DETAILED ACTION
Response to Amendment
The amendment filed on December 31, 2025 has been entered. Applicant has amended claims 1, 2, 12, 13, and 20. Claims 1-20 remain pending, have been examined and currently stand rejected.
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 .
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 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.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 1-3, 5-7, 11-14, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2023/0136394 A1) (hereinafter “Saito”) in view of Massand (US 2013/0246901 A1).
Regarding Claims 1, 12 and 20: Saito discloses:
Claim 1: A method for providing a personalized digital asset as a service by a trusted circuitry to a heterogenous set of independent applications (See at least Saito [0007]):
Claim 12: A system for providing a personalized digital asset as a service by a trusted circuitry to a heterogenous set of independent applications, the system comprising a memory for storing computer instructions and a processor configured to execute the computer instructions to (See at least Saito [0006]; [0205] where system = “computer system”, memory for storing computer instructions = “storage device such as a flexible disc, a magneto-optical disc, a read-only memory (ROM), a portable medium such as a compact disc-ROM (CD-ROM), and a hard disk embedded in the computer system”; processor is implicit in the computer system since it reads and executes the program.):
Claim 20: A non-transitory computer-readable medium for storing computer instructions, the computer instructions, when executed by a circuitry for providing a personalized digital asset as a service by a trusted circuitry to a heterogenous set of independent applications (See at least Saito [0009]; [0205].), are configured to:
receiving the personalized digital asset generated in a common format (See at least Saito [0078]; [0158]; [0162]; [0167-0169]. Saito discloses receiving (e.g., via a provisioning process) the personalized digital asset (i.e., avatar) generated in a common format (e.g., an avatar format).);
storing the personalized digital asset off a blockchain system (See at least Saito [0006] “an avatar registration unit configured to register an available avatar by having a storage unit to store the avatar available in a network service provided to an end user on a network”; [0156] “An avatar management system of the present embodiment includes a data catalog of avatars stored and registered in an avatar information storage unit 231”. Saito discloses storing the personalized digital asset (i.e., the avatar) off a blockchain system (e.g., in a storage unit)); and
distributing the personalized digital asset with a usage right restriction and right to modify or adapt to any application among the heterogenous set of independent applications when the personalized digital asset is requested by the application and is electronically authorized by an owner of the personalized digital asset, the usage right restriction being provisioned under at least one digital right management scheme (See at least Saito [0067]; [0077]; [0160-0161]; [0164-0165]; [0168-0169]; [0186]; Fig. 6. Saito discloses distributing (e.g., by transmitting) the personalized digital asset (i.e., avatar) with a usage right restriction (i.e., information/conditions pertaining to the avatar, e.g., authorized user information, avatar sharing information, etc.) and right (i.e., use designation(s)) to modify or adapt to any application (i.e., to any service provision system, e.g., a metaverse) among the heterogenous set of independent applications (i.e., among the plurality of service provision systems, e.g., metaverses) when the personalized digital asset is requested by the application and is electronically authorized by an owner (i.e., when designated by the authorized user) of the personalized digital asset (i.e., of the avatar), the usage right restriction being provisioned under at least one digital right management scheme (e.g., by associating a metafile, comprising the information/conditions/designations, with the avatar).).
Saito discloses that the avatar material provisioning system can generate and provide a body material (e.g., clothing) that becomes part of the avatar. Saito [0032]. Saito indicates that the avatar management system may convert articles such as clothing and accessories purchased by a user into effect and items that can be used by the avatar in one or more metaverses. Saito [0199-0203]. Saito also discloses where various rules/conditions associated with an avatar/digital asset are enforced. For example, Saito discloses rules/conditions that limit where the avatar/digital asset may be used (e.g., the avatar may only be used in certain metaverses), rules/conditions identifying who may use the avatar/digital asset, rules/conditions that limit the number of terminals that can use the avatar/digital asset, and rules/conditions that limit the fraudulent use of the avatar/digital asset. Saito [0077]; [0160-0161]; [0164-0165]; [0186]; [0191-0193]; Fig. 6. However, Saito does not explicitly disclose prohibiting maintaining a copy of modified or adapted personalized digital assets after usage by the application via the at least one digital right management scheme.
However, Massand, who is also in the field of digital rights management, teaches prohibiting maintaining a copy of modified or adapted personalized digital assets after usage by the application via the at least one digital right management scheme (See at least Massand [0061]; [0076]; [0097]; Fig. 5. Massand teaches prohibiting (i.e., preventing) maintaining a copy (i.e., maintaining and/or obtaining a copy) of modified or adapted personalized digital assets (i.e., of modified content, e.g., documents) after usage by the application (i.e., after usage in/by the collaboration platform) via the at least one digital right management scheme (i.e., based on the access rights for the content).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Massand into Saito’s method of enforcing various rules/conditions associated with an avatar/digital asset. One of ordinary skill in the art would have been motivated to include such features in order to allow a user to selectively share content without losing control over the shared content (Massand [0061]).
Regarding Claims 2 and 13: The combination of Saito and Massand discloses the method of claim 1 and system of claim 12. Saito further disclose wherein the personalized digital asset comprises a 3D avatar created by the owner (See at least Saito [0029]; [0047]. Saito further disclose wherein the personalized digital asset (i.e., avatar) comprises a 3D avatar (i.e., 3D real avatar) created by the owner (i.e., actual person/user).).
Regarding Claims 3 and 14: The combination of Saito and Massand discloses the method of claim 1 and the system of claim 12. Saito further discloses wherein the usage right restriction is configured to prohibit a duplication of the distributed personalized digital asset or a redistribution of the personalized digital asset to other applications (See at least Saito [0077]; [0160-0161]; [0164-0165]; [0186]; [0191-0193]; Fig. 6. Saito discloses wherein the usage right restriction (i.e., the information/conditions pertaining to the avatar, e.g., authorized user information, avatar sharing information, etc.) is configured to prohibit a duplication of the distributed personalized digital asset or a redistribution of the personalized digital asset to other applications (e.g., by designating which metaverses the avatar can be used in, and/or by defining who is authorized to use the avatar, and/or by limiting the number of terminals that can use the avatar, etc.).).
Regarding Claims 5 and 16: The combination of Saito and Massand discloses the method of claim 1 and the system of claim 12. Saito further discloses wherein the usage right restriction is configured to enforce a usage time expiration condition of the distributed personalized digital asset (See at least Saito [0080] “The avatar sharing information in FIG. 6 includes sharer information and sharing conditions. The sharer information is information of a sharer who is permitted to share the corresponding avatar with the authorized user. The sharer information may be, for example, a sharer's user account. The sharing conditions are conditions under which the sharer can share the corresponding avatar. The sharing conditions may include, for example, an expiration date, information indicating a service provision system 310 that is designated such that the sharer can use the avatar, and the like.”.).
Regarding Claims 6 and 17: The combination of Saito and Massand discloses the method of claim 1 and the system of 12. Saito further discloses:
receiving an augmenting digital asset that is combinable with the personalized digital asset, the augmenting digital asset being provided by the application for augmenting the personal digital asset (See at least Saito [0199-203]. Saito receiving an augmenting digital asset (i.e., a shared attribute, e.g., effects/items acquired by avatars such as clothing) that is combinable with the personalized digital asset (i.e., with the avatar), the augmenting digital asset being provided by the application (i.e., the metaverse) for augmenting the personal digital asset.); and
storing the augmenting digital asset off the blockchain system (See at least Saito [0072]; [0201] “The data generated in this way is passed to the avatar management device 200 and stored as a shared attribute in the shared attribute information”; Fig. 5 “Shared Attribute Information”).
Regarding Claims 7 and 18: The combination of Saito and Massand discloses the method of claim 6 and the system of claim 17. Saito further discloses providing the augmenting digital asset for combination with the personalized digital asset for usage in another application among the heterogenous set of independent applications (See at least Saito [0202-203]. Saito discloses providing the augmenting digital asset (i.e., shared attribute) for combination with the personalized digital asset (i.e., with the avatar) for usage in another application (i.e., another metaverse) among the heterogenous set of independent applications (i.e., among the plurality of metaverses/service provision systems).).
Regarding Claim 11: The combination of Saito and Massand discloses the method of claim 1. Saito further discloses wherein:
the heterogeneous set of independent applications comprise at least two distinct virtual world applications (See at least Saito [0164-0165]; [0167-0169]; [0199-0203]. Saito discloses the heterogeneous set of independent applications (i.e., the plurality of service provision systems, e.g., metaverses) comprise at least two distinct virtual world applications (e.g., metaverses, e.g., metaverse A, metaverse B, etc.).); and
the personalized digital asset is provisioned by the trusted circuitry for use in both of the at least two distinct virtual world applications (See at least Saito [0111]; [0164-0165]; [0167-0169]; [0199-0203]. Saito disclose the personalized digital asset (i.e., avatar) is provisioned by the trusted circuitry for use in both of the at least two distinct virtual world applications (e.g., in both metaverses, e.g., metaverse A and metaverse B).).
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Saito in view of Massand, as applied above, and further in view of Andon et al. (US 2020/0184041 A1) (hereinafter “Andon”).
Regarding Claims 4 and 15: The combination of Saito and Massand discloses the method of claim 3 and the system of claim 14. Saito discloses distributing (e.g., by transmitting) the personal digital asset (i.e., avatar). Saito [0067]; [0077]; [0160-0161]; [0164-0165]; [0168-0169]; [0186]. Saito further indicates that an authenticity certificate assigned to the avatar by the authentication information assignment unit may be a non-fungible token (NFT) managed by a blockchain. Saito [0100]. However, Saito does not explicitly disclose wherein distributing the personal digital asset is performed in the blockchain system.
Andon, on the other hand, teaches wherein distributing the personal digital asset is performed in the blockchain system (See at least Andon [0019]; [0053]; [0068] “The digital marketplace 64 may represent a plurality of virtual objects 80 in such a manner that permits the organized trade or sale/purchase of the virtual objects between parties. Upon the closing of a sale, the digital marketplace 64 may update the blockchain 60 with the new ownership information and facilitate the transfer of new of existing keys to the new asset holder”; Fig. 4 step 113. Andon teaches wherein distributing (e.g., by transferring) the personal digital asset (i.e., asset/digital asset, e.g., CryptoKicks) is performed in the blockchain system (i.e., blockchain/blockchain ledger).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Andon into Saito’s method of distributing/transferring the avatar and using the blockchain to assigning certificates pertaining to the avatar. One of ordinary skill in the art would have been motivated to include such features in order to rely on the trust established in and by blockchain technology to enable a company to control the creation, distribution, expression, and use of digital objects that represent their brand (Andon [0007]).
Claims 8-10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Saito in view of Massand, as applied above, and further in view of “Use cases and MPEG technologies for Metaverse-related experiences”; Output Document; ISO/IEC JTC 1/SC 29/WG 2, MPEG Technical requirements, Convenorship: SFS (Finland); ISO/IEC JTC 1/SC 29/WG 2 N265, Online - January 2023; January 20, 2023: 24 pages. (hereinafter “ISO”), which was cited as Reference A1 on the February 16, 2024 IDS.
Regarding Claim 8: The combination of Saito and Massand discloses the method of claim 1. Saito discloses that the avatar material provisioning system can generate and provide a body material (e.g., clothing) that becomes part of the avatar. Saito [0032]. Saito further discloses that the avatar management system may convert articles such as clothing and accessories purchased by a user into effect and items that can be used by the avatar in one or more metaverses. Saito [0199-0203]. However, Saito does not explicitly disclose wherein the application is an online retail store comprising a virtual dressing room and 3D digitization of a plurality of items being sold. ISO, on the other hand, teaches wherein the application is an online retail store comprising a virtual dressing room and 3D digitization of a plurality of items being sold (See at least ISO pp. 6-7 “Use Case 1: Virtual dress room […] An online retail application for a clothing store accepts the user’s avatar into a virtual dressing room in which the user can try on different styles of clothing in different virtual environments (night club, restaurant, sporting activity) and in different light and shading conditions. The virtual dressing room allows the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of ISO into Saito’s method of generating, providing and using clothing on an avatar. One of ordinary skill in the art would have been motivated to include such features in order to allow the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing (ISO p. 6).
Regarding Claim 9: The combination of Saito and Massand discloses the method of claim 1. Saito further discloses wherein the method further comprising: distributing the personalized digital asset to a second application among the heterogenous set of independent applications when the personalized digital asset is requested by the second application and is electronically authorized by the owner of the personalized digital asset, the second application being a virtual world application (See at least Saito [0111]; [0164-0165]; [0168-0169]; [0199-203]; Fig. 9 S300. Saito discloses distributing the personalized digital asset (i.e., avatar) to a second application (i.e., another metaverse/service provision system) among the heterogenous set of independent applications (i.e., among the plurality of metaverses/service provision systems) when the personalized digital asset is requested by the second application (i.e., requested by the service provision system) and is electronically authorized by the owner of the personalized digital asset (i.e., when designated by the authorized user), the second application being a virtual world application (e.g., a metaverse).).
Saito discloses that the avatar material provisioning system can generate and provide a body material (e.g., clothing) that becomes part of the avatar. Saito [0032]. Saito further discloses that the avatar management system may convert articles such as clothing and accessories purchased by a user into effect and items that can be used by the avatar in one or more metaverses. Saito [0199-0203]. However, Saito does not explicitly disclose wherein the application is an online retail store.
ISO, on the other hand, teaches wherein the application is an online retail store (See at least ISO pp. 6-7 “Use Case 1: Virtual dress room […] An online retail application for a clothing store accepts the user’s avatar into a virtual dressing room in which the user can try on different styles of clothing in different virtual environments (night club, restaurant, sporting activity) and in different light and shading conditions. The virtual dressing room allows the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of ISO into Saito’s method of generating, providing and using clothing on an avatar. One of ordinary skill in the art would have been motivated to include such features in order to allow the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing (ISO p. 6).
Regarding Claim 10: The combination of Saito and Massand discloses method of claim 1. Saito further discloses wherein:
the heterogeneous set of independent applications comprise at least one virtual world application (See at least Saito [0164-0165]; [0167-0169]; [0199-0203]. Saito discloses the heterogeneous set of independent applications (i.e., the plurality of service provision systems, e.g., metaverses) comprise at least one virtual world application (e.g., at least one metaverse).); and
the personalized digital asset is provisioned by the trusted circuitry to the at least one virtual world application (See at least Saito [0111]; [0164-0165]; [0167-0169]; [0199-0203]. Saito disclose the personalized digital asset (i.e., avatar) is provisioned by the trusted circuitry to the at least one virtual world application (i.e., to one or more metaverses).).
Saito does not explicitly disclose: the heterogeneous set of independent applications comprise at least one real-world application; or the personalized digital asset is provisioned to the at least one real-world application.
ISO, on the other hand, teaches:
the heterogeneous set of independent applications comprise at least one real-world application (See at least ISO pp. 2-3 “1. Use cases summary […] Virtual dressing room […] An online retail application for a clothing store accepts the user's avatar into a virtual dressing room in which the user can try on different styles of clothing in different virtual environments […] Virtual museums A user and friends want to visit a real museum through metaverse. The museum has a virtual building identical to its physical one where each room has the 3-D captured objects of the actual artifacts of the corresponding room. The user's avatar, with friends, walk in a room, see an artifact (e.g. an Egyptian statue) and walk around it. […] AR two-party call Two people call each other in an immersive application using AR. Instead of a video call, where the other person is represented on the device flat screen in 2D, this AR use case renders people in 3D through e.g., the user glasses, see-through HMD or holographic displays. They can be represented by a live 3D capture or by a pre-captured model or avatar that is animated and transmitted live […] Immersive Live Performances A group of friends virtually joins an immersive, volumetric Karaoke session by selecting a Metaverse virtual lounge.”); and
the personalized digital asset is provisioned to the at least one real-world application (See at least ISO pp. 2-3 “1. Use cases summary”. Where the personalized digital asset (i.e., avatar) is provisioned to the at least one real-world application (e.g., a dressing room, virtual museum, AR two-party call, Immersive Live Performance, etc.).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of ISO into Saito’s method of provisioning an avatar to one or more service provision systems (e.g., metaverses). One of ordinary skill in the art would have been motivated to include such features in order to create photo realistic visualizations in different environments (ISO p. 6).
Regarding Claim 19: The combination of Saito and Massand discloses the system of claim 13. Saito further discloses wherein the processor is further configured to execute the computer instructions to: distributing the personalized digital asset to a second application among the heterogenous set of independent applications when the personalized digital asset is requested by the second application and is electronically authorized by the owner of the personalized digital asset, the second application being a virtual world application (See at least Saito [0111]; [0164-0165]; [0168-0169]; [0199-203]; Fig. 9 S300. Saito discloses distributing the personalized digital asset (i.e., avatar) to a second application (i.e., another metaverse/service provision system) among the heterogenous set of independent applications (i.e., among the plurality of metaverses/service provision systems) when the personalized digital asset is requested by the second application (i.e., requested by the service provision system) and is electronically authorized by the owner of the personalized digital asset (i.e., when designated by the authorized user), the second application being a virtual world application (e.g., a metaverse).).
Saito discloses that the avatar material provisioning system can generate and provide a body material (e.g., clothing) that becomes part of the avatar. Saito [0032]. Saito further discloses that the avatar management system may convert articles such as clothing and accessories purchased by a user into effect and items that can be used by the avatar in one or more metaverses. Saito [0199-0203]. However, Saito does not explicitly disclose wherein the application is an online retail store.
ISO, on the other hand, teaches wherein the application is an online retail store (See at least ISO pp. 6-7 “Use Case 1: Virtual dress room […] An online retail application for a clothing store accepts the user’s avatar into a virtual dressing room in which the user can try on different styles of clothing in different virtual environments (night club, restaurant, sporting activity) and in different light and shading conditions. The virtual dressing room allows the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of ISO into Saito’s method of generating, providing and using clothing on an avatar. One of ordinary skill in the art would have been motivated to include such features in order to allow the user to visualize the clothing on his/her person and in different environments thereby providing information relevant to the user’s decision on whether or not to purchase the clothing (ISO p. 6).
Response to Arguments
Claim Rejections – 35 U.S.C. § 102/103
Applicant argues that the cited prior art references fail to disclose "prohibiting maintaining a copy of modified or adapted personalized digital assets after usage by the application via the at least one digital right management scheme," as recited in amended claims 1, 12 and 20. Examiner agrees. Examiner has updated the prior art search based on the current claim amendments and has added an additional reference, Massand, to the prior art rejection to teach this particular feature. Examiner contends that the combination of Saito and Massand renders claims 1, 12 and 20 obvious.
For the above reasons, and for those set forth in the 35 U.S.C. § 103 rejection seen above, all claims remain rejected under 35 U.S.C. § 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
To et al. (US 2024/0257485 A1) discloses a virtual garment fitting method that uses a database comprising scale-standardized wearer avatar models of bodies of wearers and clothing overlay models of sized clothing articles. To Abstract; [0001]; [0009].
Nathan et al. (US 2008/0120558 A1) discloses a system and method for managing a persistent virtual avatar, and more particularly a persistent virtual avatar that has the ability to migrate between virtual environments, and have cross-membrane capacity. Nathan [0001].
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.
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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