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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 5, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 30, 2026 and February 17, 2026 has been considered by the examiner.
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.
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Claims 2-4, 10-12 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,036,284 in view of Lyons et al (WO 2018/106675).
Regarding claims 2, 10 and 18 Lyons et al is silent as to: The method of claim 1, wherein the image 210 comprises a marker displayed by the touch screen display of the second device 255, wherein relative 3D position and orientation of the second device 255 to the first device 160-1/184/270 is determined based on the marker. With respect to claim 1 U.S. Patent No. 11,036,284 sets forth: obtaining an image of a physical environment using the image sensor, the image comprising a marker displayed on a second display of a second device; determining a relative position and orientation of the second device to the first device based on the marker; and generating a control signal based on the relative position and orientation of the second device.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to provide Lyons et al with obtaining an image of a physical environment using the image sensor, the image comprising a marker displayed on a second display of a second device; determining a relative position and orientation of the second device to the first device based on the marker; and generating a control signal based on the relative position and orientation of the second device as set forth in U.S. Patent No. 11,036,284. The rationale is as follows: one of ordinary skill in the art at the time the invention was effectively filed would have been motivated to obtain an image of a physical environment using the image sensor, the image comprising a marker displayed on a second display of a second device; determining a relative position and orientation of the second device to the first device based on the marker; and generating a control signal based on the relative position and orientation of the second device so as to provide a simplified way of tracking a device.
Claim Rejections - 35 USC § 112
Claim 21 is 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. Specifically in line 2 of claim 21, “the content” is indefinite because it lacks antecedent basis.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-9, 13-17 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lyons et al (WO 2018/106675).
As per claim 1 Lyons et al discloses: A method comprising:
at a first device 160-1/184/270 comprising a processor 172, a computer-readable storage medium 176 {figure 1}, an image sensor 175 { [0036] In an exemplary embodiment, sensor 175 may be at least an audio sensor such as a microphone, a visual sensor such as a camera (video or picture) . . . }, and a first display:
obtaining an image 210 of a physical environment 250 using the image sensor 175, the physical environment 250 comprising a second device 255 different than the first device 160-1/184/270, the second device 255 having a touch screen display;
identifying a location of the touch screen display relative to the first device 160-1/184/270 based on the image 210 {figure 2A};
displaying, on the first display, a view of an environment based on the image 210, the view comprising a representation 215 accurately representing the second device 255 with a user interface object positioned to overlay at least a portion of the touch screen display { [0052] According to the present disclosure, the physical device 255 does not need to match the virtual devices 215 and 220; only the interface of the physical device 255 matches the interface of a virtual device (215 or 220) when the physical device 255 is coupled to the respective virtual device (215 or 220). For example, the physical device 255 may be a tablet, the first virtual device 215 may be a remote control and the second virtual device 220 may be a smart phone. In this example, when the physical device 255 is coupled to the first virtual device 215, the user interface of the physical device 255 matches the buttons of the remote control 215. And when the physical device 255 is coupled to the second virtual device 220, the user interface of the physical device 255 matches the user interface of the smart phone 220.};
obtaining data indicative of a touch event on the second device 255 corresponding to the location of the user interface object {figure 2A}; and initiating a user interface interaction based on the touch event on the second device 255 {[0049] As a result, the user is able to interact with the virtual world through the physical device, experiencing a sense of touch and utilizing the physical device as a user interface. As the user moves to select a second virtual device, the VR system dynamically and automatically warps or transforms the VR scene to better align the physical device with the second virtual device and couples the physical device with the second virtual device. The user is then allowed to interact with the second virtual device through the physical device.}.
As per claims 5 and 13 Lyons et al discloses: The method of claim 1, wherein the environment is a computer-generated reality (CGR) environment {[0050] FIG. 2A also illustrates a virtual space 210 representing a VR scene displayed by HMD 270 including two virtual devices (a first virtual device 215 and a second virtual device 220) and a virtual arm/hand 225 corresponding to the user's arm 265 in the physical space.}
As per claims 6 and 14 Lyons et al discloses: The method of claim 5, wherein the interaction corresponds to an interaction with the CGR environment. {[0050] FIG. 2A also illustrates a virtual space 210 representing a VR scene displayed by HMD 270 including two virtual devices (a first virtual device 215 and a second virtual device 220) and a virtual arm/hand 225 corresponding to the user's arm 265 in the physical space.}
As per claims 7 and 15 Lyons et al discloses: The method of claim 1, wherein obtaining the data indicative of the touch event comprises the first device 160-1/184/270 receiving the data from the second device 255, the second device 255 sending the data based on detecting a touch screen input {figure 1 & [0052] In this example, when the physical device 255 is coupled to the first virtual device 215, the user interface of the physical device 255 matches the buttons of the remote control 215.}..
As per claims 8 and 16 Lyons et al discloses: The method of claim 1, wherein the user interface object comprises a button {[0052] In this example, when the physical device 255 is coupled to the first virtual device 215, the user interface of the physical device 255 matches the buttons of the remote control 215.}.
As per claim 9 Lyons et al discloses: A first device 160-1/184/270 comprising:
a non-transitory computer-readable storage medium 176 {figure 1}; an image sensor 175; and
one or more processors 172 coupled to the non-transitory computer-readable storage medium 176, wherein the non-transitory computer-readable storage medium 176 comprises program instructions that, when executed on the one or more processors 172, cause the first device 160-1/184/270 to perform operations comprising:
obtaining an image 210 of a physical environment 250 using the image sensor 175 { [0036] In an exemplary embodiment, sensor 175 may be at least an audio sensor such as a microphone, a visual sensor such as a camera (video or picture) . . . }, the physical environment 250 comprising a second device 255 different than the first device 160-1/184/270, the second device 255 having a touch screen display;
identifying a location of the touch screen display relative to the first device 160-1/184/270 based on the image 210 {figure 2A};
displaying, on the first display, a view of an environment based on the image 210, the view comprising a representation accurately representing the second device 255 with a user interface object positioned at a location corresponding to overlay at least a portion of the location of the touch screen display { [0052] According to the present disclosure, the physical device 255 does not need to match the virtual devices 215 and 220; only the interface of the physical device 255 matches the interface of a virtual device (215 or 220) when the physical device 255 is coupled to the respective virtual device (215 or 220). For example, the physical device 255 may be a tablet, the first virtual device 215 may be a remote control and the second virtual device 220 may be a smart phone. In this example, when the physical device 255 is coupled to the first virtual device 215, the user interface of the physical device 255 matches the buttons of the remote control 215. And when the physical device 255 is coupled to the second virtual device 220, the user interface of the physical device 255 matches the user interface of the smart phone 220.};
obtaining data indicative of a touch event on the second device 255 corresponding to the location of the user interface object {figure 2A}; and
initiating a user interface interaction associated on the first device 160-1/184/270 based on the touch event on the second device 255 {[0049] As a result, the user is able to interact with the virtual world through the physical device, experiencing a sense of touch and utilizing the physical device as a user interface. As the user moves to select a second virtual device, the VR system dynamically and automatically warps or transforms the VR scene to better align the physical device with the second virtual device and couples the physical device with the second virtual device. The user is then allowed to interact with the second virtual device through the physical device.}.
As per claim 17 Lyons et al discloses: A non-transitory computer-readable storage medium 176 {figure 1} storing program instructions executable via one or more processors 172 of the first device 160-1/184/270 having an image sensor 175 to perform operations comprising:
obtaining an image 210 of a physical environment 250 using the image sensor 175 { [0036] In an exemplary embodiment, sensor 175 may be at least an audio sensor such as a microphone, a visual sensor such as a camera (video or picture) . . . }, the physical environment 250 comprising a second device 255 different than the first device 160-1/184/270, the second device 255 having a touch screen display;
identifying a location of the touch screen display relative to the first device 160-1/184/270 based on the image 210 {figure 2A};
displaying, on the first display, a view of an environment based on the image 210, the view comprising a representation accurately representing the second device 255 with a user interface object positioned to overlay at least a portion of the touch screen display { [0036] In an exemplary embodiment, sensor 175 may be at least an audio sensor such as a microphone, a visual sensor such as a camera (video or picture) . . . };
obtaining data indicative of a touch event on the second device 255 corresponding to the location of the user interface object {figure 2A}; and initiating a user interface interaction based on the touch event on the second device 255 {[0049] As a result, the user is able to interact with the virtual world through the physical device, experiencing a sense of touch and utilizing the physical device as a user interface. As the user moves to select a second virtual device, the VR system dynamically and automatically warps or transforms the VR scene to better align the physical device with the second virtual device and couples the physical device with the second virtual device. The user is then allowed to interact with the second virtual device through the physical device.}.
As per claim 21 Lyons et al discloses, insofar as the claim is definite and understood: The method of claim 1, wherein the location of the touch screen display relative to the first device 160-1/184/270 is determined based on the content displayed on the touch screen display {figure 2A}.
As per claim 22 Lyons et al discloses: The method of claim 1, wherein the representation of the second device is the same as an appearance of the second device.
As per claim 23 Lyons et al discloses: The method of claim 1, wherein the representation of the second device has a same size, shape, and pose as the second device {figure 2A}.
As per claim 24 Lyons et al discloses: The method of claim 1, wherein the representation of the second device is based on an image of the second device {figure 2A}.
Response to Arguments
Applicant's arguments filed April 22, 2026 have been fully considered but they are not persuasive. Applicant asserts in the fourth full paragraph on page 1 the following:
As discussed during the interview, Lyons discloses displaying a virtual FIG. 2A scene that is warped SO that a physical device aligns with a virtual device and that the physical device interface "matches" the virtual device interface. This is not the same as overlaying the UI of a device. Nor does it disclose a view comprising "a representation accurately representing the second device with a user interface object positioned to overlay at least a portion of the touch screen display." Accordingly, withdrawal of the rejections of all claims is respectfully requested.
Lyons shows in figure 2A the second device 255 and the representation 215. Displayed is a representation 215 accurately representing the second device 255. Applicant also asserts that the device 255 and the representation 215 are “not the same as overlaying the UI of a device”. Not only is the representation mapped to 215 and the second device is mapped to 255, as outlined supra, [0052], also mapped supra, clearly discloses “the user interface of the physical device 255 matches the buttons of the remote control 215.” Therefore, contrary to applicant’s assertion Lyons anticipates the claimed invention, as mapped and outlined supra.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID D DAVIS whose telephone number is (571)272-7572. The examiner can normally be reached Monday - Friday, 8 a.m. - 4 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ke Xiao can be reached at 571-272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID D DAVIS/Primary Examiner, Art Unit 2627
DDD
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