DETAILED ACTION
Information Disclosure Statement
The information disclosure statements submitted on 01/21/2025 and 03/19/2025 have been considered by the Examiner and made of record in the application file.
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.
a) Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,444,075 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1 and 4 recite substantially the same image processing apparatus and method as the instant independent claims 5 and 8, including storing capturing position and direction information, external apparatus position information, capture propriety setting information, and performing masking when capture is denied and the external apparatus is within the camera’s angle of view. Claims 6 and 9 are further taught by patented claims 1 and 4, which require masking when the external apparatus position is within the angle of view. Claims 7 and 10 are rendered obvious by patented claims 2 and 5, which recite masking a part of a person within the relevant region.
b) Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,972,591 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1 and 2 recite the same system as instant claim 5, acquiring and capturing image, obtain capturing position and direction, obtain external apparatus position and capture propriety information, and mask based on the apparatus position when capture is denied.
19/032,542 11,972,581 B2
5
1, 2
6
1, 2
7
3
8
1, 2
9
1, 2
10
3
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 5-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (US 2006/0028558 A1)
Regarding claims 5 and 8, Sato discloses an image processing apparatus comprising:
a camera; (figure 4)
a storage; (figure 1)
a controller; and (figure 1)
a display, (figures 6-8)
wherein the camera is configured to capture an image, (figures 6-8)
wherein the storage is configured to:
store a capturing position information and a capturing direction information in accordance with the image, and (paragraphs 64 and 112; Sato determines the camera’s position and direction of the optical axis for the image capturing operation using GPS and a gyro sensor)
store a capturing propriety information which including an external apparatus position information and a setting information relating to capture propriety, (paragraphs 60, 62, 65 and 89; Sato’s communication terminal 200 supplies positional information of the subject and terminal together with restriction information such as photographing is prohibited. The terminal’s positional information and restriction information may be registered at a server.)
wherein the controller is configured to: detect an object in accordance with the external apparatus position information relating to the capturing position information and the capturing direction information, (paragraphs 64-66 and 70; Sato calculates the image capturing area from the camera position and direction, compares that area with the subject’s position information, and determines the position at which the subject appears in the image.)
in case that the setting information indicates denial for capturing, perform a masking process for the image to the object, and (paragraphs 67-70; When the restriction information indicates that the subject is prohibited from being photographed, Sato designated the subject region as a capturing prohibited region and performs mosaic processing, replacement, painting, or deletion of that region.)
in case that the setting information indicates permission for capturing, not perform the masking process for the image to the object, (paragraphs 66, 87 and 98; Sato teaches that when capturing is permitted or no restriction applies, the apparatus does not restrict the image and captures the image as it is.)
wherein the display is configured to display the image. (paragraphs 103-104; Sato teaches temporarily storing the processed picture in memory and presenting it on a display, and further describes displaying information regarding subjects having image capturing restrictions.)
Regarding claims 6 and 9, Sato discloses the claimed invention wherein the controller, in case that the external apparatus position is included in a range of angle of view when the camera captured the image, is configured to perform the masking process for the image. (paragraphs 64 and 66-70; Sato calculates the image capturing area using the camera’s position, optical axis direction, and viewing angle, compares that area with the positional information of the subject and communication terminal and when the subject is within the capturing area and photography is prohibited, performs mosaic or other masking processing on the corresponding region.)
Regarding claims 7 and 10, Sato discloses the claimed invention wherein the controller is configured to perform the masking process for the image to a part of the object in the range. (paragraph 75; Sato teaches that only a face region of a subject may be processed in mosaic or replaced with another image, thereby masking only a part of the object or person within the image capturing range.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBAK SAFAIPOUR whose telephone number is (571)270-1092. The examiner can normally be reached Monday - Friday, 8:00am - 5:00pm.
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, Stephen Koziol can be reached at (408) 918-7630. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BOBBAK SAFAIPOUR/ Primary Examiner, Art Unit 2665
Prosecution Insights