CTNF 18/901,761 CTNF 89647 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. Double Patenting 08-33 AIA 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. Appl/Pat. No. Claim Correspondence Appl. 18901761 1,2, 11-12 3, 13 4, 14 5, 15 6,7, 16, 17 8, 18 9, 19 10, 20 Pat. 12135816 1, 11 6, 16 7, 17 8, 18 1, 11 1, 11 4, 14 2, 12 08-36 AIA Claim s 1-5, 9-15 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-2, 4, 6-8, 11, 12, 14 and 16-18 of U.S. Patent No. 12135816 in view of CLEMENT et al. (US Pat. Pub. No. 20180107835 “Clement”) . Claim 1 of Appl. 18901761 Claim 1 of Pat. 12135816 A method comprising: A method comprising: hosting a shared virtual world in which a plurality of users, including a first user, are able to interact, the shared virtual world including at least a shared version of a virtual object; hosting a shared virtual world in which a plurality of users, including a first user, are able to interact; transferring the first user from the shared virtual world to a private copy of a portion of the shared virtual world, the private copy including a private copy of the virtual object ; and while the first user is interacting in the shared virtual world, receiving an instruction from the first user to generate a private copy of a portion of the shared virtual world; and in response to the instruction, hosting the private copy of the portion of the shared virtual world, wherein only the first user is able to interact in the private copy of the portion of the shared virtual world modifying the private copy of the virtual object in response to an input from the first user, wherein the shared version of the virtual object is not modified by the input from the first user while the first user is interacting in the private copy. wherein the first user alters an object or environment in the private copy; based at least in part on whether the altered object or environment was altered by another user while the first user was in the private copy, determining whether to apply the alteration to the shared virtual world; and in response to the first user returning to the shared virtual world, applying the alteration to the shared virtual world according to the determination. Claim 1 of the instant appl. differs from claim 1 of patent only: the shared virtual world including at least a shared version of a virtual object; the private copy including a private copy of the virtual object; Clement teaches shared virtual world including at least a shared version of a virtual object; private copy including a private copy of the virtual object (Fig. 1 shows card game in both private and shared world); Clement and Claim 1 of patent are analogous art as both of them are related to virtual reality. Therefore it would have been obvious for an ordinary skilled person in the art before the effective filing date of claimed invention to have modified Claim 1 of patent by having shared virtual world including at least a shared version of a virtual object; private copy including a private copy of the virtual object as taught by Clement. The motivation for the above is that user can have better controllability on object. Claims 2-5,8, 9-15, 18 and 19-20 of the instant application recites limitations that are similar to the limitations recited in are also obvious over claims 2, 4, 6-8, 11, 12, 14 and 16-18 of U.S. Patent No. 12135816 in view of CLEMENT and therefore are also obvious over claims 2, 4, 6-8, 11, 12, 14 and 16-18 of U.S. Patent No. 12135816 in view of CLEMENT. Claims 6-7 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims and 1 and 11 of U.S. Patent No. 12135816 modified by Clement and in further view of TILTON et al. (US Pat. Pub. No. 20170326457 “Tilton”) to provide a secure area for editing virtual object . Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—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 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claim 15 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. Claim 15 recites “The method of claim 11”. However claim 11 is apparatus claim. As a result the scope of claim 15 is not clear. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-12-aia AIA (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. 07-15-03-aia AIA Claim (s) 1, 3-5, 8, 10-11, 13-15, 18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by CLEMENT et al. (US Pat. Pub. No. 20180107835 “Clement”) . Regarding claim 11 Clement teaches An apparatus comprising one or more processors (Fig. 3 element 314) configured to perform at least: hosting a shared virtual world in which a plurality of users, including a first user, are able to interact, the shared virtual world including at least a shared version of a virtual object (“[0025]…….In some implementations, the systems and methods described herein can provide a way for users to share particular portions of information with other users in a same VR space while maintaining data and user privacy for other portions of information and/or VR content. [0079] FIG. 4 is a diagram depicting an example of multiple users interacting in the same VR space”); transferring the first user from the shared virtual world to a private copy of a portion of the shared virtual world, the private copy including a private copy of the virtual object ( “[0009] In some implementations, the method may further include detecting an input associated with the at least one virtual object, determining that the input is associated with data corresponding to the at least one virtual object and a privacy setting, determining that the user is entering additional input corresponding to the at least one virtual object, and changing the privacy setting associated with the at least one virtual object from public to private in response to determining that the additional input includes personal data. [0037] As shown in FIG. 1, the user 102 is accessing VR space 108. The VR space 108 is divided into various regions for providing VR content. The various regions (and content therein) may be configured as private or public and can be switched between private and public by the user generating or interacting with such VR content”); and modifying the private copy of the virtual object in response to an input from the first user, wherein the shared version of the virtual object is not modified by the input from the first user while the first user is interacting in the private copy ( “[0049] The private mode may block display from users other than the single user viewing, modifying, or interacting with content. For example, if a first user modifies, enters, or interacts with VR content in the VR space, the private mode may block, modify, or scramble display of the actual modification, entry or interaction for a second user (and/or other users) in the VR space.”). Claim 1 is directed to a method claim and its steps are similar in scope and functions of the apparatus claim 11 and therefore claim 1 is rejected with the same rationale as specified in the apparatus claim 1. Regarding claims 3 and 13 Clement teaches wherein the modification is applied to the shared version of the virtual object in response to the first user returning to the shared virtual world ( “[0060]….. In particular, system 200 can provide a user with a number of options in which to view private and public content and to interact with controllers to manipulate virtual objects and/or text entry within the VR space. [0092]……. The private content is indicated by respective icons 618A and 618B. The user 602 may select one or more icons 618A or 618B to change the privacy setting from public to private or from private to public”). Regarding claims 4 and 14 Clement teaches wherein the modification of the shared version of the virtual object is delayed until after a determination is made that the shared version of the virtual object is not being observed by other users (“[0089] In one example, the user 502 may be entering credentials into a financial application depicted into area 500A in the VR space. The VR system 210 may determine that the credentials are associated with sensitive user data and can apply privacy settings to obfuscate from view, for other users in the VR space, the data, the user motions entering the data, and applications and files or menus accessed using the data, etc.”). Regarding claims 5 and 15 Clement teaches perform: making a determination that the shared version of the virtual object was not altered by another user while the first user was in the private copy; and automatically applying the modification to the shared version of the virtual object in response to the first user returning to the shared virtual world (“[0094] As shown in FIG. 6A, the user 602 is accessing photographs 1-4 and the photographs are not displayed to any other users accessing the same VR space. User 604 is accessing a social circle chat privately and such content associated with the chat are not provided or displayed to any other users accessing the same VR space unless user 604 allows provision of the activity and/or content. [0095] At some point, user 602 may wish to share content with another user accessing the same VR space. For example, user 602 may wish to share photographs 1-4 with user 604”). Regarding claims 8 and 18 Clement teaches wherein the shared virtual world is implemented on a server hosting a plurality of users, and the private copy is implemented in a client device of the first user (“[0071] In some implementations, one or more content servers (e.g., VR system 210) and one or more computer-readable storage devices can communicate with the computing devices 204-208 using network 202 to provide VR content to the devices 204-208”). Regarding claims 10 and 20 Clement teaches further configured to receive from the first user information indicating an extent of the portion of the shared virtual world represented in the private copy ( [0087] “…..In addition, the user 502 may be accessing a financial application and entering a personal identification number on number pad 518 to access funds to continue playing the shared card game”) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 2, 6-7, 12 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Clement in view of TILTON et al. (US Pat. Pub. No. 20170326457 “Tilton”) . Regarding claims 2 and 12 is silent about perform: based at least in part on whether the shared version of the virtual object was altered by another user while the first user was in the private copy, determining whether to modify the shared version of the virtual object according to the input from the first user; and in response to the first user returning to the shared virtual world, applying the modification to the shared version of the virtual object according to the determination. Tilton teaches perform: based at least in part on whether the shared version of the virtual object was altered for another user while the first user was in the private copy, determining whether to modify the shared version of the virtual object according to the input from the first user (“[0035] The co-presence virtual environment modification data can also include instructions for changing the appearance of the co-presence virtual environment for the other users of the co-presence virtual environment (i.e., those users whose avatars have not entered restricted space). For example, when a first user's avatar enters restricted space, the co-presence virtual environment modification data can include instructions to change the appearance of the first user's avatar. The appearance change can include, for example, making the first user's avatar, or a portion of the first user's avatar, invisible”); Clement and Tilton are analogous art as both of them are related to processing content of virtual environment. Therefore it would have been obvious for an ordinary skilled person in the art before the effective filing date of claimed invention to have modified Clement by performing: based at least in part on whether the shared version of the virtual object was altered by another user while the first user was in the private copy, determining whether to modify the shared version of the virtual object according to the input from the first user similar to performing: based at least in part on whether the shared version of the virtual object was altered for another user while the first user was in the private copy, determining whether to modify the shared version of the virtual object according to the input from the first user as taught by Tilton. The motivation for the above is to provide controllability to user to change virtual object. Clement modified by Tilton teaches in response to the first user returning to the shared virtual world, applying the modification to the shared version of the virtual object according to the determination (Clement “[0060]….. In particular, system 200 can provide a user with a number of options in which to view private and public content and to interact with controllers to manipulate virtual objects and/or text entry within the VR space. [0092]……. The private content is indicated by respective icons 618A and 618B. The user 602 may select one or more icons 618A or 618B to change the privacy setting from public to private or from private to public”). Regarding claims 6 and 16 Clement is silent about wherein the first user is represented by an avatar in the shared virtual world, and wherein the avatar is not visible in the shared virtual world while the first user is interacting in the private copy. Tilton teaches first user is represented by an avatar in the shared virtual world, and wherein the avatar is not visible in the shared virtual world while the first user is interacting in the private copy (“[0035] The co-presence virtual environment modification data can also include instructions for changing the appearance of the co-presence virtual environment for the other users of the co-presence virtual environment (i.e., those users whose avatars have not entered restricted space). For example, when a first user's avatar enters restricted space, the co-presence virtual environment modification data can include instructions to change the appearance of the first user's avatar. The appearance change can include, for example, making the first user's avatar, or a portion of the first user's avatar, invisible”); Clement and Tilton are analogous art as both of them are related to processing content of virtual environment. Therefore it would have been obvious for an ordinary skilled person in the art before the effective filing date of claimed invention to have modified Clement by having first user that is represented by an avatar in the shared virtual world, and wherein the avatar is not visible in the shared virtual world while the first user is interacting in the private copy as taught by Tilton. The motivation for the above is to provide a secure area for editing virtual object. Regarding claims 7 and 17 Clement modified by Tilton teaches w herein the avatar becomes visible in the shared virtual world in response to the first user returning to the shared virtual world (Tilton “[0069]…… Further, in the event that avatar 310 returns to its permitted space region 360, VR user device 155 may receive co-presence virtual environment modification data instructing VR user device 155 to render avatar 310 as visible”) . 07-21-aia AIA Claim (s) 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Clement in view of Faaborg et al. 10795449 “Faaborg”) . Regarding claims 9 and 19 Clement teaches a boundary of the private copy and in response to the first user exiting the private copy, the first user is automatically returned to the shared virtual world (Fig. 6A shows boundary of private copy and first user exits private copy, first user automatically enters shared world “[0096]…. Accordingly, the system 210 can detect the gesture using tracking system 212, for example, and can change a privacy setting associated with the computing device 610 (or associated with user 602 or associated with a particular VR space) from private to public. Such a change may trigger display of the screen content from device 610 in the VR space. The display of such content may be provided to any or all other users accessing the same VR space) but doesn’t do so in response to the first user exiting a boundary of the private copy; Faaborg teaches in response to first user exiting a boundary of private copy, the first user is automatically returned to shared virtual world (Col 7 lines 10-19 “For example, in FIG. 4A, the private window 302 has be pushed beyond a pre-determined distance 402 (see FIG. 4A) to trigger changing of the window 302 to the shared window 304. The distance 402 can represent a private or unshared space boundary, e.g., arms reach. Such a boundary 402 could be satisfied with the original gesture 308 or continued motion of the window 302”. Col 7 lines 56-60 “As shown in FIG. 5, another example gesture in the form of a swiping gesture 504 of an element 506 of a private window 508 across the private window 508 is used to signal that the element 506 be made into a shared element 510. The shared element 510 may be implemented as a separate window, or may be incorporated by another into one of their windows”); Clement and Faaborg are analogous art as both of them are related to processing content of virtual environment. Therefore it would have been obvious for an ordinary skilled person in the art before the effective filing date of claimed invention to have modified Clement by having in response to first user exiting a boundary of private copy, the first user is automatically returned to shared virtual world as taught by Faaborg. The motivation for the above is to provide the user chance to play, interact or view with shared element. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAPTARSHI MAZUMDER whose telephone number is (571)270-3454. The examiner can normally be reached 8 am-4 pm PST. 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, Said Broome can be reached at (571)272-2931. 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. /SAPTARSHI MAZUMDER/Primary Examiner, Art Unit 2612 Application/Control Number: 18/901,761 Page 2 Art Unit: 2612 Application/Control Number: 18/901,761 Page 3 Art Unit: 2612 Application/Control Number: 18/901,761 Page 4 Art Unit: 2612 Application/Control Number: 18/901,761 Page 5 Art Unit: 2612 Application/Control Number: 18/901,761 Page 6 Art Unit: 2612 Application/Control Number: 18/901,761 Page 7 Art Unit: 2612 Application/Control Number: 18/901,761 Page 8 Art Unit: 2612 Application/Control Number: 18/901,761 Page 9 Art Unit: 2612 Application/Control Number: 18/901,761 Page 10 Art Unit: 2612 Application/Control Number: 18/901,761 Page 11 Art Unit: 2612 Application/Control Number: 18/901,761 Page 12 Art Unit: 2612 Application/Control Number: 18/901,761 Page 13 Art Unit: 2612 Application/Control Number: 18/901,761 Page 14 Art Unit: 2612 Application/Control Number: 18/901,761 Page 15 Art Unit: 2612 Application/Control Number: 18/901,761 Page 16 Art Unit: 2612 Application/Control Number: 18/901,761 Page 17 Art Unit: 2612
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