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 .
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.
Claims 58-69 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 58-69 are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea.
With respect to Step 2A Prong One of the framework, claim 58 recites an abstract idea. Claim 58 includes elements for “from first imagery of the subject, discerning an identity of the subject”; “from said first imagery, also discerning a viewpoint between the apparatus and the subject, with which the first imagery was captured by said apparatus”; “based on said discerned identity of the subject, determining data indicating a range of viewpoints for which the augmentation should be displayed with captured imagery of the subject”; “while the apparatus is viewing the subject from a first viewpoint, not presenting the augmentation, because the first viewpoint is not within said determined range of viewpoints”; and “while the apparatus is viewing the subject from a second viewpoint different than the first, presenting the augmentation, because the second viewpoint is within said determined range of viewpoints”.
The limitations above recite an abstract idea. More particularly, the elements above recite certain methods of organizing human activity for managing a sequence of task workflow. Further, the elements recite mental processes because the elements describe observations or evaluations that can be practically performed in the mind or by a human using pen and paper. As a result, claim 58 recites an abstract idea under Step 2A Prong One.
Claims 66, 67 and 68 include substantially similar limitations to those included with respect to claim 58. Claim 68 includes the additional element of “”in response to user selection of the first augmentation, authoring a social media communication that includes a hashtag corresponding to said retail item”. This additional element further recites certain method of organizing human activity for managing a task flow. As a result, claims 66, 67 and 68 recite an abstract idea under Step 2A Prong One for the same reasons as stated above with respect to claim 58.
Claims 59-65, and 69 further describe the process for managing a sequence of task workflow and further recite certain methods of organizing human activity and/or mental processes for the same reasons as stated above. As a result, claims 59-65, and 69 recite an abstract idea under Step 2A Prong One.
With respect to Step 2A Prong Two of the framework, claim 58 does not include additional elements that integrate the abstract idea into a practical application. Claim 58 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional element includes a camera- and display-equipped portable apparatus. When considered in view of the claim as a whole, the additional element does not integrate the abstract idea into a practical application because the additional portable apparatus element is a generic component that is merely used to perform the recited abstract idea. As a result, claim 58 does not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
As noted above, claims 66-68 include substantially similar limitations to those included with respect to claim 58. Although claim 68 further includes a software of the apparatus, the additional element, when considered in view of the claim as a whole, do not integrate the abstract idea into a practical application because the software does no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claims 66, 67, 68 do not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claims 59-65, and 69 do not include any additional elements beyond those included with respect to the claims from which claims 59-65, and 69 depend. As a result, claims 59-65, and 69 do not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above.
With respect to Step 2B of the framework, claim 58 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 58 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional element includes a camera- and display-equipped portable apparatus. When considered in view of the claim as a whole, the additional element does not integrate the abstract idea into a practical application because the additional portable apparatus element is a generic component that is merely used to perform the recited abstract idea. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 58 does not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B.
As noted above, claims 66-68, include substantially similar limitations to those included with respect to claim 58. Although claim 68 further includes a software of the apparatus, the additional element, when considered in view of the claim as a whole, do not integrate the abstract idea into a practical application because the software does no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claims 66-68 do not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claims 59-65, and 69 do not include any additional elements beyond those included with respect to the claims from which claims 59-65, and 69 depend. As a result, claims 59-65, and 69 do not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B for the same reasons as stated above.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 58-69 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claim 66 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,755,341. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader claims of the instant application are anticipated by the narrower claims of the patent.
Claim 67 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,755,341. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader claims of the instant application are anticipated by the narrower claims of the patent.
Claim Rejections - 35 USC § 102
(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 58-65 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pat.No US8,948,451 to Ikenoue et al
Regarding Claim 58:
A method employing a camera- and display-equipped portable apparatus, to present imagery of a subject as captured by said apparatus from a viewpoint, together with an augmentation associated with said subject, the method comprising the acts:
(a) from first imagery of the subject, discerning an identity of the subject; (Fig 18)
(b) from said first imagery, also discerning a viewpoint between the apparatus and the subject, with which the first imagery was captured by said apparatus; (col 19: lines 39-47)
(c) based on said discerned identity of the subject, determining data indicating a range of viewpoints for which the augmentation should be displayed with captured imagery of the subject; (col 19: lines 39-47)
(d) while the apparatus is viewing the subject from a first viewpoint, not presenting the augmentation, because the first viewpoint is not within said determined range of viewpoints;(Fig 18, col 19: lines 44-46) and
(e) while the apparatus is viewing the subject from a second viewpoint different than the first, presenting the augmentation, because the second viewpoint is within said determined range of viewpoints. (Fig 18, Col 19: lines 48-57)
Regarding Claim 59:
The method of claim 58 in which the first image was captured by said apparatus from the first viewpoint. (Fig 18, col 19: lines 44-46)
Regarding Claim 60:
The method of claim 58 in which act (e) follows act (d). (Fig 18, Col 19: lines 48-57)
Regarding Claim 61:
The method of claim 58 in which act (e) includes presenting the augmentation on the display in conjunction with the imagery captured by the apparatus from the second viewpoint. (Fig 18, (d))
Regarding Claim 62:
The method of claim 58 in which said determining act comprises determining from a data structure. (col 19: lines 53-55)
Regarding Claim 63:
The method of claim 58 in which said discerning act comprises discerning the viewpoint with reference to information steganographically encoded on said subject. (col 19: lines 54-57)
Regarding Claim 64:
The method of claim 58 in which said subject is a 3D object having a planar face. (Fig 18)
Regarding Claim 65:
The method of claim 58 in which a first augmentation is associated with a first feature on said subject, and a second augmentation is associated with a second feature on said subject, and wherein a range of viewpoints for which the first augmentation should be presented is smaller than a range of viewpoints for which the second augmentation should be presented. (Fig 6, lines 35-40 first augmentation, Fig 18, Col 19: lines 48-57 second augmentation)
Claim 67 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pub.No. 2013/0301875 to Schumacher
Regarding Claim 67:
A method employing a camera- and display-equipped portable apparatus, to present imagery of a retail item, together with first and second different augmentations associated with the retail item, the method comprising the acts:
from first imagery of the item captured by the apparatus, discerning an identity of the item; [0043]
based on the discerned identity, recalling 3D model data for the item from a memory; [0049]
presenting a first rendering of the item on the display of the apparatus, based on the 3D model data, the first rendering having a first viewpoint, and presenting the first augmentation with said first rendering; [0045]
in response to user manipulation of a user interface, presenting a second rendering of the item on the display of the apparatus, the second rendering having a second viewpoint different than the first rendering; [0044], [0045], [0046]
checking a datum characterizing the second viewpoint against stored data indicating a range of viewpoints associated with the second augmentation, and based on an outcome of said checking, determining whether to present the second augmentation with said second rendering. [0042], [0044]
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 68 and 69 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat.No US8,948,451 to Ikenoue et al in view of “Use of Hashtags by Pew Research Center: Journalism & Media Staff” hereafter refereed to as Hashtag.
Regarding Claim 68:
A method employing a camera- and display-equipped portable apparatus, to present imagery of a retail item as captured by said apparatus from a viewpoint, together with an augmentation associated with said retail item, the method comprising the acts:
Ikenoue discloses from first imagery of the retail item, discerning an identity of the retail item; (col 7: lines 14-25, Fig 5 “BallCost: 7 yen/ball (weekday night)”)
based on said discerned identity of the retail item, determining a first augmentation associated with said retail item, and presenting the first augmentation to the user; (Fig 5 “BallCost: 7 yen/ball (weekday night)”) and
Ikenoue teaches in response to user selection of the first augmentation, software of the apparatus authoring a social media communication by disclosing an example “a case where an item seller or the like registers campaign information or the like. In the case of Twitter or the like, time line display or the like based on the relationship among people, such as followers, is available. In this example, however, information is presented on the basis of an object.” (col 17: lines 61-66)
However, Ikenoue does not expressly teach that the social media communication includes a hashtag corresponding to said retail item.
Hashtag discloses “The hashtag symbol (#) is used before keywords to categorize tweets and helps facilitate searches within Twitter.” (first paragraph)
Accordingly, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to include a hashtag corresponding to said retail item as disclosed by Ikenoue when creating campaign information on Twitter. One would be motivated to perform such combination to facilitate searches within Twitter of the retail item, and in the combination each element merely would have performed the same function as it did separately, with the predictable results of facilitating searches within Twitter.
Regarding Claim 69:
Ikenouse discloses the method of claim 68 that further includes:
from said first imagery, also discerning a viewpoint between the apparatus and the retail item, with which the first imagery was captured by said apparatus; (col 7: lines 25-40)
based on said discerned identity of the retail item, determining data indicating a range of permitted viewpoints for which the first augmentation should be displayed with captured imagery of the retail item; (col 5: lines 4-10, col 19: lines 39-47) and
based on said discerned viewpoint, and said range of permitted viewpoints, determining that the first augmentation should be presented to a user. (col 19: lines 50-57)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rutao Wu whose telephone number is (571)272-6045. The examiner can normally be reached Mon-Fri 8-5.
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/RUTAO WU/Supervisory Patent Examiner, Art Unit 3623