DETAILED ACTION
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim
language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a receiving assembly”, “a creation assembly”, “a running assembly”, “a rendering assembly” in claim 8.
“storage apparatus” and “a processing apparatus” in claim 9.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations)recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS - Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 8 preamble states a display control apparatus of an invention, but with inclusion of claim 1 method as claimed feature. This is considered as a hybrid claim where two statutory categories presented in one claim. Further, it is unclear how an apparatus “using” a method as stated in the preamble. Apparatus should only be a passively performed by a method.
In claim 10, the CRM claim comprises single method step from claim 1. An apparatus claim with single element of method step has held as indefinite (Rembrandt Data Techs v. AOL, Fed. 2011).
Claims 7-8 and 10 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 is not further limiting from independent claim 1.
Claims 8 and 10 are presented with apparatus/CRM claim preamble comprising features from independent method claims. “Such an unusual style was considered as Beauregard style independent claims while defendant failed to establish arguments for such claim as a dependent claim under 35 USC 112, p.4” (Uniloc v. Google, E. Texas, 2020). “A prosecution history by Examiner would assist court to determine the claim status as an independent claim or a dependent claim” (Washington Research Foundation v. Sanofi, WD Washington, 2018). A clarification of claim status is requested.
According to fee schedule (SB06, 2/27/2025), there are only two independent claims filed.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 1-10 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Skourup (US 2008/0,005,702).
Referring to claims 1 and 7-10, Skourup discloses a display control method (fig. 1, augmented reality on a virtual desktop) for an augmented reality (para.0048, augmented reality) head-mounted device (fig. 2, head-mounted display HMD 34), comprising:
receiving a first enable instruction (fig. 2, icons 48/46) for enabling a first application (fig. 2, functional interfaces 38/40/42) in a running process (fig. 1, wearable computer 3; para.0051, software) of a three-dimensional 3D desktop environment (fig. 2, virtual desktop 36; para.0062, 3D desktop);
creating a first canvas and a first virtual screen (para. 0055, 2D virtual functional interface) in the 3D desktop environment in response to the first enable instruction when the first application is a two-dimensional 2D application (para. 0055, traditional 2D functional interface);
running the first application on the first virtual screen (fig. 2, virtual function interface 38/40/42 through HMD 34); and
acquiring texture information from the first virtual screen (para. 0055, visualizing functional interfaces 38/40/42 on virtual desktop 36), and
rendering the texture information acquired from the first virtual screen onto the first canvas (para. 0055, functional interfaces 38/40/42 interacted by user 32);
receiving a second enable instruction (fig. 2, icons 48/46) for enabling a second application (fig. 2, functional interfaces 38/40/42) in the running process (fig. 1, wearable computer 3; para. 0051, software) of the three-dimensional desktop environment (fig. 2, virtual desktop 36; para.0062, 3D desktop);
creating a second canvas and a second virtual screen (para. 0055, 2D virtual functional interface) corresponding to the two-dimensional application in the three-dimensional desktop environment in response to the second enable instruction when the second application is the two-dimensional application (para.0055, traditional 2D functional interface),
wherein the first canvas and the second canvas are located at different positions (para. 0055, virtual functional interfaces 38/40/42 around in space) in the three-dimensional desktop environment;
running the second application on the second virtual screen (fig. 2, virtual function interface 38/40/42 view through HMD34); and
acquiring texture information from the second virtual screen (para. 0055, virtualizing function interfaces 38/40/42 on virtual desktop 36), and
rendering the texture information acquired from the second virtual screen onto the second canvas (para. 0055, functional interfaces 38/40/42 interacted by user 32).
As to claim 2, Skourup discloses the method of claim 1, comprising: detecting whether a 3D engine tag is contained in a global configuration file of the first application when the first enable instruction is received (para. 0056, icon 46/48/50 selected); if not, determining the first application as the 2D application (para.0055, visualizes traditional 2D in 2D virtual functional interfaces).
As to claim 3, Skourup discloses the method of claim 1, comprising: acquiring attribute information of the first application from an application menu (fig. 2, icons 46/48, virtual functional interfaces 38/40/42) provided by the 3D desktop environment when the first enable instruction is received, and determining whether the first application is the 2D application according to the attribute information of the first application (para.0055, visualizes traditional 2D functional interfaces in 2D virtual functional interfaces).
As to claim 4, Skourup discloses the method of claim 1, comprising: exiting the 3D desktop environment in response to the first enable instruction when the first application is a 3D application (para. 0055, visualize traditional 2D functional interfaces), and starting the first application after the 3D desktop environment is exited (para.0055, visualizes traditional 2D functional interfaces in 3D virtual functional interfaces).
As to claim 5, Skourup discloses the method of claim 4, comprising: after the starting the first application, receiving a first control instruction to exit the first application (para. 0055, visualize traditional 2D functional interfaces); and exiting the first application in response to the first control instruction, and running the 3D desktop environment (para.0055, visualizes traditional 2D functional interfaces in 3D virtual functional interfaces).
As to claim 6, Skourup discloses the method of claim 1, comprising: receiving an operation instruction from a user (fig. 2, operator 32) in a process of running the first application (para.0055, user 32 moves functional interfaces); acquiring a coordinate value of a collision point (para. 0048, input device in relation to world coordinate system; para.0059 mouse click to virtual space) in the first canvas when a 3D ray mapped (fig. 2, input device 44; para.0059, interactive input devices to functional interfaces) by the operation instruction collides with the first canvas (para.0055); determining a target pixel (paras.0048, input device 4a to position and orientation of object displayed) on the first virtual screen corresponding to the collision point according to the coordinate value of the collision point in the first canvas; and controlling the first application to trigger a touch event corresponding to the target pixel (para.0059, virtual touch screen).
Response to Arguments
Applicant’s arguments have been fully considered, but they are not deemed to be persuasive.
Applicant argues that the cited prior does not discloses claimed invention as amended (pp. 13-20).
Initially, the claim scope does include the first and second application are the same application, different application enabled at different time (i.e., one application via HMD at a time), or two applications enabled at the same time. Skourup discloses a 3D virtual desktop environment displaying 2D applications via HMD 34 as shown in fig. 2.
Applicant argues that claims 8-9 are not to be interpreted under 35 USC 112(f) after amendment (pp.9-10).
The specification has no structural definition of the “receiving assembly” or “storage apparatus”. The terms are still considered as a placeholder word in place for “means”.
Conclusion
This action is made final. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire in three months from the mailing date of this action. In the event a first reply is filled within two months of the mailing date of this final action and the advisory action is not mailed until after the end of the three-month shortened statutory period, then the shortened statutory period will expire on the date of the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than six months from the date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to examiner Cheng-Yuan Tseng whose telephone number is (571)272-9772. The examiner can normally be reached on Monday through Friday from 09:00 to 17:30 Eastern Time. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Harrington can be reached on (571)272-2330. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800)786-9199 (IN USA OR CANADA) or (571)272-1000.
/CHENG YUAN TSENG/Primary Examiner, Art Unit 2615
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