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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/951,212
`
`11/18/2020
`
`Kengo TERADA
`
`2020-2837
`
`2964
`
`wo
`
`v
`
`ACKL
`
`WENDEROTH, LIND & PONACKL.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`NATNAEL, PAULOS M
`
`2422
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`11/03/2021
`
`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):
`eoa@ wenderoth.com
`kmiller@wenderoth.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`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)M The drawing(s) filed on 11/18/20 is/are: a)#) accepted or b){_J 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)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.{¥} Certified copies of the priority documents have beenreceived in Application No. 15/367,222.
`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 20211027
`
`Application No.
`Applicant(s)
`16/951,212
`TERADAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`PAULOS M NATNAEL
`2422
`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)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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.
`
`

`

`Application/Control Number: 16/951,212
`Art Unit: 2422
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA orAIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Specification
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`2.
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`The disclosure is objected to because of the following informalities: The instant
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`application is a continuation of 16/921,218, now U.S. Patent No. 11,115,616. And as
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`such the specification should include the continuation information. Appropriate
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`correction is required.
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`Double Patenting
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`3.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`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
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`

`

`Application/Control Number: 16/951,212
`Art Unit: 2422
`
`Page 3
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`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
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`1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`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 tofile
`
`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
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`AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The 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
`
`
`
`

`

`Application/Control Number: 16/951,212
`Art Unit: 2422
`
`Page 4
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`4.
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`Claim 1 provisionally rejected on the ground of nonstatutory double patenting
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`as being unpatentable over claim 1 of copending Application No. 16/951,346 (reference
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`application). Although the claims at issue are not identical, they are not patentably
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`distinct from each other because the claimed subject matter in claim 1 are fully
`
`disclosed or transparently found with obvious wording variations in claim 1 of
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`Application No. ’346 and allowing the invention defined by claims of the instant
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`application would result in an unwarranted timewise extension of the monopoly defined
`
`by the invention of claims of Application No. ‘346.
`
`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`5.
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`Claim 1 is rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1 of U.S. Patent No. 10, 491,853. Although the claims at issue
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`are not identical, they are not patentably distinct from each other because the claimed
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`subject matter in claim 1 is fully disclosed or transparently found with obvious wording
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`variations in claims 1-3 of U.S. Patent No. ‘853 and allowing the invention defined by
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`claims of the instant application would result in an unwarranted timewise extension of
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`the monopoly defined by the invention of claims of Pat. No. ‘853.
`
`Claim 1 of the patent ‘853 recites “wherein the content luminance information is
`
`acquired via the Internet,” whereas the instant claim reads “wherein the content
`
`

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`Application/Control Number: 16/951,212
`Art Unit: 2422
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`Page 5
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`luminance information is acquired as metadata of the video signal.” [Emphasis added].
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`However, the omission of an element and its function where not needed would be
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`obvious. Ex parte Rainu, 168 USPQ 375 (PTO Bd. Of App. 1969). The omission of an
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`element and its function in a combination is an obvious expedient if the remaining
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`elements perform the same functions as before. In re Karlson, 136 USPQ 184 (CCPA
`
`1963). The patent teaches that the content luminance information is acquired via the
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`Internet, which information may also be a metadata. Thus, receiving the metadata via
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`the internet or as part of a video signal, as the instant claim recites, would not alter the
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`function of the claimed invention. It would have been therefore obvious to those with
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`ordinary skill in the art to incorporate the omitted element if necessary since the
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`remaining elements perform the given functions as before.
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`Conclusion
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`6.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PAULOS M NATNAEL whosetelephone number is
`
`(571)272-7354. The examiner can normally be reached 7am-3:30pm.
`
`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.
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`

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`Application/Control Number: 16/951,212
`Art Unit: 2422
`
`Page 6
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, John Miller can be reached on 571-272-7353. The fax phone number for the
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`organization wherethis 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.
`
`PMN
`
`October 27, 2021
`
`/PAULOS M NATNAEL/
`Primary Examiner, Art Unit 2422
`
`