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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 05/08/2026 has been entered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
In originally filed drawings filed on 08/06/2025:
FIG. 1 has reference numeral 16, however, reference numeral 16 is not in the specification. Reference numeral 16 maybe added into paragraph [0019] In Step 3 last line as “and used to overlay parts 16”. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because in the Replacement sheets of drawings filed on 12/09/2025 for FIG. 3, as well as in originally filed drawings filed on 08/06/2025, the uploading device 303 is illustrated as being separate from processor 322 while paragraph [0038] describes “processor 322 of an uploading device 303”, thus, FIG. 3’s illustration of 303 and 322 and paragraph [0038]’s description of 303 and 322 conflict. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 2-6 have been interpreted under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) to not invoke 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) claim interpretation.
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.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/427,771 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because pending claim 6 is a broader version of copending claim 1, refer to the following side by side table. Thus, copending claim 1 anticipates pending claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This application.
Pending claim 6 filed on 01/06/2026
6. A method comprising:
identifying content to overlay displayed digital content;
storing the content for overlayment on an overlayment storage server;
creating a temporary array;
populating the temporary array with the identified content for overlayment from the overlayment storage server; and
responsive to an input, transforming the temporary array into a populated overlayment.
US Patent Application 19/427,771
Copending claim 1 filed on 12/19/2025
1. A method comprising:
identifying content to overlay displayed digital content,
wherein identifying the content for overlayment comprises:
detecting at least one subject of interest in an image;
selecting a singular subject of interest from the at least one subject of interest; and
isolating the singular subject of interest from the image to be the content for overlayment;
storing the content for overlayment on an overlayment storage server;
creating a temporary array;
populating the temporary array with the identified content for overlayment from the overlayment storage server; and
responsive to an input, transforming the temporary array into a populated overlayment.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,093,643 in view of the same of U.S. Patent No. 12,093,643 which has a memory 301 illustrated in FIG. 3 and described at column 5 lines 42 to column 6 line 11. Although the claims at issue are not identical, they are not patentably distinct from each other because pending claim 6 is a broader verson of patented claim 7, refer to the following side by side table, with an additional limitation “storing the content for overlayment on an overlayment storage server”. Applicant’s specification states the storage device 518 “storage device 518 that can be either on the client device 510 or connected to the client device 510, e.g. cloud storage system.”, thus, claimed storage server covers all storage. It would have been obvious to one of ordinary skill in the art to preform step of “storing the content for overlayment on an overlayment storage server” so the overlayment will be available for use in the later claimed steps. Column 5 lines 42 to column 6 line 11 of U.S. Patent No. 12,093,643 describes:
The client device 110 can comprise one or more processors 310 that process instructions. The one or more processors 310 can optionally include a plurality of cores; one or more coprocessors, such as a mathematics coprocessor or an integrated graphical processing unit (GPU); and/or one or more layers of local cache memory. The client device 110 can comprise memory 301 storing various forms of applications, such as an operating system 303; one or more user applications 302, such as document applications, media applications, file and/or data access applications, communication applications such as web browsers and/or email clients, utilities, and/or games; and/or drivers for various peripherals. The client device 110 can comprise a variety of peripheral components, such as a wired and/or wireless network adapter 306 connectible to a local area network and/or wide area network; one or more output components, such as a display 308 coupled with a display adapter (optionally including a graphical processing unit (GPU)), a sound adapter coupled with a speaker, and/or a printer; input devices for receiving input from the user, such as a keyboard 311, a mouse, a microphone, a camera, and/or a touch-sensitive component of the display 308; and/or environmental sensors, such as a global positioning system (GPS) receiver 319 that detects the location, velocity, and/or acceleration of the client device 110, a compass, accelerometer, and/or gyroscope that detects a physical orientation of the client device 110. Other components that can optionally be included with the client device 110 (though not shown in the schematic architecture diagram 300 of FIG. 3) include one or more storage components, such as a hard disk drive, a solid-state storage device (SSD), a flash memory device, and/or a magnetic and/or optical disk reader; and/or a flash memory device that can store a basic input/output system (BIOS) routine that facilitates booting the client device 110 to a state of readiness; and a climate control unit that regulates climate properties, such as temperature, humidity, and airflow.
This application.
Pending claim 6 filed on 01/06/2026
6. A method comprising:
identifying content to overlay displayed digital content;
storing the content for overlayment on an overlayment storage server;
creating a temporary array;
populating the temporary array with the identified content for overlayment from the overlayment storage server; and
responsive to an input, transforming the temporary array into a populated overlayment.
US Patent 12,093,643
1. A method comprising:
identifying content to underlay webpage content of a webpage displayed through a user interface;
Regarding underlay vs. overlay refer to patent claim 7 where the underlay becomes an overlay, thus, in view of patent claim 7 overlay is covered.
Covered in the above obvious statement.
creating a temporary array;
populating the temporary array with the identified content for underlayment;
responsive to an input, transforming the temporary array into a populated webpage underlayment;
tracking the position of a pointer with respect to the populated underlayment; and
renting the underlayment to a content creator, wherein the underlayment is rented by a time domain, and wherein, responsive to receiving an input while the position of the pointer corresponds to a portion of the populated underlayment, transforming coordinates of the position of the pointer into a lookup value, identifying a value of the populated underlayment corresponding to the lookup value, and performing an action upon the webpage responsive to a rule associated with the identified value of the populated underlayment.
6. The method of claim 1 wherein the populated underlayment is populated by one or more of the following: video, text, static image, ticker, live video, live stream, recorded stream, live broadcast, or recorded broadcast.
7. The method of claim 6 wherein the rule associated with the identified value of the populated underlayment is one or more of the following:
the populated underlayment stops playing;
the visitor is taken to another webpage;
an overlayment appears; or
an image of the visitor is incorporated into the identified content for underlayment.
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 (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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 6 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jager et al., US Patent No. 12,093,643, hereinafter Jager.
The applied reference has a common assignee and common joint inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim 6:
6. A method comprising:
identifying content to overlay displayed digital content (Jager: FIG. 4 402; column 7 lines 8-10 states “At 402, a video, being rendered within the underlayment of the webpage displayed through the user interface, can be identified.”;
the underlayment may be an overlaymnet, refer to the following portions of Jager:
clomun 2 lines 19-32 states “The underlayment can be a single element, such that when the visitor clicks anywhere on the underlayment, a click event can occur without consideration of where the visitor clicked (e.g., indicating that the visitor has an interest in the tire, and thus may desire to visit the tire website) or on a portion within the underlayment (e.g., indicating that the visitor is not interested in the tire, and would like the content to be removed). The underlayment can comprise multiple elements, some, or all of which can be clicked on to control, provide, or activate rules. The content publisher can specify multiple rules based on certain clicks of the underlayment including, e.g., the video underlayment transitions to stop playing, the visitor is taken to another webpage, a pop-up or overlayment appears.”.;
column 6 line 61 to column 7 line 2 states “A click input event is provided on the underlayment that allows the visitor to indicate certain preferences, e.g., stop the video from playing, rewind, switch to a different video, visit a different webpage. The content publisher or online platform can specify rules that apply to use of the underlayment, e.g., the video cannot contain backlinks, allows/prohibits certain types of ads, allows for embedded backlinks, allows for editing a video (crop, configure for size, filter, add text overlay, adjust pixels).”;
claim 7 states: “7. The method of claim 6 wherein the rule associated with the identified value of the populated underlayment is one or more of the following: the populated underlayment stops playing; the visitor is taken to another webpage; an overlayment appears; or an image of the visitor is incorporated into the identified content for underlayment.”; and
column 7 lines 3-10 states “An embodiment of monitoring a video underlayment is illustrated by an example method 400 of FIG. 4. A content publisher can provide visitors with access to content, such as a webpage, that is accessible through a user interface such as a web browser (e.g., a user can access a spare tire website). At 402, a video, being rendered within the underlayment of the webpage displayed through the user interface, can be identified.”.);
storing the content for overlayment on an overlayment storage server (Jager:
FIG. 4, store the video identified at 402 in view of the following:
memory 301 illustrated in FIG. 3 and described at column 5 lines 42 to column 6 line 11;
and
column 5 lines 42 to column 6 line 11 states:
The client device 110 can comprise one or more processors 310 that process instructions. The one or more processors 310 can optionally include a plurality of cores; one or more coprocessors, such as a mathematics coprocessor or an integrated graphical processing unit (GPU); and/or one or more layers of local cache memory. The client device 110 can comprise memory 301 storing various forms of applications, such as an operating system 303; one or more user applications 302, such as document applications, media applications, file and/or data access applications, communication applications such as web browsers and/or email clients, utilities, and/or games; and/or drivers for various peripherals. The client device 110 can comprise a variety of peripheral components, such as a wired and/or wireless network adapter 306 connectible to a local area network and/or wide area network; one or more output components, such as a display 308 coupled with a display adapter (optionally including a graphical processing unit (GPU)), a sound adapter coupled with a speaker, and/or a printer; input devices for receiving input from the user, such as a keyboard 311, a mouse, a microphone, a camera, and/or a touch-sensitive component of the display 308; and/or environmental sensors, such as a global positioning system (GPS) receiver 319 that detects the location, velocity, and/or acceleration of the client device 110, a compass, accelerometer, and/or gyroscope that detects a physical orientation of the client device 110. Other components that can optionally be included with the client device 110 (though not shown in the schematic architecture diagram 300 of FIG. 3) include one or more storage components, such as a hard disk drive, a solid-state storage device (SSD), a flash memory device, and/or a magnetic and/or optical disk reader; and/or a flash memory device that can store a basic input/output system (BIOS) routine that facilitates booting the client device 110 to a state of readiness; and a climate control unit that regulates climate properties, such as temperature, humidity, and airflow.);
creating a temporary array (Jager: column 7 lines 15-21 states “At 404, a temporary array can be created. The temporary array can comprise a linear byte array within which the content publisher through a range of filters and preferences selects the categories of ads it will or will not accept so that the scope of ads that can be displayed on the underlayment is controlled. In one embodiment a content creator can also select to what types of profiles they want to post.”.);
populating the temporary array with the identified content for overlayment from the overlayment storage server (Jager: column 7 lines 21-29 “At 406, the temporary array can be populated with the data of the video. Content publishers and content creators are matched based on filter parameters chosen by each or one or the other, e.g., an online influencer is matched with a content creator to promote certain goods that the influencer endorses. Filter parameters can include matching that increases potential or actual visitors to the webpage, or matching that makes advertising or marketing more effective.”.); and
responsive to an input, transforming the temporary array into a populated overlayment (Jager: column 7 lines 30-37 states “At 406, the position of a pointer with respect to the underlayment can be tracked (e.g., or a touch display can be monitored to identify user input, such as a touch gesture, with respect to the canvas), e.g., the pointer pixel image (e.g., a 2×2 pixel image or any other number or grouping/shape of pixels) can be created to represent the position of the pointer. A location of the pointer pixel image can be updated based upon changes in position of the pointer.”.).
Allowable Subject Matter
Claims 2-5 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 2-5:
The prior art of record fails to teach or suggest in the context of independent claim 2:
“a file from the overlayment storage server is called on by a temporary array processor and the file populates a temporary array;” and
“the temporary array processor downloads the temporary array data to the overlayment placement device where a processor provides for its display where it has been indicated the overlayment should be placed.”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A BRIER whose telephone number is (571)272-7656. The examiner can normally be reached on Mon-Fri from 8:30am-3:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao M Wu, can be reached at telephone number 571-272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JEFFERY A. BRIER
Primary Examiner
Art Unit 2613
/JEFFERY A BRIER/Primary Examiner, Art Unit 2613
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