrates the similarities between the claimed subject matter of instant claim 21 and claim 22 of the ‘031 Application. Note that claim 22 of the ‘031 Application is a dependent claim. The limitations of claims 1 and 21, which claim 22 depends from, are included in the chart and identified where applicable:
Instant Application Claim 21
US Application 19/009,031 Claim 22
A method of enhancing a digital image sequence, the method comprising:
(claim 1) A method of enhancing a digital image sequence, the method comprising:
receiving the digital image sequence that has multiple image frames and is image data;
(claim 1) receiving the digital image sequence that has multiple image frames;
generating from the digital image sequence using a first prime layer processor representing a distinctive visual style, a first prime layer node to represent a first prime layer image sequence having the distinctive visual style;
(claim 1) generating, from the digital image sequence, a plurality of prime layer image sequences, wherein each prime layer image sequence is generated by a respective prime layer processor, wherein each prime layer processor includes a set of image processing methods and algorithms, such that each prime layer image sequence represents a distinctive visual style;
generating, from the digital image sequence using a second prime layer processor, a second prime later node to represent a second prime later image sequence that is an unaltered version of the digital image sequence;
(claim 1) determining an appearance graph that includes a plurality of prime layer nodes, wherein each prime layer image sequence is represented by a prime layer node such that each prime layer node of the plurality of prime layer nodes represents the distinctive visual style of the respective prime layer image sequence;
(claim 21) …wherein one prime layer image sequence of the at least two prime layer image sequences corresponds in content to the digital image sequence
(claim 22) …generating the one prime layer image sequence that corresponds in content to the digital image sequence using an all-pass filter that does not alter image content of the digital image sequence
generating a second layer node by blending the first prime layer node and the second prime layer node; and
(claim 1) generating a second layer node by blending at least two prime layer nodes of the appearance graph;
generating an enhanced image sequence corresponding to the second layer node by blending the first prime image layer sequence and the second prime layer image sequence corresponding respectively to the first prime layer node and the second prime layer node.
(claim 1) generating an enhanced image sequence corresponding to the second layer node by blending the at least two prime layer image sequences corresponding to the at least two prime layer nodes blended to generate the second layer node.
As can be seen, the scope of dependent claim 22 of the ‘031 Application encompasses that of claim 1 of the instant application, and a such claim 1 is rejected under the doctrine of provisional non-statutory double patenting.
Instant claim 22 recites the use of an appearance graph as in claim 1 of the ‘031 Application, and as such is likewise rejected. Instant claims 32 and 33 recite subject matter similar to instant claims 21 and 22, and claim 24 of the ‘031 Application recites subject matter similar to that of claim 22 of the ‘031 Application. As such, claims 32 and 33 are rejected under the doctrine of provisional non-statutory double patenting.
Claim Objections
Claim 21 is objected to because of the following informalities: the claim recites “the first prime image layer sequence” in line 12, which the Examiner believes to be a typographical error intended to recite “the first prime layer image sequence”. Appropriate correction is required.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
The claims filed 3 January 2025 in the instant reissue contain new claims 21-42. Claims 21 and 32 are determined to be broader in scope than the existing patent claims and are supported by the specification of the ‘830 Patent at least as set forth in the 3 January 2025 remarks at 7-12.
The original claims of the ‘830 Patent include independent claims 1, 10, and 19.
Claims 1, 10, and 19 recite the limitations (or limitations analogous to):
generating, from the digital image sequence, a plurality of prime layer image sequences, wherein each prime layer image sequence is generated by a respective prime layer processor, wherein each prime layer processor includes a set of image processing methods and algorithms, such that each prime layer image sequence represents a distinctive visual style;
determining an appearance graph that includes a plurality of prime layer nodes, wherein each prime layer image sequence is represented by a prime layer node such that each prime layer node of the plurality of prime layer nodes represents the distinctive visual style of the respective prime layer image sequence
A prior art search failed to yield any relevant results particular to such limitations.
Instant independent claims 21 and 32 recite limitations similar in scope to those of claims 1, 10, and 19 of the ‘830 Patent reproduced above.
For example, Theobalt (US Publication 2018/0068178) discloses systems and methods for imparting “facial reenactment” into a video, such that (in one example) “the video of one participant may be altered in real time to photo-realistically reenact the facial expression and mouth motion of a real-time translator”. See Theobalt, [0002]-[0003]. Theobalt discloses that such may be accomplished through the use of appearance graphs that are “used to find a compromise between the last retrieved mouth frame and the target mouth frame”, at [0101]. However, Theobalt does not explicitly disclose at least “a plurality of prime layer image sequences, wherein each prime layer image sequence is generated by a respective prime layer processor”, as claimed.
Similarly, Zhang (US Publication 2016/0048951) discloses “[m]ethods and system for digitally enhancing the characteristics of an image sequence” (Abstract), similar to the ‘830 Patent. Similar to “generating, from the digital image sequence, a plurality of prime layer image sequences”, Zhang discloses wherein an “image sequence is decomposed into at least two layers that form decomposed image frames”, at [0005]. However, Zhang does not disclose that such decomposition is performed by a “respective prime layer processor”, or a prime layer processor including a set of image processing methods and algorithms such that a prime layer image sequence represents a distinctive visual style, as claimed.
Jin (US Publication 2019/0057527) utilizes “style data derived from multiple superpixels of [a] digital image near [a] patch to determine a particular style to transform the source digital image that the patch originates from”, at [0026]. However, Jin is silent with respect to further elements such as “prime layer processors”.
As a result, the cited prior art fails to disclose the subject matter of independent claims 21 and 32, and recite allowable subject matter. Claims 22-31 and 33-42 depend directly or indirectly from independent claims 21 or 32 and as such would be allowed under similar rationale.
Subsequently, claims 21-42 would be allowable were the outstanding issues enumerated in this Office Action overcome.
Conclusion
Claims 21-42 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R ROSWELL whose telephone number is (571) 272-4055. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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