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 .
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 1-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 12073618. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
The table below shows the correspondence between claim 1 of the ‘704 application and claim 1 of the ‘817 patent.
‘704 Application
‘618 Patent
(Claim 1 of the ‘704 application)
A cloud-based computer system comprising:
a cloud-based computer processor programmed with machine-readable instructions, which when executed by the cloud-based computer processor, cause the cloud-based computer processor to:
store a catalog of products and product image information, comprising an indication of whether a product is AR-enabled;
generate a web-based user interface display comprising display elements to enable user selection of a set of products from a first computer, an indication of whether individual products of the set of products are AR-enabled, and display options for individual selected products;
generate a display of a computer readable code configured to enable display of the set of AR-enabled images of the products in the AR-enabled list to display a set of user- selected AR-enabled images in a single view via the AR-enabled list;
and generate, upon scanning of the computer readable code by the mobile user device, a user interface display, on a display associated with the mobile user device, comprising the AR-enabled images of the products on the AR-enabled list and display options for interacting with the AR-enabled images via the mobile user device;
and a rendering engine configured to render the AR-enabled images of the products.
(Claim 1 of the ‘618 patent)
A cloud-based computer system…
a cloud-based computer processor programmed with machine-readable instructions, which when executed by the cloud-based computer processor, cause the cloud-based computer processor to:
store a catalog of products and product image information, comprising an indication of whether the product is AR-enabled;
generate a web-based user interface display comprising a display of a set of products and an indication of whether individual ones of the products are AR-enabled;
generate a display of a computer readable code configured to enable display of the set of AR-enabled images of the products in the AR-enabled list to display a set of user-selected AR-enabled images in a single view via the AR-enabled list;
and generate, upon scanning of the computer readable code by the mobile user device, a user interface display, on a display associated with the mobile user device, comprising the AR-enabled images of the products on the AR-enabled list and display options for interacting with the AR-enabled images via the mobile user device;
and a rendering engine configured to render the AR-enabled images of the products.
Claims 2-32 of the ‘704 application correspond to claims 2-32 of the ‘618 patent.
Claims 33-42 of the ‘704 application correspond to claims 1-9 of the ‘618 patent.
Claims 1-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11734929. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
The table below shows the correspondence between claim 1 of the ‘704 application and claim 1 of the ‘817 patent.
‘704 Application
‘929 Patent
(Claim 1 of the ‘704 application)
A cloud-based computer system comprising:
a cloud-based computer processor programmed with machine-readable instructions, which when executed by the cloud-based computer processor, cause the cloud-based computer processor to:
store a catalog of products and product image information, comprising an indication of whether a product is AR-enabled;
generate a web-based user interface display comprising display elements to enable user selection of a set of products from a first computer, an indication of whether individual products of the set of products are AR-enabled, and display options for individual selected products;
generate a display of a computer readable code configured to enable display of the set of AR-enabled images of the products in the AR-enabled list
to display a set of user- selected AR-enabled images in a single view via the AR-enabled list;
and generate, upon scanning of the computer readable code by the mobile user device, a user interface display, on a display associated with the mobile user device, comprising the AR-enabled images of the products on the AR-enabled list and display options for interacting with the AR-enabled images via the mobile user device;
and a rendering engine configured to render the AR-enabled images of the products.
(Claim 1 of the ‘929 patent)
A cloud-based computer system…
a cloud-based computer processor programmed with machine-readable instructions, which when executed by the cloud-based computer processor, cause the cloud-based computer processor to:
store a catalog of products and product image information, comprising an indication of whether the product is AR enabled; store a 3D image definition of the products;
generate a web-based user interface display comprising: i) display of a set of products and an indication of whether individual ones of the products are AR-enabled; ii) display elements to enable user selection of individual ones of the products from the first user computer; and iii) display options, for individual ones of the selected products which are AR-enabled, comprising: x) a view in AR room icon to display an AR image of the product in an AR-generated image of a physical environment of the user; or y) store the product to a user-specific AR-enabled list in the cloud-based computer system;
generate a display of a computer readable code configured to enable display of the AR-enabled images of the products in the AR-enabled list;
(Claim 16 of the ‘929 patent)
the AR list element is configured to enable the user to select to see a single page with the user's selection of products for which the user has selected to add to the AR list
(Claim 1 of the ‘929 patent)
generate, upon scanning of the computer readable code by the mobile user device, a user interface display, on a display associated with the mobile user device, comprising the AR-enabled images of the products on the user-specific AR-enabled list and display options for interacting with the AR-enabled images via the mobile user device;
and a rendering engine configured to render the AR-enabled images of products in real-time based the 3D image definition of the products.
Claims 2-32 of the ‘704 application correspond to claims 2-15,8-32 and 16-17 of the ‘929 patent respectively.
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 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) 33-35, 37, 38, 40 and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levine (“How to Use IKEA Place on iPhone or iPad” URL: https://www.wikihow.tech/Use-IKEA-Place-on-iPhone-or-iPad) in view of Anelio et al. (PGPUB Document No. US 2020/0050857) in view of Kawakita et al. (PGPUB Document No. US 2018/0314312).
Regarding claim 33, Levine teaches a method for enabling a user to access, via a mobile device (iPhone (Levine: para 1)), a set of images of a list of Augmented Reality (AR) enabled products and associated with a computer readable code, the mobile device comprising a processor programmed with computer instructions for (the Examiner submits that the iPhone (or any mobile device) disclosed by Levine in the first paragraph requires a processor programmed with computer instructions, as presently claimed):
Receiving from the cloud-based computer a transmission of the set of images of the AR- enabled products on the list (list of furniture products the use can search using the IKEA Place mobile app (Levine: steps 6-8). Selected objects are displayed in AR (Levine: steps 8-13));
Generating a user interface display, on a display associated with the mobile device, comprising the AR-enabled images of the products on the AR-enabled list and display options for interacting with the AR-enabled images via the mobile user device (the IKEA Place app presents GUI comprising display elements such as a list of user selected images of furniture, wherein the user is able to select/interact (see highlighted furniture shown in steps 8 and 14 of Levine));
And a rendering engine configured to render the AR-enabled images of the products (displaying the selected furniture as shown in steps 9-12 of Levine).
However, Levine does not expressly teach but Anelio teaches,
The AR enabled products stored on a cloud-based computer system (Anelio teaches the concept of providing AR experiences through a web application (Anelio: Abstract, 0058). Applying the teachings of Anelio results in each screen of the IKEA Place a web application with data stored on a server computer of IKEA).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the IKEA Place app such as to be implemented as a web application as suggested by Anelio, because this increases the applications accessibility.
Further, the combined teachings above do not expressly teach but Kawakita teaches scanning the computer readable code by the mobile device (scanning a QR code executes an AR application (Kawakita: 0026)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the combined teachings above such as to be imitated by scanning a QR code (taught by Kawakita), because this enables an added level of flexibility in launching an application.
Regarding claim 34, the combined teachings above teach the method of claim 33, wherein the user interface display further comprises display elements configured to enable user selection of AR-enabled images of products and non-AR enabled images of products (refer to products listed in step 8 of Levine).
However, the combined teachings as applied above does not expressly teach the display of non-R products. At the time of the invention, there had been a recognized problem or need in the art to effectively present retail products to the user. There were a finite number of identified and predictable potential solutions to the recognized need or problem were,
1) List AR capable products only
2) List non-AR products only
3) List both AR capable and non-AR products
One of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success since all solutions provide the ability for displaying any combination of products (AR and non-AR) to the user effectively utilizing the teachings of Levine and Anelio.
The combined teachings as applied enables user selection of the AR-enabled images and non AR-enabled images of products, wherein the instructions when executed by the processor, cause the system to determine, for a selected product, whether an AR-enabled image of the product is stored and for such products, display an option to view an AR-enabled view of the product in the room (viewing the product in AR (Levine: step 9-12)).
Therefore, the claimed subject matter would have been obvious to a person living ordinary skill in the art at the tie the invention was made.
Regarding claim 35, the combined teachings above teach the method of claim 35, further comprising: responsive to receiving a determination that an AR-enabled image of the product is stored and for such products, display an option to view an AR-enabled view of the product in the room (viewing the product in AR (Levine: step 9-12)).
Regarding claim 37, the combined teachings above teach the method of claim 33, wherein the user-interface display further comprising at least a first webpage of product images, comprising a first icon that indicates the product images for which an AR-enabled image is available (see images shown in steps 8 and 14 of Levine) and a second icon that that enables users to save a list of AR-enabled images of products (clicking on the heart icon saves user selected products in a favorites list (Levine: step 8)).
However, Levine does not expressly teach but Anelio teaches applying the AR app to a first and second webpage (Anelio teaches the concept of providing AR experiences through a web application (Anelio: Abstract, 0058). Applying the teachings of Anelio results in each screen of the IKEA Place app being displayed in a plurality of webpages).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the IKEA Place app such as to be implemented as a web application as suggested by Anelio, because this increases the applications accessibility.
Regarding claim 38, the combined teachings above teach the method of claim 37, further comprising: responsive to receiving a user selection of the second icon, displaying the second webpage on the mobile device (displaying the favorites lists (Levine: step 8) and display in a room an AR-enabled view of one or more selected products from the list of AR-enabled images on the second webpage (repeating the steps disclosed by Levine for products within the favorites lists).
Regarding claim 40, the combined teachings above teach the method of claim 33, further comprising: generating a computer readable code, which, when scanned by a second mobile device, displays the AR-enabled list on a display of the second mobile device (scanning a QR code as taught by Kawakita (Kawakita: 0026), wherein the Examiner submits any number of first, second or third mobile device is able to scan said code).
Regarding claim 41, the combined teachings above teach the method of claim 33, wherein the user interface display comprising: i) a product display area (see products displayed in steps 7 and 8 if Levine); ii) an add to AR List element to enable a user to select the displayed product for inclusion in the user's saved AR list (adding products in the favorites lists (Levine: step 8)); iii) a display AR list element which enables a user to select to see a single page with the user's selection of AR-enabled images of products for which the user has selected to add to the user's saved AR list (viewing products in the favorites lists (Levine: step 8)); and iv) a view in home element that enables the user to select to display an AR-enabled view of the selected product in a room in which the user is located at the time (selecting any of the products in the favorites list and viewing the selected product in AR view as shown in steps 10-12 of Levine).
Claim(s) 36 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levine in view of Anelio in view of Kawakita as applied to the claim(s) above, and further in view of Higgins (“How Would That Couch Look at Home? Check Your Phone”, URL: https://www.nytimes.com/2017/10/03/style/apps-for-decorating-rooms.html).
Regarding claim 36, the combined teachings above do not expressly teach but Higgins teaches the method of claim 33, further comprising: responsive to receiving a determination that, for a selected product, whether an AR- enabled image of the product is stored and for products for which there is no AR-enabled image of the product stored, prevent display of an option to view an AR-enabled view of the product in a room (the Houzz app indicates AR availability using an icon that reads “View in My Room” (Higgins: screenshot for Houzz).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the combined teachings above such as to indicate AR availability as done by the Houzz app disclosed by Higgins, because this aid the user in knowing AR availability for products.
Regarding claim 39, the combined teachings above do not expressly teach but Higgins teaches the method of claim 33, further comprising: responsive to receiving information detailing that a selected product has a corresponding AR-enabled image, generating a "view in AR room" display option (the Houzz app indicates AR availability using an icon that reads “View in My Room” (Higgins: screenshot for Houzz).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the combined teachings above such as to indicate AR availability as done by the Houzz app disclosed by Higgins, because this aid the user in knowing AR availability for products.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levine in view of Anelio in view of Kawakita as applied to the claim(s) above, and further in view of Higgins in view of Roomle (“Roomle: Plan, Furnish, Configure and Buy”, URL: https://www.youtube.com/watch?v=n_HdmyPZBaM).
Regarding claim 42, the combined teachings above teach the method of claim 33, wherein the user interface display further comprising one or more elements: an add to cart element to select a product from the user's saved AR list for purchase (refer to the “Add to Cart” button in the Houzz mobile app (Higgins: screenshot for Houzz)); a share element to enable the user to share the product image with others from the web-based user interface display page (refer to the share icon in the top right of the Houzz mobile app (Higgins: screenshot for Houzz)).;
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the combined teachings above such as to add further functionalities such as those suggested the Houzz app disclosed by Higgins, because this improves the user’s shopping experience.
Further, the combined teachings as applied above does not expressly teach but Roomle teaches an option to select to add 3D models of one or more products from the user's saved AR list to a virtual room planner (Roomle demonstrates the concept of adding a plurality of products to a custom plan (see video demonstrating Roomle). Therefore, applying the teachings of Roomle to the combined teachings above enables adding the products in the favorites list of the combined teachings above to the custom plan of Roomle).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of an ordinary skill in the art to modify the combined teachings above such as to enable the user to set custom plans as taught by Roomle, because this enables an added level of user customization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H Chu whose telephone number is (571)272-8079. The examiner can normally be reached M-F: 9:30 - 1:30pm, 3:30-8:30pm.
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, Daniel F Hajnik can be reached at (571) 272-7642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID H CHU/Primary Examiner, Art Unit 2616