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 .
Claim Objections
Claims 1, 16, 23, and 24 are objected to because it appears that commas are missing in “receiving at a media difference engine external to a first media editing application a first revision of the media composition and a second revision of the media composition.” Appropriate correction is required.
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, 2, 5-9, 11, 16,and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,272,381. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 5-9, 11, 16,and 17 of the instant application are generic to all that is recited in claims 1-6 of the patent. It would have been obvious to change the language, which does not give any novelty over one another. That is, claims 1, 2, 5-9, 11, 16,and 17 of the instant application are anticipated by claims 1-6 of the patent.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1-4, 8, 12, and 16-24 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. (US Pub. No. 2022/0138950) in view of BV et al. (US Pub. No. 2023/0141448).
Consider claim 1. Gupta et al. discloses a method of generating a difference between a first revision of a media composition and a second revision of the media composition, the method comprising: receiving at a media difference engine a first revision of the media composition and a second revision of the media composition, wherein the first and second revisions of the media composition are represented in terms of a first compositional data format that is a native format of a first media editing application (para. 0088 describes identifying a first change record in the collection in the act, identifying the next change record by identifying the second change record in the collection), and wherein the media difference engine, in response to receiving the first revision and the second revision of the media composition: locates and installs a difference plug-in software module corresponding to the first compositional data format (para. 0127 describes implementing the digital-image modification detection and indication system as one or more plug-ins); generates a native change list that specifies differences between the first revision of the media composition and the second revision of the media composition in terms of the first compositional data format (paras. 0036 and 0094 describe a list including information associated with modifications to digital images); and exports the first revision of the media composition and the native change list (para. 0045 describes remotely storing the modified version of the digital image on a server; para. 0048 describes the server, including the digital media system wherein, the digital media system sends and receives data to and from the digital media application).
Gupta et al. does not disclose receiving at a media difference engine external to a first media editing application a first revision of the media composition and a second revision of the media composition.
However, BV et al. teaches receiving at a media difference engine external to a first media editing application a first revision of the media composition and a second revision of the media composition (paras. 0042 and 0043 describe receiving a plurality of document versions by a diff manager, for comparison, prior to providing the diffs to the distance function as shown in fig. 3).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to receive at a media difference engine external to a first media editing application a first revision of the media composition and a second revision of the media composition, in order to generate an intelligent change summary as suggested by the prior art.
Consider claim 2. Gupta et al. discloses the method of claim 1, wherein the second revision of the media composition was generated by editing the first revision of the media composition using the first media editing application (para. 0045 describes a digital media application generating the modifications of the digital images).
Consider claim 3. Gupta et al. discloses the method of claim 1, further comprising storing the first revision of the media composition (para. 0045 describes storing the modified version of the digital image) and the native change list in a database of a content management system (para. 0060 describes storing change records associated with the digital image in a linked list; para. 0086 describes a collection of change records in a database).
Consider claim 8. Gupta et al. discloses the method of claim 1, further comprising storing the first revision of the media composition (para. 0045 describes storing the modified version of the digital image) and the native change list in a content management system (para. 0060 describes storing change records associated with the digital image in a linked list; para. 0086 describes a collection of change records in a database).
Consider claim 12. Gupta et al. discloses the method of claim 1, wherein the first media editing application is a graphics application (para. 0156 describes a graphics ending to provide graphical data to a display).
Consider claim 23. Gupta et al. discloses all claimed limitations as stated above. Gupta et al. further discloses a computer program product comprising: a non-transitory computer-readable medium with computer-readable instructions encoded thereon, wherein the computer-readable instructions, when processed by a processing device instruct the processing device to perform a method of generating a difference between a first revision of a media composition and a second revision of the media composition (para. 0126 describes the components of the digital-image modification detection and indication system, including one or more instructions stored on a computer-readable storage medium and executable by processors of one or more computing devices).
Consider claim 24. Gupta et al. and GV et al. teach all claimed limitations as stated above. Gupta et al. further teaches a memory for storing computer-readable instructions; and a processor connected to the memory, wherein the processor, when executing the computer-readable instructions (para. 0126 describes components of the digital-image modification detection and indication system include one or more instructions stored on a computer-readable storage medium and executable by processors of one or more computing devices, that when executed by the one or more processors, the computer-executable instructions of the digital-image modification detection and indication system can cause the computing device(s) to perform the methods). The motivation to combine is the same as stated above in claim 1.
Consider claim 16. Gupta et al. and BV et al. teach all claimed limitations as stated above. Gupta et al. further teaches enabling a first operator to use a first instance of a first media editing application to edit a first revision of the media composition to generate a second revision of the media composition (para. 0024 describes a user input indicating analysis modifications for generating a revision of the media). The motivation to combine is the same as stated above in claim 1.
Claim 18 is rejected using similar reasoning as corresponding claim 1 above.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. (US Pub. No. 2022/0138950) in view of BV et al. (US Pub. No. 2023/0141448) in further view of Brown et al. (US Pub. No. 2014/0258968).
Consider claim 13. Gupta et al. and BV et al. disclose all claimed limitations as stated above, except wherein the media composition is characterized by a first type, wherein the first type is one of a timeline type, a mixer configuration type, and a scene graph type.
However, Brown et al. teaches wherein the media composition is characterized by a first type, wherein the first type is a scene graph type (paras. 0137-0139 describe a scene graph).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the media composition is characterized by a first type, wherein the first type is one of a timeline type, a mixer configuration type, and a scene graph type, in order to distribute visual representation of changes to an application as suggested by the prior art.
Consider claim 14. Brown et al. teaches the method of claim 13, wherein the media composition includes an element of a second type different from the first type (para. 0290 describes a timeline). The motivation to combine is the same as the reasoning aforementioned above in claim 13.
Consider claim 15. Brown et al. teaches the method of claim 14, wherein the first type is a scene graph type, and the second type is a timeline type (paras. 0137-0139 describe a scene graph; para. 0290 describes a timeline). The motivation to combine is the same as the reasoning aforementioned above in claim 13.
Allowable Subject Matter
Claims 4, 10, and 19-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5-7 would be allowable if rewritten to overcome the rejection of nonstatutory double patenting, set forth in this Office action, and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mishawn N Hunter whose telephone number is (571)272-7635. The examiner can normally be reached Monday-Friday 7am-4pm.
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, Thai Tran can be reached at 571-272-7382. 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.
/MISHAWN N. HUNTER/Primary Examiner, Art Unit 2484