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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,333,692. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the instant application and Claim 1 of U.S. Patent No. 12,333,692 are similar, because both Claim 1 of the instant application and Claim 1 of U.S. Patent No. 12,333,692 are claiming same claim subject matters.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
In Claim 1 of the instant application discloses “Claim 1. A method comprising: receiving a digital image portraying a first object and a second object against a background, wherein: the first object occludes a portion of the second object, and the first object and the second object each occlude one or more portions of the background; generating, utilizing a generative neural network, a completed second object, the completed second object having a completed portion that corresponds to the portion of the second object occluded by the first object; detecting one or more user interactions to move or delete the first object; and modifying the digital image by moving or deleting the first object and exposing the completed portion of the completed second object.”,
In Claim 1 of U.S. Patent No. 12,333,692 discloses “Claim 1. A computer-implemented method comprising: receiving a digital image portraying a first object and a second object against a background, wherein the first object occludes a portion of the second object and the first and second objects each occlude a portion of the background; generating, utilizing a generative neural network a completed second object, the completed second object having a completed portion that corresponds to the portion of the second object occluded by the first object; detecting one or more user interactions to move or delete the first object from the digital image; modifying the digital image by moving or deleting the first object and exposing the completed portion of the completed second object; modifying the digital image by moving or deleting the completed second object and exposing a content fill corresponding to the portion of the background previously occluded by the second object; generating a first object mask for the first object and a second object mask for the second object, wherein the second object mask is incomplete due to the first object occluding the second object; and determining that first object occludes the portion of the second object using the first object mask and the second object mask.”,
From this comparison it shows that the present application discloses the similar/same/identical limitations with terminology, both method/system/apparatus claim discloses with broader or same but not narrow means as specially in present claim does not further define the method/system/apparatus while similar/same/identical limitations patented in claim and with the rest limitation of Claim 1 is similar/same/identical to the patent Claim 1 limitations.
4) Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed features of claims 1-20 are similar to the patented features of parent case.
The instant Application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patentability distinct from each other because the instant Application claim is generic to all that is recited in the above patent claim. The more specific anticipates the broader (see In re Goodman - 29 USPQ2d 2010), also see Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2d, 1869 and Miller v. Eagle Mfg. Co., 151 U.S. 186 1894). Therefore, the instant claim is anticipated by the above patent claim.
5) Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,333,692. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is ‘anticipated’ by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIJAY SHANKAR whose telephone number is (571)272-7682. The examiner can normally be reached M-F 9 am- 6 pm.
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, Matthew Eason can be reached at 571-270-7230. 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.
VIJAY SHANKAR
Primary Examiner
Art Unit 2624
/VIJAY SHANKAR/Primary Examiner, Art Unit 2624
Prosecution Insights