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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 11,721,114. This is a statutory double patenting rejection.
It is noted that although the instant and patented independent claims 1, 17, and 19 are not identical, the difference is that instant independent claims 1, 17 and 19 further recite “wherein adding the virtual differentiator feature enables at least one of” the applications (A)-(E), which when interpreted under the broadest reasonable interpretation, does not require that “adding the virtual differentiator feature” is used for one or more of the applications (A)-(E), i.e. “enables at least one of” effectively recites an intended, but not required use of the differentiator feature. Therefore, the scope of the instant and patented independent claims 1, 17, and 19 appears to be identical, and by extension the scope of the instant and patented depending claims, which do recite identical limitations, also appears to be identical.
It is noted that parent application 18/213,846 initially presented the same claim set as the instant claims, and Applicant was advised that this rejection could be overcome by amending the same instant independent claims to instead require “wherein added virtual differentiator feature is used to perform at least one of:” the applications (A)-(E), thereby clearly requiring the use of the feature for one of the applications. In the ‘846 parent application, Applicant amended the independent claims as suggested resulting in U.S. Patent No. 11,948,376, indicating that the same amendment in the instant application would overcome the statutory double patenting rejection with respect to the ‘114 patented claims, but result in a different statutory double patenting rejection with the ‘376 patented claims. It is noted that Applicant could instead amend the independent claims to require performing two or more of the applications (A)-(E), or two or more of the operations (I)-(IV), or Applicant’s representative is welcome to schedule an interview with the examiner to discuss alternative amendments which may avoid all statutory double patenting rejections.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,514,646. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented independent claims 1, 17, and 19 recite the same steps (a), (b), and the adding a virtual differentiator feature of the instant independent claims 1, 17, and 19, where the added virtual differentiator feature is used in the patented independent claims for distinguishing between portions of 3D representations that are similar or identical, i.e. the instant claim’s enabled applications of (A), (B), and (C), indicating that the instant independent claims 1, 17, and 19 recite scope including the scope of the patented independent claims 1, 17, and 19. Further, the instant and patented depending claims recite identical additional limitations, with corresponding identical numbering except for depending claims 15 and 16 having a reversed order, indicating the instant depending claims recite scope including the scope of the corresponding patented depending claim.
Claims 1-9, 16, 17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 15 of U.S. Patent No. 11,127,206. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented independent claims 1, 10, and 15 recite the same steps (a), (b), and the adding a virtual differentiator feature of the instant independent claims 1, 17, and 19, respectively, where the added virtual differentiator feature is used in the patented independent claims for distinguishing between portions of 3D representations that are similar or identical, i.e. the instant claim’s enabled applications of (A), (B), and (C), indicating that the instant independent claims 1, 17, and 19 recite scope including the scope of the patented independent claims 1, 10, and 15. Further, the instant and patented depending claims 2-9 recite identical additional limitations, and instant claim 16 recites limitations recited in patented claim 2, indicating the instant depending claims 2-9 and 16 recite scope including the scope of the corresponding patented depending claim.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,948,376. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented independent claims 1, 17, and 19 recite the same steps (a), (b), adding a virtual differentiator feature, and using the added virtual differentiator feature to perform at least one of the applications (A)-(E), i.e. the enabled applications of (A)-(E) of the instant independent claims 1, 17, and 19, such that the only distinction is the patented claims requiring performing at least one of the applications and the instant claims enabling at least one of the applications, indicating that the instant independent claims 1, 17, and 19 recite scope including the scope of the patented independent claims 1, 17, and 19. Further, the instant and patented depending claims recite identical additional limitations, indicating the instant depending claims recite scope including the scope of the corresponding patented depending claim.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Applicant’s independent claims include several known features. “High-Quality
Streamable Free-Viewpoint Video” by Alvaro Collet, et al., describes claimed steps (a),
e.g. sections 4, 5, 5.1, 5.2, (b), e.g. sections 5.3, 6, which achieve the claimed size
reduction, e.g. section 9. The independent claims further require adding a virtual
differentiator feature into a portion of an object in the volumetric dataset in order to
improve correctness of tracking the portions. U.S. Patent Application Publication
2016/0293218 A1 discloses a system for tracking between identical objects in a
captured scene, but relies on physical tags already present on the object(s) rather than
adding feature(s) to the captured data. The cited prior art does not otherwise teach or
suggest this feature, such that the independent claims as a whole are not obvious in
view of the cited prior art.
Applicant is advised that amending the independent claims to avoid statutory double patenting rejections, either as suggested or otherwise sufficiently differentiating the instant independent claims’ scope from the patented claims, and filing terminal disclaimers with respect to the 4 issued patents, will place the application into condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT BADER whose telephone number is (571)270-3335. The examiner can normally be reached 11-7 m-f.
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, Tammy Goddard can be reached at 571-272-7773. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT BADER/Primary Examiner, Art Unit 2611