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 .
This office action is in response to application 18648961 filed on April 29, 2024.
Claims 1-20 are pending.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement dated April 29, 2024 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P 609, a copy of the PTOL-1449 initialed and dated by the examiner is attached to the office action.
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 1-12 of U.S. Patent No. 12001646B2 (hereinafter referred to as “the reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 under examination are anticipated by claims 1-12 of the reference patent (see the exemplary mapping of pending claim 1 and claim 1 of the reference patent below, similar mappings can be made to pending claims 2-20 and claims 2-12 of the reference patent).
Regarding claim 1, the reference patent recites:
A method performed by a computer configured to be communicable with a position detection device that includes a drawing surface and that, in operation, detects a position of an electronic pen on the drawing surface (A method performed by a computer configured to be communicable with a position detection device that includes a drawing surface and that, in operation, detects a position of an electronic pen on the drawing surface)(claim 1), the method comprising:
obtaining first correspondence information indicating a correspondence between a first coordinate system defined on the drawing surface and a second coordinate system defined on a display surface that is a three-dimensional object in a virtual reality space (rendering, in a virtual reality space, a first object … rendering, near the first object, a display surface that is a three-dimensional object … obtaining first correspondence information indicating a correspondence between a first coordinate system defined on the drawing surface and a second coordinate system defined on the display surface)(claim 1; the examiner notes the recited display surface is a three-dimensional object in a virtual reality space as it is rendered in a space (i.e., virtual reality) with a first object);
obtaining second correspondence information indicating a correspondence between the second coordinate system and a third coordinate system indicating the virtual reality space (obtaining second correspondence information indicating a correspondence between the second coordinate system and a third coordinate system indicating the virtual reality space)(claim 1);
converting the position of the electronic pen detected by the position detection device into a position in the third coordinate system based on the first correspondence information and the second correspondence information (converting the position of the electronic pen into a position in the third coordinate system based on the first correspondence information and the second correspondence information)(claim 1); and
rendering, in the virtual reality space, an object based on the position in the third coordinate system (rendering, on the display surface, a three-dimensional line that is a three-dimensional object generated based on the position of the electronic pen)(claim 1; the examiner notes a three-dimensional line is a rendered object).
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
Roberts et al. (US5237647) discloses a coordinate system defined in a drawing surface (i.e., tablet coordinate system), a coordinate system defined in a display surface that is three dimensional object in a virtual reality space (i.e., object coordinate system), a virtual reality coordinate system (i.e., virtual world coordinate system), and rendering an object (e.g., pen icon) in the virtual reality space based on pen position (e.g., column 7 lines 41-46, column 9 lines 56-63, Figure 1A, and Figure 1B).
Yeom et al. (US20160358380A1) discloses rending a drawing surface in virtual reality (e.g., [0060-0063] and Figure 5B).
Gribetz (US20180275781A1) discloses converting detected user input to render objects in virtual reality (e.g., [0035], [0119-0124], Figure 2A, and Figure 9).
Du et al. (US20160104313A1) discloses using coordinate systems (i.e., local and global) and transforming positions between the coordinate systems to render three dimensional objects (e.g., [0046-0057] and Figure 5).
Elber et al. (US20020033845A1) discloses positioning virtual objects with internal coordinate systems (e.g., [0116-0118] and Figure 8).
However, none of the prior art teaches “converting a position of an electronic pen detected by a position detection device into a position in a third coordinate system indicating a virtual reality space based on a correspondence between a first coordinate system defined on a drawing surface and a second coordinate system defined on a three-dimensional display surface in the virtual reality space and a correspondence between the second coordinate system and the third coordinate system” as recited in independent claims 1, 8, and 14. As such, independent claims 1, 8, and 14 along with dependent claims 2-7, 9-13, and 15-20 would be allowable if rewritten to overcome the double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yongjia Pan whose telephone number is (571)270-1177. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott Baderman can be reached at 571-272-3644. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YONGJIA PAN/Primary Examiner, Art Unit 2118
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