DETAILED ACTION
Response to Arguments
The 101 rejection and some 112 rejections have been withdrawn in view of the amendment. However, other 112 rejection remain. For example, the scope of: “easiness of recognition” is unclear and the mentioned sections of the specification in the remarks fails to fix the issues.
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 6-7 and 9-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Parent claims recite the limitation “easiness of recognition”, “information on visibility” the limitations are variable limitations which may mean a plurality of things and the examiner were unable to find in the specification the scope of limitation or how the prescribed value is achieved. Please indicate where support for the structure of each unit can be found. The rest of the claims they share the deficiency by including the limitation and/or by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 6-7 and 9-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Parent claim 1 recites limitations such as: “client equipment that is used by a user” and a plurality of limitations as “to” do something. It is unclear if the limitations are directed to intended use [MPEP 2103 C.], or if the limitations actually require to accomplish the tasks. Please clarify. For examination purposes they are directed to intended use and the same structure will accomplish the same intended use [see MPEP 2111.02 II.]. Also, parent claim 1 is directed to a system comprising: a client equipment, content reproduction device, a memory and a processor; it is unclear if the memory and processor refer to the client equipment, content reproduction device or if they belong to a different device. Please clarify. For claim 9, it is unclear if the computer and client refer to the same device or if they are different devices. Please clarify. The rest of the claims they share the deficiency by including the limitation and/or by virtue of dependency.
Claims 1, 3, 6-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Parent claims recite the limitation “easiness of recognition”, “information on visibility” the limitations are variable limitations which may mean a plurality of things and the examiner were unable to find in the specification the scope of limitation or how the prescribed value is achieved. Please indicate where support for the structure of each unit can be found. The rest of the claims they share the deficiency by including the limitation and/or by virtue of dependency.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 6-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heinen 8594706.
As to claim 1, Heinen discloses an information processing system (see fig. 1, item 100), comprising:
client equipment [108] that is used by a user and that includes a GNSS (global navigation satellite system) receiver (see col. 3, lines 43-46) and a content reproduction device [506] reproducing a content (see col. 9, lines 29-31);
a memory [502, 504] (see col. 9, lines 7-17): and
a processor [512] (see col. 9, lines 21-23), the processor being configured:
acquire a current position of the client equipment from the GNSS receiver [A location of the user operated mobile device is determined, according to S302.] (see col. 3, lines 43-53; col. 4, lines 52-54);
to acquire, from the memory in which context information is stored, target context information that is the context information set related to the current position, the context information in the memory being set at a plurality of specific locations [Mapping information may include roads and road labels as well as geotagged points of interest] (see col. 4, lines 25-29). [Mapping information may further include a topography of the target area as well as location and height information of man-made structures such as buildings], including information of a visible feature which is a feature that can visually be recognized at the corresponding specific location and including information of easiness of recognition of the visible feature at the corresponding specific location [Upon determining the geotagged landmarks, visibility determination module 206 may determine whether each of the geotagged landmarks is visible from the location and perspective of the user operated mobile device.] (see col. 4, lines 54-66); to refer to the target context information, to extract a target visible feature that is the visible feature whose easiness of recognition at the current position is equal to or more than a prescribed value (see col. 5, lines 53-56), to access the memory in which content information is recorded, the content information including information of the feature related to a predetermined content that can be reproduced by the content reproduction device (see col. 5, lines 25-36), and
to specify a target feature-related content that is the predetermined content related to the target visible feature (see col. 7, lines 48-55); and to distribute the specified target feature-related content to the client equipment [The geotagged landmarks determined to be visible may then be sent to the user operated mobile device.] (see col. 4, lines 33-35), wherein the information on the easiness of recognition includes information on visibility of the feature at the current position (see col. 4, line 61 – col. 5, line 7),
the processor makes the content reproduction device reproduce the specified target feature-related content that has been distributed to the client equipment [S310] (see col. 7, lines 48-61). As indicated in the 112 rejection it is unclear which device is actually performing the steps, for examination purposes the examiner is selecting the client equipment and the content reproduction device is the display of the client equipment, and in case that they are separate, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Therefore, it would have been obvious to one the ordinary skills in the art before the effective filing date of the present invention to make it integral or separate as desired since it involves only routine skill in the art.
As to claim 3, Heinen discloses the information processing system according to claim 1, wherein the processor is configured to estimate a recognition level of the user with respect to the content [visible], wherein when the recognition level of the user with respect to the predetermined content relating to the target feature is equal to or more than a prescribed value (see col. 5, lines 53-56), the processor distributes the target feature-related content (see col. 4, lines 33-35).
As to claim 6, Heinen discloses the information processing system according to claim 1, wherein the context information is set for the feature with the visibility being equal to or more than a prescribed value (see col. 5, lines 53-56).
As to claims 7 and 11, Heinen discloses wherein the information on the easiness of recognition includes information on easiness of identification of the visible feature at the current position as the number of the visible features that are present within a fixed range from the current position (see col. 4, lines 53-66). Heinen fails to disclose a score of the easiness of identification is set lower, larger or wherein the visibility score is lower as the visible features visible from the current position are smaller, and the number of shields is larger. However, Heinen requires a threshold value to change from not visible to visible and vice versa, and setting a desired value lower or larger it is within the knowledge of one of the ordinary skills in the art, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the present invention to set the desired score to the desired value to improve the threshold value and provide the correct content.
Regarding claim 9 is the corresponding method claim of system claim 1. Therefore, claim 9 is rejected for the same reasons as shown above.
As to claim 10, Heinen discloses the information processing system according to claim 1, wherein the predetermined content is data including information of music, videos, and texts (see col. 7, lines 59-61).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 MARCOS L TORRES whose telephone number is (571)272-7926. The examiner can normally be reached 10:00 AM - 6:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Slater can be reached at (571)270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARCOS L. TORRES
Primary Examiner
Art Unit 2647
/MARCOS L TORRES/ Primary Examiner, Art Unit 2647