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 .
Response to Amendment
In response to the Non-final Office Action mailed on 6/18/2025, Applicant has filed an amendment on 10/20/2025. In this reply, Applicant has incorporated the structural limitations of claim 1 into method claim 6 and adding the generation of a "hologram produced [by] the holographic projector (5) corresponding to an outline of the deceased person." The prior apparatus claim (1) has been cancelled. Applicant has also argued that the prior art of record fails to teach the added limitation regarding the hologram corresponding to an outline of the deceased person (Remarks, Page 8).
These arguments have been fully considered, but are not found to be persuasive for the reasons noted in the below Response to Arguments section.
In response to the amended and clarifying title of the invention (see Remarks, Page 6), the previous objection to the title of the invention has been withdrawn.
Applicant argues that the amendments to claims 3 and 5-7 correct the improper multiple dependent claims and overcome the objection under 37 CFR 1.75(c) (Remarks, Page 6).
In response, it is noted that due to the instant amendments, claims 5-7 are no longer in multiple dependent form and no longer depend on another multiple dependent claim. As such the objection under 37 CFR 1.75(c) has been withdrawn. Also, due to the withdrawal of this objection, the Claims 5-7 can now be treated on the merits and have been examined below.
In regards to the 35 U.S.C. 112(a) rejection for original claims failing to comply with the written description requirement as a result of the specification lacking an underlying algorithm as to how audio responses are generated based upon words or sentences, Applicant argues that the incorporation of the subject matter of claim 1 into claim 6 address these concerns and additionally submits that these features are well-known in the art and need not teach such subject matter to show sufficient written description (Remarks, Page 6).
In response to Applicant's first point, incorporating the subject matter of claim 1 into claim 6 carries over the subject matter lacking written description (i.e., "software that generates audio responses with elements from the database based on words or sentences pronounced by the user and captured by the microphone"). Thus, it is unclear how the instant amendment that retains the subject matter lacking sufficient written description under 35 U.S.C. 112(a) would address the concerns raised in the subject rejection.
In response to Applicant's second point, while Applicant's specification does lack an explicitly description of the technology or even a well-known algorithm being relied upon, it is agreed that speech recognition applied to words and sentences as well as human-machine dialog is well-known in the speech processing arts with reasonably reliable software that has been functioning for almost two decades. If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. See, e.g., Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1116; Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA 1972). As such, the previous 35 U.S.C. 112(a) rejection has been withdrawn.
Applicant submits that in incorporating the subject matter of claim 1 into claim 6 amendments have been made to address the antecedent basis rejections under 35 U.S.C. 112(b) (Remarks, Page 7).
In response, while nearly all of the antecedent basis issues have been corrected by way of the instant amendment, "the user" in line 9 still lacks antecedent basis (see Non-Final Action, Page 5, paragraph 4 where not only "the voice," but "the user" were noted as requiring correction). As such all 35 U.S.C. 112(b) rejections have been overcome with the exception of "the user" now recited in claim 6.
Response to Arguments
In response to amended and now independent claim 6, Applicant alleges that "both Gustman et al. and Carpenter et al. are silent as to the feature of amended claim 6 regarding a hologram produced the holographic projector (5) corresponding to an outline of the deceased person" (Remarks, Page 8).
In response, it is pointed out that Gustman, et al. (U.S. PG Publication: 2020/0227033 A1) teaches a "holography display" that can display a recorded contributor in the form of "deceased ancestors" to add “to the realism of the contributor/inquirer interaction" (Paragraphs 0006, 0024, and 0066). While Gustman does not explicitly spell out a holographic projection corresponding to an outline of the deceased person/ancestor, Applicant is reminded that- "The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)." In this case the holographic projection of an outline is inherent given that the "recorded" contributor would have their own human shape/form within the recording and that the holographic projection reproduces this recorded human form during interactions in a finite space where the projected hologram would not extend to infinity. Thus, the outline of a human form is inherent in the holographic projection of the recorded ancestral contributor and the prior art rejection has been maintained and updated to reflect the claim language added via the instant amendment.
Applicant traverses the prior art rejections of the dependent claims for reasons similar to independent claim 6 (Remarks, Pages 8-9).
In response to such arguments, Applicant is directed towards the above claim 6 response.
Claim Rejections - 35 USC § 112
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 2-7 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.
In independent Claim 6, Line 9, “the user” lacks antecedent basis and it is unclear what limitation is being referenced by this term. For the purposes of claim interpretation in the interest of compact prosecution, “the user” will be construed as –a user--.
Amended Claim 6 also relates to a "method for communication with deceased persons" that is "housed in a casing" and includes structural components (e.g., holographic projector, loudspeaker, etc.) and processing stages (i.e., capturing and generating). It is unclear how a sequence of actively carried out steps that define a method can be physically encased in a housing and how a series of steps carried out in the two stage limitations also comprise physical components. Then read another way, the "comprising" transitional phase could relate to the device and in this case a number of potential issues arise. First, it would be unclear how a device could comprise active processing steps without some type of limitation relating to a hybrid claim that would not cause an unclear question of infringement (see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)) and moreover if the stages were interpreted as some type of physical component of the system then it would be unclear what steps the method actually comprises, which would result in both 35 U.S.C. 112(b) issues and a rejection under 35 U.S.C. 101 (improper method claim not falling within the four statutory categories of invention because the method does not include steps).
For the purposes of claim interpretation in the interest of compact prosecution and for treating claims 2-7 on the merits with respect to other statutes/rules, the system components will be interpreted as being part of the preamble (i.e., a method using a device comprising...the method comprising...a stage of capturing...a stage of generating).
Claim 6 features a further instance of "a user" in Lines 15 and 17 without a definite article or referential modifier (e.g., "said") so it is unclear whether these limitations should refer back to the earlier referenced user or some secondary user. For claim interpretation in the interest of compact prosecution, "a user" in lines 15 and 17 will be construed as --the user--.
In Claim 7, line 3, it is unclear whether "a database" refers back to the database set forth in parent claim 6 or some separate database instance. For claim interpretation, "the database" will be construed as --the database--.
The dependent claims inherit and fail to resolve the indefiniteness issues present in parent claim 6, and thus, are also rejected under 35 U.S.C. 112(b) by virtue of their 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.
Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gustman, et al. (U.S. PG Publication: 2020/0227033 A1) in view of Carpenter, et al. (U.S. Patent: 10,628,635).
With respect to Claim 6, Gustman discloses:
A method for communication with deceased persons using a device
a holographic projector (5) that projects a holography of the deceased person outside of the device ("holographic display" that can display a contributor recording "as a hologram" wherein a contributor can be "deceased ancestors" where the image is depicted to a user so is displayed externally, Paragraphs 0006, 0024, and 0066);
a wireless communication system (6) (mobile components for connecting with a wireless communication network, Paragraph 0090);
a loudspeaker (3) that reproduces a voice of the deceased person (a reply in a conversation is "played to the user in step 350" and afterwards the contributor afterwards depicted in "a listening pose," Paragraph 0067; the played back information includes audio clips of the ancestor contributor, Paragraphs 0006 and 0039; note that the playback of audio is performed using an output device 130 on devices that implies some form of a speaker for playback to carry out the indicated conversations between the inquirer and ancestor contributor, Paragraphs 0066-0067 and conversational loop depicted in Fig. 3);
a microphone (8) that captures the voice of a user who wishes to communicate with the deceased person (Paragraph 0065- "question [to the contributor] may be input by the inquirer as text or through a microphone.");
an operating display (2) (displays, touchscreens, see Paragraphs 0078 and 0089);
a control unit (7) (processor, Paragraph 0078) which, in turn, has:
a database that stores previously recorded information of the deceased person (audiovisual storage of the ancestor contributor, Paragraphs 0006, 0080, and 0082; Fig. 11, Element 1120), and
software that generates audio responses with elements from the database based on words or sentences pronounced by the user of the device and captured by the microphone (5) (program to carry out the conversation loop such as depicted in Fig. 3, Paragraphs 0041, 0067, 0078, and 0085); and
an electrical power supply (9) (system relates to computing device embodiments that would inherently require some form of power supply in order to operate, Paragraphs 0078),
the method comprising:
a stage of capturing the voice of a user with the microphone (8) who wishes to communicate with the deceased person (Paragraph 0065- "question [to the contributor] may be input by the inquirer as text or through a microphone;” see also Paragraph 0041- “inquiries may be voiced into a microphone and captured”); and
a stage of generating visual and audio responses by the deceased person based on the words and sentences of the user, captured by the microphone (8) and which are reproduced by means of the holographic projector (5) and/or the loudspeaker (3) (see the conversation loop such as depicted in Fig. 3 and described in Paragraphs 0041, 0067, 0078, and 0085 that involves a user voice query captured by the microphone and includes a display a contributor recording "as a hologram" via the projector wherein a contributor can be "deceased ancestors" where the image is depicted to a user so is displayed externally, Paragraphs 0006, 0024, and 0066 ), a hologram produced the holographic projector (5) corresponding to an outline of the deceased person ("holography display" that can display a recorded contributor in the form of "deceased ancestors" to add “to the realism of the contributor/inquirer interaction" (Paragraphs 0006, 0024, and 0066). While Gustman does not explicitly spell out a holographic projection corresponding to an outline of the deceased person/ancestor, it is noted that- "The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)." In this case, the holographic projection of an outline is inherent given that the "recorded" contributor would have their own human shape/form within the recording and that the holographic projection reproduces this recorded human form during interactions in a finite space where the projected hologram would not extend to infinity. Thus, the outline of a human form is inherent in the holographic projection of the recorded ancestral contributor described in paragraph 0066 among the other citations; note also that the contributor has such a human form as shown in Fig. 2, Element 220).
With respect to Claim 3, Gustman further recites:
The method according to claim 6, characterized in that the casing (1) has a screen (4) to view photographs or videos in two dimensions (media including videos and photos displayed on a non-holographic display including a touch-screen for user input, Paragraphs 0024, 0039-0040, 0042, 0058, 0063, 0078, and 0089; note that Carpenter teaches the housing as applied to claim 1 and also features a touch screen, see Col. 9, Line 62- Col. 10, Line 27 and pictures shown in Fig. 7).
With respect to Claim 4, Gustman further recites:
The method according to claim 3, characterized in that the screen (4) is a touch screen (media including videos and photos displayed on a non-holographic display including a touch-screen for user input, Paragraphs 0024, 0039-0040, 0042, 0058, 0063, 0078, and 0089; note that Carpenter teaches the housing as applied to claim 1 and also features a touch screen, see Col. 9, Line 62- Col. 10, Line 27).
With respect to Claim 5, Gustman further recites:
The method according to claim 6, characterized in that the electrical power supply (9) is a battery (mobile computing device embodiments (e.g., mobile device, tablet, smartphone, etc.) that would inherently require some type of battery-based power source in order to operate in a mobile fashion, Paragraph 0078).
With respect to Claim 7, Gustman further recites:
The method according to claim 6, further comprising a prior stage of capturing visual and/or audio characteristics of a person to generate a database which later, when the person dies, are used to generate the visual and/or audio responses of the deceased person, based on the words and sentences of the user captured by the microphone (8) (recording stage where the contributor is recorded with audio and video to create a "content database" that is used to generate an audio/visual response to a user query of that contributor (i.e., the deceased ancestor) for playback, Paragraphs 0041, 0045, 0055-0056, and 0066-0067; see also the conversation loop shown in Fig. 3).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Gustman, et al. (U.S. PG Publication: 2020/0227033 A1) in view of Carpenter, et al. and further in view of McNelley, et al. (U.S. PG Publication: 2021/0021788 A1).
With respect to Claim 2, Gustman in view of Carpenter teaches the method for interactive communication with a deceased ancestor recording contained in a housing, as applied to Claim 6. Although frequently discussing wireless network functionality, Gustman in view of Carpenter does not specifically call out the use of Bluetooth communication. McNelley, however, discloses wireless communication system (8) is via Bluetooth (Paragraph 0402).
Gustman, Carpenter, and McNelley are analogous art because they are from a similar field of endeavor in conversational systems utilizing holographic projection. Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to use Bluetooth communication as one of the wireless communication protocols used in the teachings of Gustman in view of Carpenter in order to achieve the predictable result of instituting a near field communication protocol that can be used for various added functions (e.g., software update, device control, media access, peripheral device connection).
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 JAMES S WOZNIAK whose telephone number is (571)272-7632. The examiner can normally be reached 7-3, off alternate Fridays.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may 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, Andrew Flanders can be reached at (571)272-7516. The fax phone number for the organization where this 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.
JAMES S. WOZNIAK
Primary Examiner
Art Unit 2655
/JAMES S WOZNIAK/Primary Examiner, Art Unit 2655