Detailed Action
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is in reply to the Amendment filed on 12/12/2025. Claims 1-12 are currently pending and have been examined. Claim 1 has been amended. Claims 2-12 have been newly entered. The claim objections have been overcome by amendment.
Priority
Applicant’s claim of priority to US Application 12/208,950 is acknowledged. The claims are therefore afforded an effective filing date of 9/11/2008.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-8 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 of US Patent 11551274 B2, hereinafter ‘274. This is a statutory double patenting rejection.
Instant Claim 1
‘957 Claim 1
A system implementing a virtual world, the system comprising: a plurality of asset servers managing backup storage of virtual objects of the virtual world;
A system, comprising: a plurality of asset servers managing backup storage of virtual objects of a virtual world,
and a plurality of simulation servers loading portions of the virtual objects from the asset servers to generate view simulations of the virtual world having the virtual objects,
and a plurality of simulation servers … the plurality of simulation servers loading portions of the virtual objects from the asset servers to generate view simulations of the virtual world having the virtual objects,
wherein the simulation servers communicate with client hosts to present the view simulations to users of the client hosts, including:
wherein the simulation servers communicate with client hosts …to provide the view simulations for electronic display on the client hosts, including:
a first simulation server in communication with a first client host of a first user in presenting a first view simulation of the virtual world displayed on the first client host;
a first simulation server in communication with a first client host of a first user … the first simulation server generating a first view simulation of the virtual world for electronic display on the first client host;
and a second simulation server in communication with a second client host of a second user in presenting a second view simulation of the virtual world displayed on the second client host;
and a second simulation server in communication … with a second client host of a second user, the second simulation server generating a second view simulation of the virtual world for electronic display on the second client host;
wherein, in response to a request from the first client host of the first user identifying a virtual object controlled by the second user of the virtual world, the system:
wherein, in response to a request from the first client host of the first user identifying a virtual object controlled by the second user of the virtual world, the system:
updates a first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host;
updates a first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world
transfers the virtual object from the second simulation server to a first asset server having a mirrored backup of the virtual object;
transfers the virtual object from the second simulation server to a first asset server, the first asset server having a mirrored … backup … maintaining association between the virtual object
generates a second database record of the first user to identify the virtual object, wherein the second database is generated to include an indicator that prevents the virtual object from being loaded into the first simulation server that is in communication with the first client host in presenting the first view simulation of the virtual world displayed on the first client host;
generates a second database record of the first user to identify the virtual object …, wherein the second database record is generated to include an indicator that prevents the virtual object from being loaded into the first simulation server that is in communication with the first client host
and to provide control of the virtual object to the first user, removes the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server and render the virtual object in the first view simulation of the virtual world displayed on the first client host.
removes the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server, render the virtual object in the first view
Instant Claim 2
‘957 Claim 2
The system of claim 1, wherein the virtual object is a copy of an object.
The system of claim 1, wherein the virtual object is a copy of an object.
Instant Claim 3
‘957 Claim 3
The system of claim 1, wherein the virtual object is an original object.
The system of claim 1, wherein the virtual object is an original object.
Instant Claim 4
‘957 Claim 4
The system of claim 1, comprising a transaction manager.
The system of claim 1, comprising a transaction manager.
Instant Claim 5
‘957 Claim 5
The system of claim 1, wherein the system updating the first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host comprises setting a flag bit in the first database record of the second user to a second value.
The system of claim 1, wherein the system updating the first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host comprises setting a flag bit in the first database record of the second user to a second value.
Instant Claim 6
‘957 Claim 6
The system of claim 1, wherein the system removing the indicator from the second database record, comprises flipping a flag bit of the second database record from a first value to a second value.
The system of claim 1, wherein the system removing the indicator from the second database record, comprises flipping a flag bit of the second database record from a first value to a second value.
Instant Claim 7
‘957 Claim 7
The system of claim 1, wherein the system verifies that the virtual object is controlled by the second user of the virtual world.
The system of claim 1, wherein the system verifies that the virtual object is controlled by the second user of the virtual world.
Instant Claim 8
‘957 Claim 8
The system of claim 1, comprising, after providing control of the virtual object to the first user, and removing the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server and render the virtual object in the first view simulation of the virtual world displayed on the first client host, the system deletes the first database record of the second user.
The system of claim 1, comprising, after providing control of the virtual object to the first user, and removing the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server and render the virtual object in the first view simulation of the virtual world displayed on the first client host, the system deletes the first database record of the second user.
Non-Statutory 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 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 5-8, of US Patent 11551274 B2, hereinafter ‘274, in view of Jung et al (US 20060178972 A1), hereinafter Jung.
Instant Claim 9
‘957 Claims 1 & 8
in response to a request from a first client host of a first user identifying a virtual object controlled by a second user of a virtual world, the method includes:
in response to a request from the first client host of the first user identifying a virtual object controlled by the second user of the virtual world, the system: [CLM 1]
updating a first database record of the second user, causing a second simulation server in communication with a second client host used by the second user to hide the virtual object from a second view simulation of the virtual world displayed on the second client host;
updates a first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world…[CLM 1]
transferring the virtual object from the second simulation server to a first asset server, the first asset server having a mirrored hard drive backup;
transfers the virtual object from the second simulation server to a first asset server, the first asset server having a mirrored hard drive backup …[CLM 1]
generating a second database record of the first user to identify the virtual object, wherein the second database record is generated to include an indicator that prevents the virtual object from being loaded into a first simulation server that is in communication with the first client host in presenting a first view simulation of the virtual world displayed on the first client host; and
generates a second database record of the first user to identify the virtual object …, wherein the second database record is generated to include an indicator that prevents the virtual object from being loaded into the first simulation server that is in communication with the first client host …[CLM 1]
providing control of the virtual object to the first user,
removing the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server and render the virtual object in the first view simulation of the virtual world displayed on the first client host.
providing control of the virtual object to the first user [CLM 8]
removes the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server, render the virtual object in the first view and delete the association between the virtual object and the second user, [CLM 1]
Instant Claim 10
‘957 Claim 7
verifying that the virtual object is controlled by the second user of the virtual world
verifies that the virtual object is controlled by the second user of the virtual world.
Instant Claim 11
‘957 Claim 5
wherein the updating the first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host comprises setting a flag bit in the first database record of the second user to a second value.
wherein the … updating the first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host comprises setting a flag bit in the first database record of the second user to a second value.
Instant Claim 12
‘957 Claim 6
wherein the removing the indicator from the second database record, comprises flipping a flag bit of the second database record from a first value to a second value.
wherein the … removing the indicator from the second database record, comprises flipping a flag bit of the second database record from a first value to a second value.
However, while ‘957 teaches the method steps of claims 9-12 as identified above, it does not specifically teach a non-transitory computer storage medium storing instructions configured to instruct a computer device to perform the method.
However, Jung teaches systems and methods to transfer virtual property in a virtual world [Abstract], including a non-transitory computer storage medium storing instructions configured to instruct a computer device to perform a method (Jung: “Some embodiments are implemented in a computer program product having program instructions configured to perform a process that associates information in a computer system … A computer program product embodiment may incorporate computer readable signal-bearing media including a storage medium and/or a communication medium for encoding the instructions.” [0024-0025] – “a computer system 500 having a processor 502 and memory 504 for running an application program 505. The application program 505 may be incorporated in one or more computer program products having a carrier medium with program instructions thereon.” [0145]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because the results would be predictable. Specifically, ‘957 would continue to teach the identified method steps, except that now it would also teach a non-transitory computer storage medium storing instructions configured to instruct a computer device to perform the method, according to the teachings of Jung. This is a predictable result of the combination.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because it would result in an improved ability to allow a transfer of a virtual object in a virtual world (Jung: [0022]).
Claim Eligibility - 35 USC § 101
Claims 1-12 recite eligible subject matter under 35 USC §101, as the claims reflect a technological improvement, by hiding a virtual object from a second view simulation, transferring it to a server having a mirrored backup of the object, generating a second database record that includes an indicator which prevents the virtual object from being loaded into the first simulation server, and removing the indicator from the record to cause the first simulation server to load the virtual object. The additional elements of the claim therefore integrate the judicial exception into a practical application, applying the abstract idea in a meaningful way beyond generally linking the abstract idea to a technological environment [MPEP 2106].These claimed limitations do more than just apply the judicial exception and uses the judicial exception in a meaningful way beyond generally linking. The features are more than just peripherally incorporated into the claims to implement the abstract idea. Thus, the claimed features would require that a computer is an integral part of the claimed method, and therefore the claims recite eligible subject matter because the claimed features integrate the judicial exception into a practical application.
Allowable Subject Matter
Claims 1-12 are allowable over prior art. The combination of elements and the claim as a whole are not found in the prior art.
Claims 1-12 are allowable over prior art though rejected on other grounds (e.g. Double Patenting) as discussed above. The combination of elements of the claim as a whole are not found in the prior art.
Upon review of the evidence at hand, it is hereby concluded that the totality of the evidence, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the Applicant’s invention. In the present application, claims 1-12 are allowable over prior art. The most related prior art patent of record include Colvin (US 20040107368 A1), which teaches transfer of software access, including preventing access to unauthorized copies of protected content through protected non-removable codes, and Jung et al (US 20060178972 A1) which teaches revokable transfer of virtual objects including backup of data records during transfer within a virtual world. Further related prior art patents of record further include Block et al (US 20130060616 A1), which teaches systems for managing access to transferred content items, including holding transferred items in an intermediate location and managing restrictions on access. The most relevant Non-Patent Literature includes References U & V(NPL -see attached), which discuss the transferability of virtual assets, and the transfer protocols for moving virtual assets between users, such as in a video game.
However, none of these references disclose the ability to: updates a first database record of the second user, causing the second simulation server in communication with the second client host used by the second user to hide the virtual object from the second view simulation of the virtual world displayed on the second client host; transfers the virtual object from the second simulation server to a first asset server having a mirrored backup of the virtual object; generates a second database record of the first user to identify the virtual object, wherein the second database is generated to include an indicator that prevents the virtual object from being loaded into the first simulation server that is in communication with the first client host in presenting the first view simulation of the virtual world displayed on the first client host; and to provide control of the virtual object to the first user, removes the indicator from the second database record, causing the first simulation server to load the virtual object from the first asset server and render the virtual object in the first view simulation of the virtual world displayed on the first client host, as claimed.
Each of these references fail to disclose or render obvious the combination of limitations in the dependent claims 1-12, alone or in obvious combination. Therefore, at least for the combination of elements recited in claim, claims 1-12 are allowable over prior art though rejected on other grounds (e.g. Double Patenting) as discussed above.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but are not persuasive.
Claim Rejections – Double Patenting
Applicant acknowledges the Double Patenting Rejections and requests that “the rejection be held in abeyance until the new claims are indicated to be allowable.”
Examiner notes with reference to MPEP 714.02 that while “objections or requirements as to form” may be held in abeyance, the rejections above cannot. The statutory type (35 U.S.C. 101) double patenting rejection on claims 1-8 can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. The non-statutory double patent rejection on claims 9-12 can similarly be overcome by canceling or amending the claims, and may be further overcome by a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d), 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. Examiner notes that a terminal disclaimer must be signed in compliance with 37 CFR 1.321(b), and that 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.
Applicant is invited to contact the Examiner with any questions or proposals to advance prosecution.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS JOSEPH SULLIVAN whose telephone number is (571)272-9736. The examiner can normally be reached on Mon - Fri 8-5 PT.
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/T.J.S./Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 2/20/2026