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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cain (US 2020/0404036) in view of Ramalingam (US 2018/0376180 and hereafter referred to as “Rama”).
Regarding Claim 1, Cain discloses a method comprising:
generating, by a computer system, an index for a digital media file encoded in a non-seekable format and includes frame offset data associated with the digital media file (Page 1, paragraph 0003-0005, Page 3, paragraph 0024, Page 4, paragraph 0031, 0037, Page 3, paragraph 0027-0028);
determining, by the computer system, a portion of the digital media file to transcode (Page 4, paragraph 0035);; and
transcoding, by the computer system, the portion of the digital media file to a proxy format based on the index (Page 4, paragraph 0035 – a requested portion is transcoded based on the index).
Cain does not explicitly disclose extracted frame offset data associated with the digital media file.
Rama discloses generating, by a computer system, an index for a digital media file encoded in a non-seekable format based on extracted frame offset data associated with the digital media file (Page, paragraph 0032, 0038, Page 1, paragraph 0005). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Cain to include the missing limitation as taught by Rama in order to not require deep packet inspection (Page 1, paragraph 0005) as disclosed by Rama.
Regarding Claim 15, Cain discloses a system comprising:
one or more processors (Figure 3, 21); and
one or more storage devices storing instructions that, when executed by the one or more processors (Figure 3, 22), cause the system to perform:
generating an index for a digital media file encoded in a non-streaming and non- seekable format, and includes frame offset data associated with the digital media file (Page 1, paragraph 0003-0005, Page 3, paragraph 0024, Page 4, paragraph 0031, 0037, Page 3, paragraph 0027-0028);
determining, by the computer system, a portion of the digital media file to transcode (Page 4, paragraph 0035); and
transcoding, by the computer system, the portion of the digital media file to a proxy format based on the index (Page 4, paragraph 0035 – a requested portion is transcoded based on the index).
Cain does not explicitly disclose extracted frame offset data associated with the digital media file.
Rama discloses generating, by a computer system, an index for a digital media file encoded in a non-seekable format based on extracted frame offset data associated with the digital media file (Page, paragraph 0032, 0038, Page 1, paragraph 0005). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Cain to include the missing limitation as taught by Rama in order to not require deep packet inspection (Page 1, paragraph 0005) as disclosed by Rama.
Regarding Claim 19, Cain discloses a non-transitory computer-readable storage medium including instructions that, when executed by one or more processors of a system, cause the system to perform:
generate an index for a digital media file encoded in a non-seekable format including frame offset data associated with digital media file( Page 1, paragraph 0003-0005, Page 3, paragraph 0024, Page 4, paragraph 0031, 0037, Page 3, paragraph 0027-0028 identifying file offsets of key frames of the digital media file during the pass through the digital media file);
determine, by the computer system, a portion of the digital media file to transcode (Page 4, paragraph 0035); and
transcode, by the computer system, the portion of the digital media file to a proxy format based on the index (Page 4, paragraph 0035 – a requested portion is transcoded based on the index).
Cain does not explicitly disclose extracted frame offset data associated with the digital media file.
Rama discloses generating, by a computer system, an index for a digital media file encoded in a non-seekable format based on extracted frame offset data associated with the digital media file (Page, paragraph 0032, 0038, Page 1, paragraph 0005). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Cain to include the missing limitation as taught by Rama in order to not require deep packet inspection (Page 1, paragraph 0005) as disclosed by Rama.
Claims 6, 8, 9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 1, 11 and 16 above, further in view of Schmidt (US 2014/0380376).
Regarding Claim 6 and 17, Cain and Rama disclose all the limitations of Claim 1 and 15 respectively. Cain discloses that determining the portion of the digital media file to transcode is based on a seek operation (Page 4, paragraph 0035). The combination does not explicitly disclose the limitation. Schmidt discloses wherein transcoding the portion of the digital media file comprises: determining, by the computer system, a file offset corresponding to a time in the digital media file indicated by the seek operation based on the index; and transcoding, by the computer system, the digital media file from the file offset (paragraph 0057-0059). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Schmidt in order to have improved method for transcoding (Page 2, paragraph 0014) as disclosed by Schmidt.
Regarding Claim 8, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Schmidt discloses that determining the portion of the digital media file to transcode is based on a playback operation, and wherein transcoding the portion of the digital media file comprises: determining, by the computer system, a file offset corresponding to a beginning of the digital media file based on the index; and transcoding, by the computer system, the digital media file from the file offset (paragraph 0057-0059– transcoding is performed based on a seek, i.e. playback, operation). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Schmidt in order to have improved method for transcoding (Page 2, paragraph 0014) as disclosed by Schmidt.
Regarding Claim 9, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Schmidt discloses storing, by the computer system, the transcoded portion of the digital media file; and providing, by the computer system, the transcoded portion of the digital media file in response to a user request (paragraph 0069). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Schmidt in order to have improved method for transcoding (Page 2, paragraph 0014) as disclosed by Schmidt.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 1, 11 and 16 above, further in view of Good et al (US 2016/0234504 and hereafter referred to as “Good”).
Regarding Claim 7 and 18, Cain and Rama disclose all the limitations of Claim 1 and15 respectively. The combination fails to disclose that determining the portion of the digital media file to transcode is based on a clip operation, and wherein transcoding the portion of the digital media file comprises: determining, by the computer system, a starting file offset corresponding to a start time in the digital media file indicated by the clip operation based on the index; determining, by the computer system, an ending file offset corresponding to an end time in the digital media file indicated by the clip operation based on the index; and transcoding, by the computer system, the digital media file from the starting file offset to the ending file offset. Good discloses: determining a portion of a digital media file to transcode based on a clip operation, and transcoding the portion of the digital media file comprises: determining, by the computer system, a start time in the digital media file indicated by the clip operation; determining, by the computer system, an end time in the digital media file indicated by the clip operation; and transcoding, by the computer system, the digital media file from the starting time to the ending time (paragraph 0023-0027 – a clip operation indicates start and end point, and the file portion corresponding to the clip is transcoded based on this input). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Good order to make clips available to multiple devise with different bandwidths and resolution (Page 1, paragraph 0004) as disclosed by Good.
Claims 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 1 above, further in view of Ayush et al (US 2021/0109966 and hereafter referred to as “Ayush”).
Regarding Claim 10, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Ayush discloses determining, by a computer system, a first vector embedding based on a frame in a digital media file; determining, by the computer system, a second vector embedding based on a search query, wherein determining the portion of the digital media file to return as a search result is based on the first vector embedding and the second vector embedding; and providing, by the computer system, the portion of the digital media file in response to the search query (paragraph 0024, 0031 - a vector is determined for video frames and search queries, and a clip is determined as a search result). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Ayush in order to have an improved system of video search (Page 1, paragraph 0003) as disclosed by Ayush.
Regarding Claim 14, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Ayush discloses receiving, by the computer system, a search query for an object; and determining, by the computer system, a playback position of the digital media file that satisfies the search query paragraph 0024, 0031, a vector is determined for video frames and search queries, and a clip is determined as a search result). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Ayush in order to have an improved system of video search (Page 1, paragraph 0003) as disclosed by Ayush.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 1 above, further in view of Ayush and Matsushita et al ( US 20120063635 and hereafter referred to as “Matsushita”).
Regarding Claim 11, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Ayush discloses determining, by a computer system, a first vector embedding based on a frame in a digital media file; determining, by the computer system, a second vector embedding based on a search query, wherein determining the portion of the digital media file to return as a search result is based on the first vector embedding and the second vector embedding; and providing, by the computer system, the portion of the digital media file in response to the search query (paragraph 0024, 0031 - a vector is determined for video frames and search queries, and a clip is determined as a search result). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Ayush in order to have an improved system of video search (Page 1, paragraph 0003) as disclosed by Ayush.
Ayush discloses a frame and does not explicitly teach scene change.
Matsushita discloses determining, by the computer system, a first vector embedding based on detected scene changes in the digital media file (paragraph 0083, 0096, 0104, 0105). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Matsushita in order to improve copyright protect and usage control of content (Page 1, paragraph 0004) as disclosed by Matsushita.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 1 above, further in view of Matsushita.
Regarding Claim 12, Cain and Rama disclose all the limitations of Claim 1. The combination does not explicitly disclose the limitation. Matsushita discloses extracting, by the computer system, images of the digital media file during a pass through the digital media file based on detected scene changes; and storing, by the computer system, vector embeddings generated based on the images (paragraph 0083, 0096, 0104, 0105). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Matsushita in order to improve copyright protect and usage control of content (Page 1, paragraph 0004) as disclosed by Matsushita.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama and Matsushita, as applied to claims 12 above, further in view of Ayush.
Regarding Claim 13, Cain, Rama and Matsushita disclose all the limitations of Claim 11. The combination does not explicitly disclose the limitation. Ayush discloses
generating, by the computer system, a semantic vector embedding based on the extracted images of the digital media file (paragraph 0024, 0031, 0158); mapping, by the computer system, the semantic vector embedding to a vector embedding space with vector embeddings generated based on search queries (paragraph 0024, 0031, 0158); and in response to the semantic vector embedding satisfying a threshold cosine similarity with a vector embedding of a search query, providing, by the computer system, clips or playback positions of the digital media file that correspond with images of the semantic vector embedding that satisfy the search query (paragraph 0024, 0030, 0031, 0158). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Ayush in order to have an improved system of video search (Page 1, paragraph 0003) as disclosed by Ayush.
Claim 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cain in view of Rama, as applied to claims 15 above, further in view of Heckman et al (US 2023/0412669 and hereafter referred to as “Heckman”).
Regarding Claim 16 and 20, Cain and Rama disclose all the limitations of Claim 15 and 19. The combination does not explicitly disclose the limitation. Heckman discloses sample frames of the digital media file in a second pass through the digital media file (paragraph 0085, 0137); and extract images from the sampled frames of the digital media file (paragraph 0085, 0137). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Heckman in order to reduce the size of the sample frames (paragraph 0085) as disclosed by Heckman.
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, 3, 6-12, 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,335,580. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is broader than US 12,335,580.
Regarding Claim 1 and 3 of the instant application
Corresponds to claim 1 of 12,335,580
A method comprising:
generating, by a computer system, an index for a digital media file encoded in a non-seekable format based on extracted frame offset data associated with the digital media file;
See also claim 3 below
determining, by the computer system, a portion of the digital media file to transcode; and
transcoding, by the computer system, the portion of the digital media file to a proxy format based on the index.
A method comprising:
generating, by a computer system, an index for a digital media file encoded in a non- streaming and non-seekable format while identifying file offsets of key frames of the digital media file during a first pass through the digital media file, wherein generating the index for the digital media file comprises:
identifying, by the computer system, during the first pass through the digital media file, the file offsets of the key frames of the digital media file based on frame headers, and
storing, by the computer system, the file offset and a time offset for each key frame of the digital media file, wherein each file offset provides a respective location within the digital media file for each key frame, and wherein each time offset provides a respective time associated with each key frame;
determining, by the computer system, a portion of the digital media file to transcode; and
transcoding, by the computer system, the portion of the digital media file to a proxy format based on the index.
The method of claim 1, wherein generating, by a computer system, an index for a digital media file encoded in a non-seekable format based on extracted frame offset data associated with the digital media file comprises:
identifying during a first pass through the digital media file, file offsets of key frames of the digital media file based on frame headers.
Regarding Claim 3, 6-12, 14-20 of the instant application corresponds 1, 3-7, 7 and 8, 8, 9-15 respectively of US 12, 335,580.
Allowable Subject Matter
Claim 2, 4 and 5 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.
It is noted that claim 3 is not rejected under prior art but is rejected under double patenting.
Conclusion
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/FARZANA HOSSAIN/Primary Examiner, Art Unit 2482
June 12, 2026
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