CTNF 18/946,303 CTNF 74790 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. Information Disclosure Statement 06-49-08 AIA The information disclosure statement filed November 13, 2024 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. 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 Claims 1-20 are 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 1 recites: “ obtaining , by at least one processor of a device based on the one or more external factors, a sequence of triggers associated with a virtual box , the sequence of triggers configured to change the virtual box from a closed state to an open state; and initiating, by the at least one processor of the device and using a memory component coupled to the at least one processor, recording of a video in which the user interacts with the virtual box .” It is unclear how user interaction with a virtual box is recorded when a sequence of triggers to change the open/close state of the box is not performed by a user. Applicant’s Specification (Para 98, 100) discloses determining weather, at a device location, results in a first sequence of user actions being combined with a second sequence of user actions to open a virtual box. Correction is required. Claims 16 and 19, similar in scope to claim 1, are similarly rejected. 07-34-12 AIA Claim s 1, 16 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: determining a first sequence of user actions and a second sequence of user actions that are combined and completed to open a virtual box . Claims 2-15, 17-18 and 20 are rejected based on dependency from a rejected base claim . 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2-5, 7, 9, 10, 12-16 and 19 of U.S. Patent No. 11,748,958 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because each modifies the open or close state of a virtual box object, the modification triggered by external factors . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at the time the invention was made to conclude that the invention define in the claims at issue would have been an obvious variation of the invention defined in a claim in the patent because the patent triggers changing the open or closed state of a virtual box based on at least one of a number of external factors that include weather or an activeness metric. Application: 18/946,303 Patent: 11,748,958 1 1, 7 2, 3, 8 1 4-7 2-5 9 9 10, 11 10 12-16 12-16 17, 18 16 19, 20 19 Application: 18/946,303 Patent: 11,748,958 A method comprising: determining one or more external factors associated with a real-world environment, the one or more external factors comprising weather at a location of a device or activeness metric associated with a user; obtaining, by at least one processor of a device based on the one or more external factors, a sequence of triggers associated with a virtual box, the sequence of triggers configured to change the virtual box from a closed state to an open state; A method comprising: retrieving, by one or more processors of a client device, an augmented reality element comprising a virtual box that is in a closed state; obtaining a sequence of triggers associated with the virtual box, the sequence of triggers configured to change the virtual box from the closed state to an open state and initiating, by the at least one processor of the device and using a memory component coupled to the at least one processor, recording of a video in which the user interacts with the virtual box. initiating recording of a video stream in which a user interacts with the virtual box to capture a reaction of the user interacting with the virtual box. Patent: 11,748,958 (claim 7) the one or more external factors comprise at least one of a location of the client device, a time of day, weather at the location, or experience level or activeness metric associated with a user . 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-18 of U.S. Patent No. 12,170,747 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because each modifies the open or close state of a virtual box object, the modification triggered by external factors . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at the time the invention was made to conclude that the invention define in the claims at issue would have been an obvious variation of the invention defined in a claim in the patent because the patent triggers changing the open or closed state of a virtual box based on at least one of a number of external factors that include weather or an activeness metric. Application: 18/946,303 Patent: 12,170,747 1 1 2 1, 2 3-7 3-7 8 1 9 8 10, 11 9 12-16 10-14 17 14, 15 18-19 16-17 20 17, 18 Application: 18/946,303 Patent: 12,170,747 A method comprising: determining one or more external factors associated with a real-world environment, the one or more external factors comprising weather at a location of a device or activeness metric associated with a user; A method comprising: determining one or more external factors associated with a real-world environment, the one or more external factors comprising weather at the location, of the device or activeness metric associated with a user obtaining, by at least one processor of a device based on the one or more external factors, a sequence of triggers associated with a virtual box, the sequence of triggers configured to change the virtual box from a closed state to an open state; obtaining, by at least one processor of a device based on the one or more external factors, a sequence of triggers associated with a virtual box, the sequence of triggers configured to change the virtual box from a closed state to an open state determining, by the at least one processor of the device, that a first portion of a sequence of user actions corresponding to the sequence of triggers have been performed by the user; and in response to determining that the first portion of the sequence of user actions have been performed by the user, and initiating, by the at least one processor of the device and using a memory component coupled to the at least one processor, recording of a video in which the user interacts with the virtual box. initiating, by the at least one processor of the device and using a memory component coupled to the at least one processor, recording of a video in which the user interacts with the virtual box to capture a reaction of the user interacting with the virtual box. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTE HARRISON whose telephone number is (571)272-7659. The examiner can normally be reached Monday - Friday 8:00 am to 5:00 pm EST. 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, Alicia Harrington can be reached at 571-272-2330. 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. /CHANTE E HARRISON/Primary Examiner, Art Unit 2615 Application/Control Number: 18/946,303 Page 2 Art Unit: 2615 Application/Control Number: 18/946,303 Page 3 Art Unit: 2615 Application/Control Number: 18/946,303 Page 4 Art Unit: 2615 Application/Control Number: 18/946,303 Page 5 Art Unit: 2615 Application/Control Number: 18/946,303 Page 6 Art Unit: 2615 Application/Control Number: 18/946,303 Page 7 Art Unit: 2615 Application/Control Number: 18/946,303 Page 8 Art Unit: 2615 Application/Control Number: 18/946,303 Page 9 Art Unit: 2615 Application/Control Number: 18/946,303 Page 10 Art Unit: 2615 Application/Control Number: 18/946,303 Page 11 Art Unit: 2615 Application/Control Number: 18/946,303 Page 12 Art Unit: 2615 Application/Control Number: 18/946,303 Page 13 Art Unit: 2615
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