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 .
1. This action is responsive to communications: Amendment, filed on 12/09/2025.
This action is made FINAL.
2. Claims 1-11 and 14-22 are pending in the case. Claim 1 is an independent claim. Claims 1, 11 and 18 have been amended. Claims 21-22 are newly added.
Response to Arguments
Applicant's arguments filed December 9, 2025 have been fully considered but they are not persuasive.
Applicant argues (claim 1) Joseph fails to disclose “the set of controlling requirements specified at least in part by the subject person and indicating different conditions under which different controlling requirements are to be applied”.
In response, Joseph discloses a system including a profile based on user preferences or settings (Para 44, 45). Joseph discloses the user profile settings may include setting an interactive environment location, a date, a time or a timeframe of interacting in an immersive environment as a condition for changing or not changing a synthesized face of a user displayed in the environment (Para 45, 46). Therefore, Joseph discloses “the set of controlling requirements specified at least in part by the subject person and indicating different conditions under which different controlling requirements are to be applied”.
Applicant argues a prima facie case of obviousness cannot be established for dependent claims 2-11 and 14-22 for at least the same reasons as provided for independent claim 1.
In response, a prima facie case of obviousness is established for dependent claims 2-11 and 14-22 for at least the reasons provided in the above response to arguments of claim 1.
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, 2, 7-10, 13, 14, and 16-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 3-6, 8-9 and 11-12 of copending Application No. 18/444/478 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each provides a client device with controlling requirements for virtual appearances of a subject person for alteration of the image of the subject person.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at the time the invention was made to conclude that the invention defined in the claims at issue would have been an obvious variation of the invention defined in a claim in the copending application because the copending application transmits controlling requirements for virtual appearances to modify captured images.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application: 18/444,512 Copending Application: 18/444,478 (claim 1)
A first device, comprising: an image-capturing component including at least one image sensor;
a wireless transceiver;
one or more processors;
A system for controlling virtual appearances of people depicted in images provided by image-capturing devices, the system comprising: one or more sensors; one or more processors;
one or more memories storing computer-executable instructions that, when executed by the one or more processors, cause the first device to:
receive, via the wireless transceiver and from a second device, an indication of a set of controlling requirements for virtual appearances of a subject person in images that are output by the first device;
and computer-executable instructions that are stored on one or more memories of the system and that are executable by the one or more processors to cause the system to: detect, via the one or more sensors, a condition under which virtual appearances of a subject person depicted in images that are provided by image-capturing devices are to be controlled and responsive to the detection: obtain a set of controlling requirements for the virtual appearances of the subject person, the set of controlling requirements specified at least in part by the subject person
Copending Application 18/444,478 (claim 3)
subsequent to the reception of the indication of the set of controlling requirements corresponding to the subject person, capture, via the image-capturing component, an initial image in which the subject person is depicted;
alter the initial image in accordance with the set of controlling requirements
corresponding to the subject person, thereby generating an altered image including a
controlled virtual appearance of the subject person;
wherein the one or more images that are provided by the image-capturing device are a modification, by the image-capturing device, to an initial set of images that were initially captured via an image-capturing component of the image-capturing device, the initial set of images including one or more virtual appearances of the subject person
Copending Application: 18/444,478 (claim 1)
provide the altered image via one or more outputs of the first device.
transmit, via a wireless transceiver and to an image-capturing device, an indication of the set of controlling requirements for the virtual appearances of the subject person so that a virtual appearance of the subject person depicted in one or more images that are provided by the image-capturing device is in accordance with the set of controlling requirements.
Application: Claim Correspondence
18/444,512
2
7-10
13
14
16
17
18
18/444,478
11
4
1
8 & 9
12
12
6
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.
Claim(s) 1-11 and 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Binil Joseph, US 2023/0342487 A1.
Independent claim 1, Joseph discloses a first device, comprising:
an image-capturing component (Fig. 1 “100”) including at least one image sensor (Fig. 1 “130”);
a wireless transceiver (i.e. The I/O 160 may include one or more wireless transceivers that enable a wireless connection between the system 100 and one or more peripheral devices – Para 57; Fig. 1 “160”);
one or more processors (Fig. 1 “150”); and
one or more memories storing computer-executable instructions that, when executed by the one or more processors (i.e. processing system can include and/or be implemented using computer software including stored instructions – Para 61), cause the first device to:
receive, via the wireless transceiver and from a second device, an indication of a set of controlling requirements for virtual appearances of a subject person in images that are output by the first device (i.e. second user device – Fig. 2A “220” – includes a transceiver – Fig. 2A “270B”; Para 79 – and can perform server functions – Fig. 2A “205” – to transmit a profile to a first device - Fig. 2A “210” – in system that can be used in a network based application – Para 63), the set of controlling requirements specified at least in part by the subject person (i.e. profile may be based on user preferences or settings – Para 44, 45) and indicating different conditions under which different controlling requirements are to be applied (i.e. setting an interactive environment location, a date, a time or a timeframe of interacting in an immersive environment as a condition for changing or not changing a synthesized face of a user – Para 45, 46);
subsequent to the reception of the indication of the set of controlling requirements corresponding to the subject person, capture, via the image-capturing component, an initial image in which the subject person is depicted (i.e. first user device captures an image – Fig. 2A “230”);
alter the initial image in accordance with the set of controlling requirements
corresponding to the subject person, thereby generating an altered image including a
controlled virtual appearance of the subject person (i.e. retrieving, based on the profile data, a synthesized face – Para 6); and
provide the altered image via one or more outputs of the first device (i.e. output image of the person with a synthesized face – Para 41,46; Fig. 2A “265, 270B”).
Joseph suggests subsequent to the reception of the indication of the set of controlling requirements corresponding to the subject person, capture, via the image-capturing component, an initial image in which the subject person is depicted because Joseph teaches the order in which the operations are described is not intended to be construed as a limitation, and any number of the described operations can be combined in any order and/or in parallel to implement the processes (Para 146).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at the time the invention was made to include a known step of subsequent to the reception of the indication of the set of controlling requirements corresponding to the subject person, capture, via the image-capturing component, an initial image in which the subject person is depicted with the device of Joseph to provide the advantage of maximizing privacy of a user’s appearance (Joseph, Para 46).
Claim 2, Joseph discloses the first device of claim 1, wherein the one or more outputs of the first device include a display (i.e. I/O device(s) include a display – Para 57), and the altered image including the controlled virtual appearance of the subject person is rendered on the display (i.e. output image of the person with a synthesized face – Para 46).
Claim 3, Joseph discloses the first device of claim 1, wherein the one or more outputs include a communication interface, and the first device transmits the altered image including the controlled virtual appearance of the subject person to a third device via the communication interface (i.e. The communication interface may perform or facilitate receipt and/or transmission wired or wireless communications using wired and/or wireless transceivers – Para 152; transmit the altered/modified image – Fig. 2A “260, 265”).
Claim 4, Joseph discloses the first device of claim 1, wherein the computer-executable instructions are further executable by the one or more processors to cause the first device to prevent the initial image of the subject person from being provided to any display and/or any other device (i.e. default settings can indicate that the imaging system is to have predetermined approved lists and/or block lists indicating when to replace the person's face with the corresponding synthesized face and/or when not to – Para 46).
Claim 5, Joseph discloses the first device of claim 1, wherein:
the computer-executable instructions cause the first device further to store the set of controlling requirements corresponding to the subject person in the one or more memories (i.e. store user profile in data store – Fig. 2A “290”; Para 69); and
based on the stored set of controlling requirements corresponding to the subject person, controlled virtual appearances of the subject person are the only virtual appearances of the subject person provided by the first device to any display and via any output of the first device (i.e. default settings can indicate that the imaging system is to have predetermined approved lists and/or block lists indicating when to replace the person's face with the corresponding synthesized face and/or when not to – Para 46).
Claim 6, Joseph discloses the first device of claim 1, wherein:
the initial image of the subject person is a video image of the subject person that changes in real-time (i.e. capture video – Para 37, 48); and
the altered video image including the controlled virtual appearance of the subject person and provided via the one or more outputs of the first device changes in real-time in accordance with the set of controlling requirements for the virtual appearances of the subject person (i.e. output image of the person with a synthesized face – Para 46, 70).
Claim 7, Joseph discloses the first device of claim 1, wherein the first device receives the indication of the set of controlling requirements for the virtual appearances of the subject person via the wireless transceiver and a broadcast transmission generated by the second device (i.e. second user device – Fig. 2A “220” – includes a transceiver – Fig. 2A “270B”; Para 79 – and can perform server functions – Fig. 2A “205” – to transmit a profile to a first device - Fig. 2A “210” – in system that can be used in a network based application – Para 63).
Claim 8, Joseph discloses the first device of claim 1, wherein the first device receives the indication of the set of controlling requirements for the virtual appearances of the subject person via the wireless transceiver and a point-to-point transmission generated by the second device (i.e. second user device – Fig. 2A “220” – includes a transceiver – Fig. 2A “270B”; Para 79 – and can perform server functions – Fig. 2A “205” – to transmit a profile to a first device - Fig. 2A “210”).
Claim 9, Joseph discloses the first device of claim 1, wherein the indication of the set of controlling requirements corresponding to the subject person is an encrypted indication (i.e. the functionality described herein may be provided within dedicated software modules or hardware modules configured for encoding and decoding – Para 170).
Claim 10, Joseph discloses the first device of claim 1, wherein the first device and the second device communicate via at least one of a peer-to-peer wireless protocol or a short-range wireless protocol (i.e. communicate via Wi-Fi or Bluetooth – Para 60, 152).
Claim 11, Joseph discloses the first device of claim 1, wherein at least a portion of the computer-executable instructions is included in a client application that is stored on and executing at the first device (i.e. the user device 210 includes an interactivity client application – Fig. 2 “280A”; Para 63); or at least a portion of the computer-executable instructions is included in an operating system of the first device (i.e. The software and/or firmware can include one or more instructions stored on a computer-readable storage medium and executable by one or more processors of the electronic device implementing the image capture and processing system 100 – Para 61).
Claim 14, Joseph discloses the first device of claim 1, wherein the first device is a smart glass device (i.e. glasses – Para 80), an augmented reality device (i.e. HMD – Para 80), a virtual reality device (i.e. HMD or VRD, virtual retinal display – Para 80), a digital image-capturing component (Fig. 1 “105A”), or a personal electronic device operated by a user other than the subject person (Fig. 2A “220”).
Claim 15, Joseph discloses the first device of claim 1, wherein the alteration of the initial image is performed by the first device exclusive of any human input (i.e. a profile may be created for the person by the imaging system – Para 46).
Claim 16, Joseph discloses the first device of claim 1, wherein the indication of the set of controlling requirements for the virtual appearances of the subject person is a code (i.e. trained ML models for generating a synthesized image – Para 40 - include autoencoders – Para 82; the functionality described herein may be provided within dedicated software modules or hardware modules configured for encoding and decoding – Para 170).
Claim 17, Joseph discloses the first device of claim 1, wherein the set of controlling requirements for the virtual appearances of the subject person includes a filter, and the alteration of the initial image includes an application of the filter (i.e. the synthesized face includes a synthesized head, and the image modifier 260 generates the modified image 265 at least in part by modifying the image 235 to use at least a portion of the synthesized head – Para 73).
Claim 18, Joseph discloses the first device of claim 1, wherein the set of controlling requirements for the virtual appearances of the subject person includes respective controlling requirements for depictions of at least one of: an overall virtual appearance of the subject person as a whole, a gender, a body shape, a hair style, a height, a bodily form, a modification to a first feature, a substitution for a second feature, or another aspect of the virtual appearances of the subject person (i.e. extract features and/or attributes from the various faces in the input images and combine the extracted features and/or attributes in new ways to generate the realistic synthesized faces - Para 40, 72).
Claim 19, Joseph discloses the first device of claim 1, wherein the first device is further configured to:
receive, via the wireless transceiver and from the second device or from a third device, an indication of a set of controlling requirements for virtual appearances of a second person in images (i.e. second user device – Fig. 2A “220” – includes a transceiver – Fig. 2A “270B”; Para 79 – and can perform server functions – Fig. 2A “205” – to transmit a profile to a first device - Fig. 2A “210” – in system that can be used in a network based application – Para 63).
The claim is similar in scope to claim 1. Therefore, similar rationale as applied in the rejection of claim 1 applies herein.
Claim 20, Joseph discloses the first device of claim 19, wherein the captured image in which the virtual appearance of the second person is depicted is the initial image in which the subject person is depicted, and the altered image includes the controlled virtual appearance of the subject person and the controlled virtual appearance of the second person (Fig. 2A “265”; the system can be used in a network based application – Para 63).
Claim 21, Joseph discloses the first device of claim 1, wherein the different conditions include two or more of: a presence of a specific image-capturing device, a presence of any image- capturing device, a date, a time, (i.e. In some cases, a new synthesized face can be re-generated for each person's profile periodically (e.g., every week, every day, every few hours, every few minutes) – Para 46), a specific physical location, a type of physical location, a specific virtual location (i.e. an approved list of locations in an interactive environment to show or not show the user’s true face – Para 45), a type of virtual location, an event (i.e. periodic or aperiodic re-generation of a new synthesized face based on activity in an immersive environment – Para 46), an event type, a user instruction or command (i.e. modify a synthesized face in accordance with a user profile setting – Para 46), or another type of condition detected by one or more sensors.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Binil Joseph, US 2023/0342487 A1 as applied to claim 1 above, and further in view of Edward Schurack et al., WO 2017/025485 A1.
Claim 22, Joseph discloses the first device of claim 1, wherein the set of controlling requirements for the virtual appearances of the subject person (Para 44-46).
Joseph fails to disclose wherein the set of controlling requirements for the virtual appearances of the subject person includes respective controlling requirements for depictions at least one of accessories or clothing worn by the subject person, which Schurack discloses (i.e. displaying a virtual meeting space and adapting any object including the clothing of a virtual character representing a user – p. 8, ll. 20-31; a user in the virtual meeting space may set a degree of variance according to their own preferences – p. 5, ll. 30-32; the degree of variance permits modified display of objects depending on the task or kind of meeting – p. 3, ll. 15-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at the time the invention was made to include Schurack’s known technique of setting respective controlling requirements for depictions at least one of accessories or clothing worn by the subject person to improve the similar method of Joseph because defining user preferences that set a degree of variance provides for adjustment of the appearance of a virtual character including the virtual character clothing, which provides a predictable outcome that one of ordinary skill would have expected to achieve with use of common user preference settings.
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.
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/CHANTE E HARRISON/Primary Examiner, Art Unit 2615