CTNF 18/969,689 CTNF 90428 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. Double Patenting (Non-Statutory) 08-33 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. Double patenting between App. 18/969,689 and U.S. Patent No. 11,836,866 B2 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3, 5-17, 19, and 20 of U.S. Patent No. 11,836,866 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the methods steps of the current application with those of U.S. Patent No. 11,836,866 B2 as the claims of the current application are broader in scope than those of the issued patent . Double patenting between App. 18/969,689 and U.S. Patent No. 12,198,281 B2 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-17, 19, and 20 of U.S. Patent No. 12,198,281 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the methods steps of the current application with those of U.S. Patent No. 12,198,281 B2 as the claims of the current application are broader in scope than those of the issued patent . Application 18/969,689 U.S. Patent No. 11,836,866 B2 Claim 1 Claim 1 Claim 2 Claim 1 Claim 3 Claim 1 Claim 4 Claim 2 Claim 5 Claim 3 Claim 6 Claim 5 Claim 7 Claim 6 Claim 8 Claim 7 Claim 9 Claim 8 Claim 10 Claim 9 Claim 11 Claim 10 Claim 12 Claim 11 Claim 13 Claim 12 Claim 14 Claim 13 Claim 15 Claim 14 Claim 16 Claim 15 Claim 17 Claim 16 Claim 18 Claim 17 Claim 19 Claim 19 Claim 20 Claim 20 Application 18/969,689 U.S. Patent No. 12,198,281 B2 Claim 1 Claim 1 Claim 2 Claim 1 Claim 3 Claim 2 Claim 4 Claim 3 Claim 5 Claim 4 Claim 6 Claim 5 Claim 7 Claim 6 Claim 8 Claim 7 Claim 9 Claim 8 Claim 10 Claim 9 Claim 11 Claim 10 Claim 12 Claim 11 Claim 13 Claim 12 Claim 14 Claim 13 Claim 15 Claim 14 Claim 16 Claim 15 Claim 17 Claim 16 Claim 18 Claim 17 Claim 19 Claim 19 Claim 20 Claim 20 Allowable Subject Matter Claims 1-20 are objected to as being dependent upon a rejected base claim, but would be allowable if the non-statutory double patenting rejections listed above are resolved, and the claims are rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: In regards to independent claim 1, none of the cited prior art alone or in combination provides motivation to teach “ generating an external mesh for the object; deforming the external mesh based on changes to the 3D mesh and a deformation parameter; and modifying an image to overlay an augmented reality (AR) element over at least a portion of a depiction of the object based on the deformed external mesh ” as the references only teach the concept of mesh generation in application to garment fitting processes, transmitting mesh features via a server obtained from real space, and dynamic character modeling through multi-viewpoint video, however the references fail to explicitly disclose the function of determining data from the video creating an external mesh with an AR component and deforming the mesh in relation to a 3D mesh for replacing objects with AR components, in conjunction with the remaining limitations of claim 1 for the purpose of simplifying the morphing of body parts into an AR graphic. In addition, there is no teaching, suggestion, or motivation found in the current references and none that can be inferred from the examiner’s own knowledge with respect to the current limitation. In regards to independent claims 19 and 20, these claims recite limitations similar in scope to that of claim 1, and thus are objected to under the same rationale as provided above. In regards to dependent claims 2-18, these claims depend from claim 1 above, and thus are objected to under the same rationale as provided above. 07-43-03 AIA As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : See the Notice of References Cited (PTO-892) Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRELL M ROBINSON whose telephone number is (571)270-3526. 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. 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, KENT CHANG can be reached at 571-272-7667. 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. /TERRELL M ROBINSON/Primary Examiner, Art Unit 2614 Application/Control Number: 18/969,689 Page 2 Art Unit: 2614
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