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 .
DETAILED ACTION
This office action is in response to continuation application filed in which claims 1-19 of the instant application are pending and ready for examination.
Claim Objections
Claims 15, 18, and 19 are objected to because they should all depend from claim 14, not claim 13. Otherwise, there will be issues with antecedent bases in the aforementioned claims being objected to.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5 and 7-19 are rejected on the ground of nonstatutory double patenting over claims 1-14 of U.S. Patent No. 12,100,081. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-14 of U.S. Patent No. 12,100,081, either singularly or in combination, contain each and every element and/or render each and every element of claims 1-5 and 7-19 of the instant application obvious. The claims of the instant application therefore are not patently distinct from the issued patent claims and as such are unpatentable over obvious-type double patenting.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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); and 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.
Claim 6 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of U.S. Patent Number 12,100,081. This is a statutory double patenting rejection.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 7, 9, 10, 13, 14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osman (US 2019/0080519).
As to claim 1, Osman teaches a device comprising:
at least one computer storage that is not a transitory signal and that comprises instructions executable by at least one processor to execute A, or B, or both A and B ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; just process A is being addressed),
wherein A comprises: receive at least one image of a person viewing a display; input the image to a machine learning (ML) model; receive from the ML model first information regarding customization of a virtual being in a metaverse; and present on the display the virtual being with a customized appearance altered from an original appearance from original game software according to the first information from the ML model ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8);
and wherein B comprises: receive at least one recording of speech of the person; input the recording to the ML model; responsive to inputting the recording to the ML model, receive from the ML model second information regarding customization of the virtual being; and present the virtual being with a customized voice altered from an original voice from the original game software according to the second information from the ML model (process B is not being addressed).
As to claim 13, Osman teaches a method, comprising:
receiving at least one image of a real world person viewing a virtual person on a display; and customizing an appearance of the virtual person being presented on the display according to the at least one image to render an altered appearance of the virtual person, the altered appearance being determined at least in part from an original appearance from original game software ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
As to claim 9, the aforementioned claim is rejected similarly as claim 1.
As to claim 4, Osman teaches a device comprising:
at least one computer storage that is not a transitory signal and that comprises instructions executable by at least one processor to execute A, or B, or both A and B ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; just process A is being addressed),
wherein A comprises: receive at least one image of a person viewing a display; input the image to a machine learning (ML) model; receive from the ML model first information regarding customization of a virtual being in a metaverse; and present on the display the virtual being with a customized appearance altered from an original appearance from original game software according to the first information from the ML model ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8);
and wherein B comprises: receive at least one recording of speech of the person; input the recording to the ML model; responsive to inputting the recording to the ML model, receive from the ML model second information regarding customization of the virtual being; and present the virtual being with a customized voice altered from an original voice from the original game software according to the second information from the ML model (process B is not being addressed),
wherein the instructions are executable to execute A ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
As to claims 2 and 10, Osman further teaches wherein the virtual being is a virtual human ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
As to claim 7, Osman further teaches the processor ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]).
As to claims 16 and 17, Osman further teaches presenting on the display the virtual being with the customized appearance at least in part by providing the information regarding customization to a game engine of the original game software ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
As to claim 14, Osman further teaches accessing at least one image of a person; inputting the image to a machine learning (ML) model; receiving, from the ML model, first information regarding customization of a virtual being in a metaverse; presenting, on a display, the virtual being with a customized appearance altered from an original appearance from original game software according to the first information from the ML model ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
As to claim 18, Osman further teaches providing the first information regarding customization to a game engine of the original game software to present on the display the altered appearance ([0009]-[0010], [0022], [0033]-[0035], [0072], [0086]-[0090], [0109]-[0110], [0117]-[0146], and [0161]-[0170]; also see FIGs. 1A-1B, 2A-2I, 7A-7B, and 8).
Claim 5 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu (US 2023/0035306).
As to claim 5, Liu teaches a device comprising: at least one computer storage that is not a transitory signal and that comprises instructions executable by at least one processor to execute A, or B, or both A and B ([0052]-[0070], [0266], and [0358]; just process B is being addressed),
wherein A comprises: receive at least one image of a person viewing a display; input the image to a machine learning (ML) model; receive from the ML model first information regarding customization of a virtual being in a metaverse; and present on the display the virtual being with a customized appearance altered from an original appearance from original game software according to the first information from the ML model (process A is not being addressed);
and wherein B comprises: receive at least one recording of speech of the person; input the recording to the ML model; responsive to inputting the recording to the ML model, receive from the ML model second information regarding customization of the virtual being; and present the virtual being with a customized voice altered from an original voice from the original game software according to the second information from the ML model, wherein the instructions are executable to execute B ([0052]-[0070], [0266], and [0358]; also see FIGs. 2A-2B and 3).
Claim Rejections - 35 USC § 103
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.
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Osman in view of Zalewski (US 2008/0215973).
As to claims 3 and 11, Osman does not teach wherein the virtual being is a virtual non-human animal.
However, Zalewski teaches wherein a virtual being is a virtual non-human animal ([0033]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Osman’s system with Zalewski’s system to show wherein the virtual being is a virtual non-human animal in order to provide different users each with unique avatars so that they can readily identify each other (Zalewski; [0033]).
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the above statutory double patenting rejection is overcome.
Claims 8, 12, 15, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the above nonstatutory double patenting rejections are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHIHAN ZHOU whose telephone number is (571)270-7284. The examiner can normally be reached Mondays-Fridays 8:30am-5pm.
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, Christopher Kelley can be reached at 571-272-7331. 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.
/ZHIHAN ZHOU/Primary Examiner, Art Unit 2482