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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 21, 2026 has been entered.
Response to Arguments
Applicant’s arguments and amendments were persuasive to overcome the specification objection, the 112a rejections, all but one of the 112b rejections, the 112d rejections, and the 103 rejections. The remaining issues are addressed below.
112b
Applicant argues:
As amended, the claims make clear that the image processing apparatus receives image data produced by cameras, regardless of whether those cameras are integrated with or external to the apparatus. A person of ordinary skill in the art would readily understand the scope of the claim in light of this language and the specification.
Examiner responds:
US patent practice has exacting requirements for claim language, and the claim lacks sufficient precision as to whether or not a camera is required to be present.
101
Applicant argues:
This process involves calculating quantitative differences between these coordinate sets to determine a numerical match score, a mathematical and logic-intensive operation that exceeds the capacity of human observation or mental evaluation.
Examiner responds:
People can look at an avatar and a person, and score them +1 is they have the same color hair, +2 for same haircut, -1 if one has a moustache but the other doesn’t, and so forth.
Applicant argues:
“the unique technical challenge of cyber-predation”
Examiner responds:
While cyber-predation is worthy cause to work against, it is a human behavior problem, not a technical challenge. For example, improvements in preventing cyber-predation are not applicable to other types of computing.
Applicant argues:
This improvement is rooted in the technical constraints of graphics rendering …”
Examiner responds:
The examiner disagrees. This same technology could be applied to lower resolution images rendered slowly. See, e.g., the discussion of the Check Mii Out Channel’s 2008 contest for avatars that look like Princess Peach in the below 101 rejection.
Applicant argues:
This approach provides a concrete improvement to the technical field of interactive virtual environments by enabling the environment itself to evaluate avatar trustworthiness in a manner that is robust to normal avatar customization and editing workflows.
Examiner responds:
This is not a technical improvement, and is instead taking a human behavior and executing it in the field of interactive virtual environments.
Applicant argues:
Similar to the specific rules used to automate lip-sync animation in McRO, the current claims use specific rules including the measurement and comparison of facial landmark coordinates, to automate a verification result that previously relied on fallible human judgment.
Examiner responds:
The present claims lack rules of the complexity of McRO, and the claims are directed to the same process a person uses to decide if they recognize someone.
Applicant’s arguments over the art are addressed in the updated claim mapping, below.
The examiner notes that what Applicant asserts are the technical improvements to overcome the 101 rejection are not inventive over the prior art.
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 1-6, 8-15, and 17-23 (all claims) 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.
Claims 1, 14, and 23 recite “an indication of reliance.” However, the specification only provides support for an indication of whether the use can/should rely on, as opposed to what was already relied on, the distinction being that reliance has already occurred whereas reliability is what could/should happen. See, e.g., specification, [0036].
Dependent claims are likewise rejected.
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 1-6, 8-13, and 23 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.
Claims 1 and 23 recite receiving from cameras, but do not specify if the cameras are part of the claim (or for claim 23, instructions for the cameras). While the broadest reasonable interpretation of claim 1 is that the cameras are not part of the claim, dependent claim 11 states that they are. Note that method claim 14 does require use of the cameras.
Dependent claims are likewise rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8-15, and 17-23 (all claims) are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process) without significantly more.
Step 1: Claim 1 (and its dependents) recite an apparatus, and machines are eligible subject matter.
Claim 14 (and its dependents) recite a method, and processes are eligible subject matter.
Claim 23 recites a non-transitory, computer readable storage medium, and manufactures are eligible subject matter.
Step 2A, prong one: All of the elements of claims 1-23 are a mental process because a person can look at a picture and an avatar and decide if they match (analogously, one can look at a kid in a Halloween costume and decide if they look like themselves, or if they look like the person that they are dressing up as. Other examples include celebrity look-a-like contests, or contests about whether Nintendo Mii brand avatars look like certain people/characters. See, e.g., https://en.wikipedia.org/wiki/Check_Mii_Out_Channel to decide if Mii avatars look like Princess Peach or not.). See, e.g., Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019) discussing how placing information on a screen is not a technological solution (while not cited by the MPEP, the examiner notes that the Federal Circuit reached the same conclusion for each of the patents in this case). MPEP 2106.04(a)(2)(III)(C) explains that use of a generic computer or in a computer environment is still a mental process. In particular, this section begins by citing Gottschalk v. Benson, 409 US 63 (1972). “The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.” In Benson the Supreme Court did not separately analyze the computer hardware at issue; the specifics of what hardware was claimed is only included in an appendix to the decision.
Because there are no additional elements, no further analysis is required for Step 2A, prong two or Step 2B.
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 1-6, 8-15, and 17-23 (all claims) are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of each of U.S. Patent No. US 11983915 B2, US 10733781 B2, US 10668382 B2 (only claims 12 and 18-20), and US 10636217 B2 in view of the prior art as applied below.
Both the pending claims and the conflicting patents are all directed to generating avatars from images of users. Therefore, all of the conflicting patents are directed to the same problem as the present application. Further, any differences between the present claims and the claims in any of the conflicting patents are obvious in view of the prior art as applied below. It would have been obvious to one of ordinary skill in the art, before the effective filing date, to combine Gronau with any of the conflicting patents in for implementation details (especially as the patent claims lack implementation details). Based on the findings herein, this is an example of “(A) Combining prior art elements according to known methods to yield predictable results.” MPEP 2143.
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 1-6, 8, 9, 11-15, 17, 18, and 20-23 (the remaining claims are rejected under a separate 103, below) are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 20220166955 (“Gronau”) in view of US20120331400A1 (“Cheng”).
(Original) An image processing apparatus, comprising:
one or more processors; and (Gronau, Fig. 2, processing circuit 4001)
a memory storing instructions which, when executed by the one or more processors, cause the one or more processors to perform operations comprising: (Gronau, Fig. 2, memory 4002)
receiving, by the one or more processors, from one or more cameras, one or more images of a face of a user who is controlling a first virtual avatar displayed, by the one or more processors, within a virtual environment; (Gronau, claim 1, “acquiring visual information, by a camera of a participant.” Gronau’s participant refers to participating in a 3D video conference as an avatar, as per claim 1.)
capturing, by the one or more processors, one or more renders of a face of the first virtual avatar at a first time when the first virtual avatar is selected and displayed in the virtual environment; (Gronau, claim 1, “generating an avatar of the participant as seen from a point of view of a virtual camera that is virtually located at a physical location of the camera;” Gronau’s generating teaches the claimed capturing a render. See also, Fig. 1, step 230.)
detecting, by the one or more processors, one or more user facial features of the face of the user based on the one or more images of the face of the user; (Gronau, [0421] “The augmentation may include, modifying values due to lighting, facial make-up effects (lipstick, blush and the like . . . ), adding or removing facial hair features (such as beard, moustache), accessories (such as eyeglasses, ear buds) and the like.” From Fig. 18, step 1920.)
determining, by the one or more processors, one or more differences between the one or more user facial features and the one or more virtual avatar facial features based on a measurement between corresponding detected facial features; and (Gronau, claim 1 “comparing between the avatar and the visual information to provide a comparison result”)
Gronau is not relied on for the below claim language.
However, Cheng teaches detecting, by the one or more processors, one or more virtual avatar facial features based on the one or more renders of the face of the first virtual avatar; (Cheng, [0027] “Examples of user representational authenticity data 145 can include, but are not limited to, height, weight, eye color, date of birth, body measurements, hair color, tattoos, body-piercings, and the like.”)
determining, by the one or more processors, a quantitative match score based on the one or more differences, wherein the quantitative match score indicates a degree of resemblance between the face of the user and the face of the first virtual avatar; and (Cheng, abstract, “An authenticity score defining a degree of resemblance between the visual representation of the human user and physical characteristics of the human user can be calculated.”)
causing, by the one or more processors, a virtual element to be displayed proximate to the first virtual avatar within the virtual environment, wherein an appearance of the virtual element comprises an indication of reliance that visually indicates the degree of resemblance between the face of the user and the face of the first virtual avatar based on the quantitative match score. (Cheng, Fig. 3, authenticity score 330. See also Cheng, [0027] for further detail on the authenticity score.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Cheng to the teachings of Gronau such that Cheng’s authenticity scores are applied to the Gronau’s avatars “to validate and/or quantify the differences between a user's virtual and actual appearances.” Cheng, [0005]. This also prevents cyber-predation. Cheng, [0004].
Based on the above, this is an example of “combining prior art elements according to known methods to yield predictable results.” MPEP 2143.
(Original) An image processing apparatus according to claim 1, wherein the operations further comprise:
determining, by the one or more processors, that the quantitative match score meets or exceeds a first threshold match score, and (Cheng, Fig. 2)
selecting, by the one or more processors, in response to determining that the quantitative match score meets or exceeds the first threshold match score, a first appearance from a plurality of predefined appearances as the appearance of the virtual element, the first appearance being predefined to visually indicate to users of the virtual environment that the first virtual avatar resembles the user for quantitative match scores that meet or exceed the first threshold match score. (Cheng, Fig. 3)
3. (Original) An image processing apparatus according to claim 1,
wherein the operations further comprise:
determining, by the one or more processors, that the quantitative match score does not meet or exceed a first threshold match score; (Cheng, Fig. 2)
selecting, by the one or more processors, in response to determining that the quantitative match score does not meet or exceed the first threshold match score, a first appearance from a plurality of predefined appearances as the appearance of the virtual element, the first appearance being predefined to visually indicate to users of the virtual environment that the first virtual avatar does not resemble the user for quantitative match scores that do not meet or exceed the first threshold match score. (Cheng, Fig. 3)
4. (Original) An image processing apparatus according to claim 1, wherein the operations further comprise:
determining, by the one or more processors, that the quantitative match score does not meet or exceed a first threshold match score; and (Cheng, Fig. 2)
determining, by the one or more processors, in response to determining that the quantitative match score does not meet or exceed the first threshold match score, whether the quantitative match score meets or exceeds a second threshold match score (Cheng, Fig. 2. Cheng’s multiple authenticity scores teach the claimed second threshold match score.)
the second threshold match score being lower than the first threshold match score. (Cheng, Fig. 2)
5. (Original) An image processing apparatus according to claim 4, wherein the operations further comprise
selecting, by the one or more processors, in response to determining that the quantitative match score meets or exceeds the second threshold match score but does not meet or exceed the first threshold match score, a first appearance from a plurality of predefined appearances as the appearance of the virtual element, the first appearance being predefined to visually indicate to users of the virtual environment that the first virtual avatar resembles the user for quantitative match scores that meet or exceed the second threshold match score but do not meet or exceed the first threshold match score. (Cheng, Fig. 3)
6. (Original) An image processing apparatus according to claim 4, wherein the operations further comprise: selecting, by the one or more processors, in response to determining that the quantitative match score does not meet or exceed the second threshold match score, a first appearance from a plurality of predefined appearances as the appearance of the virtual element, the first appearance being predefined to visually indicate to users of the virtual environment that the first virtual avatar does not resemble the user for quantitative match scores that do not meet or exceed the second threshold match score. (Cheng, Fig. 3)
7. (Canceled)
8. (Original) An image processing apparatus according to claim 1, wherein the operations further comprise: determining, by the one or more processors, that the quantitative match score does not meet or exceed a first threshold match score; and (Cheng, [0054] “In this example, rule ‘1’ 215 can be interpreted as stating that other users in the virtual world environment who have an authenticity score less than or equal to thirty OR an authenticity score having a value of “Not Available” …)
modifying, by the one or more processors, at least the face of the first virtual avatar in response to determining that the quantitative match score does not meet or exceed the first threshold match score. (Cheng, [0054] “… will view the user as a male barbarian avatar 220.” Note that otherwise the user might appear “as a female avatar carrying ice skates.” [0054].)
9. (Original) An image processing apparatus according to claim 1, wherein the one or more images of the face of the user comprises one or more images of an identity document of the user, wherein at least part of the identity document comprises an image of the face of the user. (Gronau, [0215] “driver's license”)
11. (Currently Amended) An image processing apparatus according to claim 1, wherein the one or more cameras from which the one or more images are received are coupled to one or more selected of:
i. a head-mounted display;
ii. a mobile phone; (Gronau, [0326] “In yet another embodiment, users of a photographic device such as a mobile phone, professional camera, or webcam may be asked once to take a photo of themselves or other people with a white paper or other calibration object for reference.”)
iii. a portable video game console; or
iv. a computer.
12. (Original) An image processing apparatus according to claim 1, wherein the quantitative match score is a first match score, (This is not further limiting.)
the one or more images of the face of the user are received at a first time, and (This is not further limiting.)
the operations further comprise receiving, by the one or more processors, at a second time that is after the first time, one or more second images of the face of the user who is controlling the first virtual avatar at the second time; and (Gronau, [0079] “Step 220 may include determining, for each participant, updated 3D participant representation information within the virtual 3D video conference environment, that reflects the direction of gaze of the participant.” Gronau’s knowledge of the gaze of the participant teaches the claimed image of the face of the user.)
determining, by the one or more processors, based on the one or more second images of the face of the user and the one or more renders of the face of the first virtual avatar, an updated quantitative match score. (Gronau, [0275] “The authentication may occur multiple times during a 3D video conference.” Gronau’s multiple authentications teach the claimed updated match score, see also the mapping to Cheng for the match score.)
13. (Currently Amended) An image processing apparatus according to claim 1, wherein the virtual element is caused to be displayed in response to one or more of:
i. receiving, by the one or more processors, a user input from an input device; (Gronau, [0326] “In yet another embodiment, users of a photographic device such as a mobile phone, professional camera, or webcam may be asked once to take a photo of themselves or other people with a white paper or other calibration object for reference.”)
ii. determining, by the one or more processors, that a second virtual avatar is located within a threshold distance from the first virtual avatar within the virtual environment;
iii. determining, by the one or more processors, that a virtual object is located within a threshold distance from the first virtual avatar within the virtual environment;
iv. determining, by the one or more processors, that an action was performed by a second virtual avatar within the virtual environment; or
v. determining, by the one or more processors, that an action was performed by a virtual object within the virtual environment.
Claims 14-18 and 20-22 are rejected as per their counterparts.
Claim 23 is rejected as per claim 1. See also Gronau, claim 8 “A non-transitory computer readable medium.”
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 20220166955 (“Gronau”) in view of US20120331400A1 (“Cheng”) as applied to claim 9 above, and further in view of U.S. Pat. Pub. 20200184201 (“Kaehler”)
10. (Original) An image processing apparatus according to claim 9, wherein the operations further comprise:
recognizing, by the one or more processors, at least some textual information depicted within the one or more images of the identity document of the user; (Kaehler, [0030] “For example, the ARD [Augmented Reality Device, from the abstract] can extract a name from a driver's license”)
validating, by the one or more processors, at least some of the recognized textual information depicted within the one or more images of the identity document of the user; and (Kaehler, [0030] “For example, the ARD can extract a name from a driver's license and compare it to a name extracted from the airline ticket to determine whether the airline ticket and the driver's license likely were issued to the same person.”)
selecting, by the one or more processors, from each of the one or more images of the identity document, a respective portion of the image corresponding to the part of the identity document that comprises the image of the face of the user, and using the selected portions as the one or more images of the face of the user in response to validating the at least some of the recognized textual information. (Kaehler, [0027] “For example, the ARD can image the traveler's passport to detect a photograph of the traveler and compare it to an image of the traveler obtained by an outward-facing camera on the ARD to determine whether the passport photograph is that of the traveler.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Kaehler to the teachings of the combination of Gronau in view of Cheng such that Kaehler’s augmented reality identity verification is used with Gronau’s virtual meetings for the purpose of identity verification and providing enhanced experiences. Kaehler, abstract. Kaehler also provides implementation details for Cheng’s “Any authentication technique can be utilized.” Cheng, [0029].
Based on the above, this is an example of “combining prior art elements according to known methods to yield predictable results.” MPEP 2143.
Claim 19 is rejected as per claim 10.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Pat. Pub. 20190143221 “Generation and customization of personalized avatars” (title)
U.S. Pat. 11468151 – Fig. 6
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached at 571-272-3838. 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.
/DAVID ORANGE/Primary Examiner, Art Unit 2663
