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 .
DETAILED ACTION
This Office Action is in response to the Applicant’s communication filed on 17 February 2025. In virtue of this communication, claims 1-15 are currently presented in the instant application.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) submitted on 2/17/2025 is/are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claims 1-12, MPEP 2173.05(p) states that:II. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In this case, there does not seem to be separate and specific steps to perform this method, but instead reciting specific structural elements of the housing, camera, LED array that has the function of being capable of being controlled to set the brightness levels of one diode different from others.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 13, the apparatus is directed to the controlling method of claim 1. The apparatus of claim 13 includes a housing, camera, and LED array, and therefore when incorporating the method of claim 1, which also recites a housing, camera, and LED array, these elements have either a) already been incorporated into the claim and so these extra limitations are unnecessary, or b) requires two of each of these elements in order to function.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-3, 6, and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reno (Publication No.: US 2011/0211819 A1, herein known as D1) alone or in view of Velarde et al. (Publication No.: US 2016/0088278 A1, herein known as D2).
With respect to claim 1, D1 discloses a method for operating a portable photo booth, wherein the portable photo booth comprises (Figs. 1-6):
a housing (booth 10; [0030]),
a camera, or a USB camera, or a system camera, or an industrial camera or a compact camera, which is arranged in the housing and directed towards a capture area outside the housing (digital camera 67; [0042]), and
a light-emitting diode array which is arranged in or on the housing such that the capture area can be illuminated by the light-emitting diode array, wherein the light-emitting diode array comprises a plurality of individually controllable light-emitting diodes, wherein: the light-emitting diode array is controlled according to a control instruction in such a way that the light-emitting diode array at least temporarily assumes a lighting state in which the brightness of at least one first light-emitting diode of the light-emitting diodes differs from the brightness of at least one second light-emitting diode of the light-emitting diodes (LED elements 18; best seen in Fig. 5; [0030] and [0044] and [0045] disclose how the photobooth controls these elements to emit any single or multiple combinations of colors in any duration or pattern, or to project any logo, photo, or other image either singularly or in combination with color patterns).
While it appears D1 discloses the final feature of having the light-emitting diodes be different brightnesses are taught by the ability to disclose various logos, patterns, etc., which would inherently or obviously require some of the LEDs to be off or dimmer to distinguish the symbols over the ambient light, it does not explicitly disclose this feature.
D2 discloses method of controlling three or more camera flash LEDs of different colors, and the ability to adjust the brightness emitted from each one to provide a dynamic and adaptive mix of the colors emitted (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the method of D1 by incorporating the brightness control of D2 to the LEDs in order to perform the dynamic and adaptive mix of colors of the emitted LEDs as a way to display the logos and other effects of D1.
With respect to claim 2, the combination of D1 and D2 further discloses a method wherein, in the lighting state the brightness of at least one third light-emitting diode of the light-emitting diodes differs from the brightness of the at least one first light-emitting diode and from the brightness of the at least one second light-emitting diode (D1: LED elements 18; best seen in Fig. 5; [0030] and [0044] and [0045] disclose how the photobooth controls these elements to emit any single or multiple combinations of colors in any duration or pattern, or to project any logo, photo, or other image either singularly or in combination with color patterns; see also the combination above).
With respect to claim 3, the combination of D1 and D2 further discloses a method wherein, in the lighting state a plurality of first light-emitting diodes and/or a plurality of second light-emitting diodes are present (D1: LED elements 18).
With respect to claim 6, the combination of D1 and D2 further discloses a method wherein the light-emitting diode array is controlled according to the control instruction in such a way that the light- emitting diode array assumes a plurality of lighting states which differ from one another in temporal sequence (inherent as changing from one display to another of the list described above over the time of the photobooths use would be in the broadest reasonable interpretation a ‘temporal sequence’).
With respect to claim 8, the combination of D1 and D2 further discloses a method wherein the control instruction is generated depending on a lighting specification that can be provided by a user (D1: [0045]; D2: [0026]).
With respect to claim 9, the combination of D1 and D2 further discloses a method wherein the lighting specification comprises at least one symbol and/or at least one character, or a character sequence, and in that the light-emitting diode array is controlled in such a way that the light- emitting diode array displays the at least one symbol and/or the at least one character, or the character sequence, or as a scrolling text (D1: [0045]; D2: [0026]).
With respect to claim 10, the combination of D1 and D2 further discloses a method wherein the camera is controlled to capture at least one image in response to a photography request that can be provided by a user (D1: [0010], photo booth).
With respect to claim 11, the combination of D1 and D2 further discloses a method wherein the light-emitting diode array is controlled in response to the photography request in such a way that a brightness generated by the light-emitting diode array is increased for the duration of the image capture (D1: process of [0043]-[0045] and general knowledge of photobooths/image taking where flash/strobes/illumination is performed to obtain better imaging conditions, or D2: [0034]-[0039] which changes brightness values depending on the automatic exposure or determined exposure).
With respect to claim 12, the combination of D1 and D2 further discloses a method wherein the light-emitting diode array comprises a group of selected light-emitting diodes, and in that the brightness generated is increased by switching on the selected light-emitting diodes for the duration of the image capture independently of the lighting specification (the combination as a whole with the teachings as discussed in the rejection of claim 11, the lighting array 18 of D1 comprises at least one group of selected light-emitting diodes in order to perform the selected and desired illumination patterns/colors/logos).
With respect to claim 13, see the rejection of claim 1 above. While D1 does not give an exact number of LEDs in the array, and while drawings are not to scale, from the Fig. 5 cutout there are at least 45 LEDs shown in the cutout, and would be obvious to one of ordinary skill in the art that there would be at least 40 overall.
Claim(s) 4-5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of D1 and D2 as applied to claim 1 above, and further in view of Van der Sijde et al. (Publication No.: US 2019/0025672 A1, herein known as D3) and/or Black et al. (Publication No.: US 2017/0018214 A1, herein known as D4).
With respect to claim 4, the combination of D1 and D2 appears to disclose a method wherein the light-emitting diode array comprises a plurality of rows of light-emitting diodes, each row being controlled by a respectively different control unit, or in that the light-emitting diode array comprises a plurality of columns of light-emitting diodes, each column being controlled by a respectively different control unit (it would seem inherent or obvious to one of ordinary skill in the art that in order to control the lights to make different logos and shapes that control of the rows and columns would be required).
Even if this were not the case, both D3 ([0073]) and D4 [0090] teach LED array systems that can illuminate specific rows and columns to alter the brightness distributions of the arrays.
It would have been further obvious to one of ordinary skill in the art at the time the invention was filed to modify the method of the combination of D1 and D2 by utilizing the row and column control schemes as taught by either or both D3 and D4 in order to perform the method of illuminating specific patterns and logos as needed by D1.
With respect to claim 5, the combination of D1, D2, D3, and D4 further discloses a method wherein the control instruction is generated by a main control unit, or a microprocessor, the main control unit providing the control instruction to the control units (D1 [0002] as a non-limiting example, an internal or external processor).
With respect to claim 14, see the rejection of claim 4 above.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of D1 and D2 as applied to claims 1 and 6 above, and further in view of Otten (Publication No.: US 2021/0227120 A1, herein known as D5).
With respect to claim 7, the combination of D1 and D2 does not explicitly disclose a method wherein the light-emitting diode array changes the lighting states with an alternating frequency of at most 10 Hz, or at most 5 Hz.
D5 teaches modulating the current of an LED array at a sufficiently high frequency that the modulation of the intensity with not be perceived by a human observer ([0003]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify the method of the combination of D1 and D2 by modulating the current of the array of the system at a high enough frequency that the modulation cannot be perceived by a human observer as taught by D5 in order to display the intended features without undesirable flickering or discomfort. While not explicitly being below 10hz, this value would have been obvious without undue experimentation, as the motivations for using this range according to Applicant’s specification is for the same reason as D5.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of D1 and D2 as applied to claim 13 above, and further in view of Scheich (Publication No.: US 2022/0303408 A1, herein known as D6).
With respect to claim 15, the combination of D1 and D2 does not explicitly disclose a booth wherein the housing comprises a wall portion made of a metal material, or aluminum, the control device, the camera, and/or the light-emitting diode array being in heat-conducting contact with the wall portion (no material is given other than the polycarbonate sheet in D1).
D6 teaches making the frame of a photobooth out of metal or aluminum ([0020]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify the booth of the combination of D1 and D2 by forming the frame of the photo booth out of metal or aluminum as taught by D6 as a known material used in the construction of photo booths for their structural stability. It would then be obvious that these frames would be in heat-conducting contact with the internal parts.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Totsuka et al. (Patent No.: US 11,857,155 B2)
Moon (Publication No.: US 2023/0319420 A1)
Holmes et al. (Publication No.: US 2013/0176481 A1)
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA HANCOCK whose telephone number is (571)270-7547. The examiner can normally be reached on 10AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached on (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.H/Examiner, Art Unit 2852
8/21/2026
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852
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