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 .
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 -20 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.
The limitations of claim 1:
[…]
generating a pointer linked to the storage address of the AR effect package in the decentralized server;
generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the pointer, wherein the smart contract assigns ownership of the decentralized digital asset to a creator of the AR effect package;
[…]
receiving a user request from a content creation application to access the AR effect package, wherein the user request comprises the pointer;
[…]
receiving another user request from a different content creation application to access the AR effect package, wherein the another user request comprises the pointer; and”
The examiner notes there is no support for the use of pointer as claimed in the above claim. Paragraph, 45, states, “TokenURI 111 works as a pointer that points to metadata 108 stored in server 110.” The examiner notes this does not support the scope of which pointer is used in the claim. Thus the usage of pointer is considered to be new subject matter.
The limitations of Claim 5:
storing, on the blockchain, an ownership change event including a wallet address of the creator, the wallet address of the user, and the pointer.
The examiner notes there is no support for pointer used in this way in the claim above is considered to be new subject matter as further explained in claim 1.
Claims 8, 12, 15 and 19 are similar in scope of 1 and 5 and thus is rejected under similar rationale as detailed in claims 1 and 5.
The dependent claims inherit the issues from the claims from which they depend as well.
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- 20 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.
Claim 1 recites the language, “The limitations of claim 1:
[…]
generating a pointer linked to the storage address of the AR effect package in the decentralized server;
generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the pointer, wherein the smart contract assigns ownership of the decentralized digital asset to a creator of the AR effect package;
[…]
receiving a user request from a content creation application to access the AR effect package, wherein the user request comprises the pointer;
[…]
receiving another user request from a different content creation application to access the AR effect package, wherein the another user request comprises the pointer; and”
The examiner notes it is not clear how “generating a pointer linked to the storage address of the AR effect package in the decentralized server” when a pointer itself has a well understood meaning. It is not clear how you could use a pointer in this way, as in, how would you be able to do this with a decentralized server? If storage address is storing to a is decentralized server, how are you able to use a pointer? The examiner notes for the sake of applying prior art, “a pointer” or “the pointer, will hereafter being interpreted as “a tokenURI” or “the tokenURI”
Claim 5 is indefinite under similar rationale as detailed above in claim 5.
Claim 8, 12, 15 and 20 are rejected under similar rationale as detailed above in claim 1 and 5.
The dependent claims inherit the issues from the claims from which they depend as well.
Specification
The amendment filed 04/22/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: In the abstract, the portion, “The implementations further include generating a pointer linked to the storage address and generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the pointer for storage on the blockchain and subsequent access by a content creation application.” Is new subject
Applicant is required to cancel the new matter in the reply to this Office Action.
The abstract of the disclosure is objected to because the abstract introduces new subject matter. The portion, “The implementations further include generating a pointer linked to the storage address and generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the pointer for storage on the blockchain and subsequent access by a content creation application.” Is new subject matter. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 101
Claims 15-20 are considered to be patent eligible under 35 USC § 101.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11989840. Although the claims at issue are not identical, they are not patentably distinct from each other because they’re broader in every way.
Instant Application
Patent No. 11989840 B2)
1. A method for managing augmented reality (AR) effects on a blockchain, comprising:
1. A method for managing augmented reality (AR) effects on a blockchain, comprising:
receiving a request to convert an AR effect into a decentralized digital asset;
receiving a request to convert an AR effect into a decentralized digital asset;
uploading an AR effect package comprising execution files of the AR effect to a decentralized server connected to a peer-to-peer network;
uploading an AR effect package comprising execution files of the AR effect to a decentralized server connected to a peer-to-peer network;
generating a storage address of the AR effect package in the decentralized server;
generating metadata associated with the AR effect package, wherein the metadata indicates attributes of the AR effect and a storage address of the AR effect package in the decentralized server;
generating a pointer linked to the storage address of the AR effect package in the decentralized server;
generating metadata associated with the AR effect package, wherein the metadata indicates attributes of the AR effect and a storage address of the AR effect package in the decentralized server;generating a token universal resource identifier (tokenURI) linked to the metadata;
generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the pointer, wherein the smart contract assigns ownership of the decentralized digital asset to a creator of the AR effect package;
generating, using a smart contract, the decentralized digital asset corresponding to the AR effect package and the tokenURI, wherein the smart contract assigns ownership of the decentralized digital asset to a creator of the AR effect package;
storing, on the blockchain, a creation event including generation information of the decentralized digital asset;
storing, on the blockchain, a creation event including generation information of the decentralized digital asset;
receiving a user request from a content creation application to access the AR effect package, wherein the user request comprises the pointer;
receiving a user request from a content creation application to access the AR effect package, wherein the user request comprises the tokenURI
enabling, using the smart contract, the access to the AR effect package by the content creation application;
enabling, using the smart contract, the access to the AR effect package by the content creation application;
receiving another user request from a different content creation application to access the AR effect package, wherein the another user request comprises the pointer; and
receiving another user request from a different content creation application to access the AR effect package, wherein the another user request comprises the tokenURI; and
enabling, using the smart contract, the access to the AR effect package to the different content creation application.
enabling, using the smart contract, the access to the AR effect package to the different content creation application.
Instant Application
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J CRADDOCK whose telephone number is (571)270-7502. The examiner can normally be reached Monday - Friday 10:00 AM - 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devona E Faulk can be reached at 571-272-7515. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J CRADDOCK/ Primary Examiner, Art Unit 2618