CTNF 18/961,609 CTNF 86949 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. 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 16-35 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. 07-34-05 AIA Claim s 16 recites the limitation " sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance ." in limitation 5 . There is insufficient antecedent basis for this limitation in the claim. Claims 17-30 are rejected for depending from claim 16. 07-34-05 AIA Claim s 31 recites the limitation " sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance ." in limitation 5 . There is insufficient antecedent basis for this limitation in the claim. Claims 32-35 are rejected for depending from claim 31. 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 16-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-30 of U.S. Patent No. US12190461B2 in view of Xaio et al (US 20160093108 A1) . Although the claims at issue are not identical, they are not patentably distinct from each other because this application is a continuation of 18/132,281and this application claims with more words but in a broader manner the invention concisely claimed in 18/132,281 . The claims map to each other as follows: Instant Application U.S. Patent No. US12190461B2 Claim 16 A method comprising: receiving, at a first mixed reality (MR) device, a selection of a virtual content object displayed by a display of the first MR device; receiving, at the first MR device, a selection of an image of a second MR device visible in the display of the first MR device; enabling the virtual content object to be accessible to the second MR device based on the selection of the virtual content object and the selection of the image of the second MR device, receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance . Claim 1 A method comprising: enabling (comprises receiving) , at a first mixed reality (MR) device, a selection of a virtual content object displayed by a display of the first MR device; enabling (comprises receiving) , at the first MR device, a selection of an image of a second MR device visible in the display of the first MR device; and responsive to receiving the selection of the virtual content object and the selection of the image of the second MR device, making the virtual content object accessible to the second MR device, wherein the selected virtual content object was inaccessible to the second MR device prior to receiving the selection of the virtual content object and the selection of the image of the second MR device. Claim 22 Claim 9 Claim 17 Claim 27 … the virtual content object is displayed on both the first MR device and the second MR device Claim 18 Claim 3 Claim 19 Claim 5 Claim 20 Claim 6 Claim 21 Claim 8 Claim 22 Claim 9 Claim 23 Claim 10 Claim 24 Claim 11 Claim 25 Claim 12 Claim 26 Claims 13-15 Claim 27 Claim 25 Claim 28 Claims 21-22 Claim 29 Claim 23 Claim 30 Claim 24 Claim 31 Claim 28 Claim 32 Claim 29 Claim 33 Claim 27 … the virtual content object is displayed on both the first MR device and the second MR device Claim 34 Claim 3 Claim 35 Claim 9 Claim 16 in view of Patent No. US12190461 does not disclose receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance. However, Xiao discloses receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device (Xiao [0097], “an invitation to join the VR space 1 is sent by a first user U1 to a second user U2 … second user U2 accepting the invitation (accepting the invitation by the second device is interpreted as reading on, “receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device”) ”) and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance (Xiao [0097], “the second user U2 is allowed to interact with the VR objects (sharing, by the first MR device, the virtual content object with the second MR device based on the indication/acceptance) presented in the interactive game scene, in response to the second user U2 accepting the invitation to join the VR space 1 of the first user U1.”). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the claim 16 with Xiao to include a protocol to coordinate a sharing of virtual objects with a second device based on an indication by the second device. This would have been done to selectively choose and control the sharing of virtual content. Claim 31 is rejected similar to claim 16 above . 08-34 AIA Claim s 16-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. US11443492B2 in view of Xaio et al (US 20160093108 A1) . Although the claims at issue are not identical, they are not patentably distinct from each other because this application is a continuation of 17/253,543 and this application claims with more words but in a broader manner the invention concisely claimed in 17/253,543 . Instant Application U.S. Patent No. US11443492B2 Claim 16 A method comprising: receiving, at a first mixed reality (MR) device, a selection of a virtual content object displayed by a display of the first MR device; receiving, at the first MR device, a selection of an image of a second MR device visible in the display of the first MR device; enabling the virtual content object to be accessible to the second MR device based on the selection of the virtual content object and the selection of the image of the second MR device, receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance . Claim 1 A method of controlling access to virtual content in a mixed reality scene rendered on at least two user devices, the method comprising: enabling (comprises receiving) , at a first mixed reality (MR) device, a user of the first MR device to select a virtual content object displayed by a display of the first MR device; enabling, at the first MR device, the user of the first MR device to select a second MR device visible in the display of the first MR device, wherein the selected virtual content object was at least one of not previously displayed by the second MR device and not previously accessible to the second MR device (enabling the virtual content object to be accessible to the second MR device) ; and responsive to at least one of: the user selecting the virtual content object, and the user selecting the second MR device, performing at least one of: displaying the virtual content object on the second MR device; and making the virtual content object accessible to the second MR device. Claim 18 Claim 3 Claim 19 Claim 3 Claim 20 Claim 5 Claim 21 Claim 7 … rendering the selected virtual content with regard to a viewing position and/or orientation of the second MR device onto the mixed reality scene. Claim 22 Claim 8 Claim 23 Claim 9 Claim 24 Claim 10 Claim 25 Claim 11 Claim 26 Claims 15-17 Claim 31 Claim 18 Claim 32 Claim 19 Claim 34 Claim 3 Claim 35 Claim 8 Claim 16 in view of Patent No. US11443492B2 does not disclose receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance. However, Xiao discloses receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device (Xiao [0097], “an invitation to join the VR space 1 is sent by a first user U1 to a second user U2 … second user U2 accepting the invitation (accepting the invitation by the second device is interpreted as reading on, “receiving, at the first MR device, an indication for the virtual content object to be accessible to the second MR device”) ”) and sharing, by the first MR device, the virtual content object with the second MR device based on the acceptance (Xiao [0097], “the second user U2 is allowed to interact with the VR objects (sharing, by the first MR device, the virtual content object with the second MR device based on the indication/acceptance) presented in the interactive game scene, in response to the second user U2 accepting the invitation to join the VR space 1 of the first user U1.”). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the claim 16 with Xiao to include a protocol to coordinate a sharing of virtual objects with a second device based on an indication by the second device. This would have been done to selectively choose and control the sharing of virtual content. Claim 31 is rejected similar to claim 16 above . Allowable Subject Matter Claim 16-35 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and the double patenting rejections, set forth in this Office action. 13-03 AIA The following is an examiner’s statement of reasons for allowance: Regarding claim 16 , none of the prior art of record, alone or in combination, disclose claim 16 as recited in its entirety. Claims 17-30 would be allowable for depending from claim 16. Regarding claim 31 , none of the prior art of record, alone or in combination, disclose claim 31 as recited in its entirety. Claims 32-35 would be allowable for depending from claim 31 . Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion See the notice of references cited (PTO-892) for prior art made of record, including art that is not relied upon but considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JITESH PATEL whose telephone number is (571)270-3313. The examiner can normally be reached 8am - 5pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JITESH PATEL/Primary Examiner, Art Unit 2612 Application/Control Number: 18/961,609 Page 2 Art Unit: 2612 Application/Control Number: 18/961,609 Page 3 Art Unit: 2612 Application/Control Number: 18/961,609 Page 4 Art Unit: 2612 Application/Control Number: 18/961,609 Page 5 Art Unit: 2612 Application/Control Number: 18/961,609 Page 6 Art Unit: 2612 Application/Control Number: 18/961,609 Page 7 Art Unit: 2612 Application/Control Number: 18/961,609 Page 8 Art Unit: 2612 Application/Control Number: 18/961,609 Page 9 Art Unit: 2612 Application/Control Number: 18/961,609 Page 10 Art Unit: 2612 Application/Control Number: 18/961,609 Page 11 Art Unit: 2612 Application/Control Number: 18/961,609 Page 12 Art Unit: 2612 Application/Control Number: 18/961,609 Page 13 Art Unit: 2612 Application/Control Number: 18/961,609 Page 14 Art Unit: 2612 Application/Control Number: 18/961,609 Page 15 Art Unit: 2612 Application/Control Number: 18/961,609 Page 16 Art Unit: 2612 Application/Control Number: 18/961,609 Page 17 Art Unit: 2612 Application/Control Number: 18/961,609 Page 18 Art Unit: 2612
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