www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/923,251
`
`07/08/2020
`
`Wataru OKAMOTO
`
`AOYAP0201USO01CON
`
`8795
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`WENDMAGEGN,GIRUMSEW
`
`2484
`
`08/05/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`are subjectto restriction and/or election requirement
`C] Claim(s
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210727
`
`Application No.
`Applicant(s)
`16/923,251
`OKAMOTOetal.
`
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`
`GIRUMSEW WENDMAGEGN__|2484 Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 07/08/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`
`CJ) Claim(see allowed.
`Claim(sTee41-12 is/are objected to.
`
`Claim(s) 1-10 is/are rejected.
`
`) ) ) )
`
`

`

`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`The present application,filedonor after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Claim Objections
`
`Claim1 objected to because of the following informalities: The limitation “first marker
`
`information indicating a position of a frame marked during video shooting by the user in
`
`a plurality of frames composing the movie data” recited twice. Appropriate correction is
`
`required.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`(d) REFERENCE IN DEPENDENT FORMS. —Subject to subsection (e), aclaimin dependent form shall
`containa reference to aclaim previously set forth and then specify a further limitation of the subject
`matter claimed. Aclaim in dependent form shall be construed to incorporate by referenceall the
`limitations of the claim to whichit refers.
`
`The following is a quotation of pre-AlA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AlA 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. Aclaim independent form shall be construed to incorporate
`by referenceall the limitations ofthe claimto whichit refers.
`
`Claim3 is rejected under 35 U.S.C. 112(d) or pre-AlA35 U.S.C. 112, 4th paragraph, as
`
`being of improper dependent formfor failing to further limit the subject matter of the claim
`
`upon whichit depends,or for failing to include all the limitations of the claim upon whichit
`
`depends. The limitations of claim3 is already recited in the independent claim1 (see last
`
`limitation). Applicant may cancel the claim, amend the claim to place the claim in proper
`
`dependent form, rewrite the claim in independent form, or presenta sufficient showing that
`
`the dependentclaim complies withthe statutory requirements.
`
`

`

`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`Page 3
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflectedinthe statute) so as to prevent the unjustified or
`
`impropertimewise extension of the “right to exclude” granted by a patent and to prevent
`
`possible harassment by multiple assignees. A nonstatutory double patenting rej ectionis
`
`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); fn 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 disclaimerin compliance with 37 CFR 1.321(c) or 1.321(d) may be
`
`usedto overcome an actual or provisional rejection based on nonstatutory double patenting
`
`provided the reference application or patent eitheris shown to be commonly owned withthe
`
`examined application, orclaims 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 inventorto 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 signedin compliance with 37 CFR
`
`1.321(b).
`
`

`

`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`Page 4
`
`The USPTO Internet website contains terminal disclaimerforms which may be used.
`
`Please visit www.uspto.gov/patent/patents-forms. The filing date of the applicationin 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 befilled out completely
`
`online using web-screens. An eTerminal Disclaimerthat meetsall requirements is auto-
`
`processed and approvedimmediately upon submission. For more information about eTerminal
`
`Disclaimers, referto www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`Claims 1-10 are rejected on the ground of nonstatutory double patentingas being
`
`unpatentable overclaims 1-5 of U.S. Patent No. 10,748,580 in view of Tokutake US
`
`2011/0249861.
`
`The claim of the patent does not disclose but Tokutake discloses a second selection
`
`screen including the candidate imagethat is displayed as a candidate for a frame image to be
`
`selected; a second operation receiver to receive an instruction indicating a switch from the first
`
`selection screen to the second selection screen ora switch from the second selection screen to
`
`the first selection screen([0021], user interface(operation receiver) configuredto display
`
`plurality of object and receive an input corresponding to one of the plurality of displayed
`
`object images).
`
`lt would have been obvious to a person having ordinary skillin the art before the
`
`effective filing date of the claimed invention to use a user interface to display plurality of object
`
`as Tokutake in order to allow the user to visually confirm and select a desired object image
`
`accurately.
`
`

`

`Patent No. 10,748,580
`
`Application No. 16/923,251
`
`Claim1 recites an information processing
`
`Claim1 recites an information processing
`
`apparatus comprising:a display;
`
`apparatus comprising:a display;
`
`Page 5
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`image that is displayed as a candidate fora
`
`an operation receiverto receive an
`
`a first operation receiverto receive an
`
`instruction indicating a switch of a candidate
`
`instruction indicating a switch of a candidate
`
`image from a user;
`
`image from a user;
`
`a storage to store movie data from whichstill
`
`a storage to store movie data from whichstill
`
`image data is generated;
`
`image data is generated;
`
`and a controllerto control the display to
`
`and a controllerto control the display to
`
`display a selection screenvia which a frame
`
`display a selection screen via which a frame
`
`image to be stored as a still image is selected
`
`imageto be storedas a still image is
`
`from the movie data, the selection
`
`selected fromthe movie data, the selection
`
`screen including the candidate image thatis
`
`screen beinga first selection screen including
`
`displayed as a candidate for a frame image to
`
`the candidate image that is displayedasa
`
`be selected, first marker information
`
`candidate for a frame image to be selected,
`
`indicating a position ofa frame marked
`
`and first marker information indicating a
`
`during video shooting by the userina
`
`position of a frame marked during video
`
`plurality of frames composing the movie
`
`shooting by the userina plurality of frames
`
`data,
`
`composing the movie data, or asecond
`
`selection screen including the candidate
`
`

`

`Page 6
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`frame imageto beselected, first marker
`
`information indicating a position of a frame
`
`marked during video shooting by the user in
`
`a plurality of frames composing the movie
`
`data,
`
`and second marker information indicating a
`
`and second marker information indicating a
`
`position of a frame marked automatically
`
`position of a frame marked automatically
`
`based on a feature inthe plurality of frames
`
`based on a feature in the plurality of frames
`
`composing the movie data,
`
`composing the movie data;
`
`and a user interface for selecting whether or
`
`not to display the first marker information
`
`on the selection screen;
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`selection screen to the second selection
`
`and move a frame position of the candidate
`
`and movea frame position of the candidate
`
`image based on the position indicated by the
`
`image based on the position indicated by the
`
`first marker information or the second
`
`first marker information or the second
`
`marker informationin acase where the
`
`marker informationin a case wherethe first
`
`operation receiver receives the instruction;
`
`operation receiver receives the instruction;
`
`and
`
`a second operation receiver to receive an
`
`instruction indicating a switch from the first
`
`

`

`Page 7
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`screen or a switch from the second
`
`selection screen to the first selection screen;
`
`wherein the first marker information and the
`
`wherein the first marker information and the
`
`second marker information are displayedina
`
`second marker information are displayedina
`
`manner that makes the first marker
`
`manner that makes the first marker
`
`information and the second marker
`
`information and the second marker
`
`information visually distinguishable from
`
`information visually distinguishable from
`
`each other.
`
`each other.
`
`Claim1 recites...
`
`Claim3 recites the information processing
`
`apparatus according to claim 1,
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`information provided corresponding to
`
`wherein the first marker information and the
`
`wherein the first marker information and the
`
`second marker information are displayedina
`
`second marker information are displayedina
`
`manner that makes the first marker
`
`manner that makes the first marker
`
`information and the second marker
`
`information and the second marker
`
`information visually distinguishable from
`
`information visually distinguishable from
`
`each other.
`
`each other.
`
`Claim2 recites the information processing
`
`Claim4 recites the information processing
`
`apparatus according to claim1, whereinthe
`
`apparatus according to claim1, whereinthe
`
`selection screen further includes playback
`
`selection screen further includes playback
`
`position information indicating the frame
`
`position information indicating the frame
`
`position of the candidate image and time axis
`
`position of the candidate image and time axis
`
`information provided corresponding to a
`
`

`

`Page 8
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`time axis of the movie data, and the playback
`
`a time axis of the movie data, and the
`
`position information, the first marker
`
`playback position information, the first
`
`information, and the second marker
`
`marker information, and/or the second
`
`information are arranged and displayedon
`
`marker information are arranged and
`
`the time axis information.
`
`displayed onthe time axis information.
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`marker information simultaneously displayed
`
`Claim3 recites the information processing
`
`Claim5 recites the information processing
`
`apparatus according to claim1, whereinthe
`
`apparatus according to claim1, whereinthe
`
`second marker information is given onlytoa
`
`second marker informationis givenonlyto a
`
`representative frame positionina case
`
`representative frame positionina case
`
`where the feature is detected withina
`
`where the feature is detected withina
`
`certain period.
`
`certain period.
`
`Claim4 recites the information processing
`
`Claim6 recites the information processing
`
`apparatus according to claim1, whereinthe
`
`apparatus according to claim1, whereinthe
`
`second marker information is given to one
`
`second marker information is given to one
`
`frame selected froma group of frames
`
`frame selected froma group of frames
`
`automatically detected based on the feature
`
`automatically detected based on the feature
`
`in each period.
`
`in each period.
`
`Claim5 recites the information processing
`
`Claim7 recites the information processing
`
`apparatus according to claim1, whereina
`
`apparatus according to claim1, whereina
`
`maximum number of pieces of the second
`
`maximum number of pieces of the second
`
`marker information simultaneously displayed
`
`

`

`on the selection screenis limited toa set
`
`on the selection screen is limited toa set
`
`value.
`
`value.
`
`Page 9
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`a position ofa frame marked automatically
`
`Claim1 recites an information processing
`
`Claim8 recites an information processing
`
`apparatus comprising:a display;
`
`apparatus comprising: a display;
`
`an operation receiverto receive an
`
`a first operation receiverto receive an
`
`instruction indicating a switch of a candidate
`
`instruction indicating a switch of a candidate
`
`image from a user;
`
`image from a user
`
`a storage to store movie data from whichstill
`
`a storage to store movie data from whichstill
`
`image data is generated;
`
`image data is generated;
`
`and a controllerto control the display to
`
`and a controllerto control the display to
`
`display a selection screenvia which a frame
`
`display a selection screen via which a frame
`
`image to be stored as a still image isselected
`
`imageto be storedas a still image is
`
`from the movie data, the selection
`
`selected fromthe movie data, the selection
`
`screen including the candidate image thatis
`
`screen including the candidate image thatis
`
`displayed as a candidate for a frame image to
`
`displayed as a candidate for a frame image to
`
`be selected,
`
`be selected, and
`
`first marker information indicatinga position
`
`first marker information indicating a position
`
`of a frame marked during video shooting by
`
`of aframe marked during video shooting by
`
`the userina plurality of frames composing
`
`the user ina plurality of frames composing
`
`the movie data,
`
`the movie data,
`
`and second marker information indicating a
`
`and/or second marker information indicating
`
`position of a frame marked automatically
`
`

`

`based on a feature inthe plurality of frames
`
`based on a feature in the plurality of frames
`
`composing the movie data,
`
`composing the movie data; and
`
`Page 10
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`and a user interface for selecting whether or
`
`not to display the first marker information on
`
`the selection screen;
`
`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`apparatus according to claim8, wherein the
`
`and move a frame position of the candidate
`
`move a frame position of the candidate
`
`image based on the position indicated by the
`
`image based on the position indicated by the
`
`first marker information or the second
`
`first marker information or the second
`
`marker informationin a case where the
`
`marker informationin a case wherethe first
`
`operation receiver receives the instruction;
`
`operation receiver receives the instruction;
`
`wherein the first marker information and the
`
`and
`
`second marker information are displayedina
`
`a second operation receiver to receive an
`
`manner that makes the first marker
`
`instruction indicating a selection whether
`
`information and the second marker
`
`the second marker information is displayed
`
`information visually distinguishable from
`
`on the selection screen.
`
`each other.
`
`Claim1 recites...
`
`Claim9 recites the information processing
`
`user interface for selecting whether or not to
`
`apparatus according to claim8, whereinthe
`
`display the first marker information on the
`
`second operation receiver is a user interface
`
`selection screen;
`
`Claim1 recites...
`
`which isincluded in the selection screen.
`
`Claim 10 recites the information processing
`
`

`

`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`Page 11
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`wherein the first marker informationand the|first marker information and the second
`
`second marker information are displayedina|marker informationare displayedina
`
`each other.
`
`manner that makes the first marker
`
`manner that makes the first marker
`
`information and the second
`
`information and the second marker
`
`marker information visually distinguishable|information visually distinguishable from
`
`from each other.
`
`Allowable Subject Matter
`
`Claims 11-12 objected to as being dependent upona 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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examinershould be directed to GIRUMSEW WENDMAGEGN whosetelephone numberis
`
`(571)270-1118. The examinercan normally be reached on 9:00-7:00 PM.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview,applicantis
`
`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 on (571) 272-7382. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/923,251
`Art Unit: 2484
`
`Page 12
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or PublicPAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
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`
`GIRUMSEW WENDMAGEGN
`
`Primary Examiner
`Art Unit 2484
`
`/GIRUMSEW WENDMAGEGN/
`Primary Examiner, Art Unit 2484
`
`