Notice of Pre-AIA or AIA Status
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
Claim(s) 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-25 of U.S. Patent No. 12,211,154
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).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘428 is broader in scope and corresponding limitations are present in one or more dependent claims of 12,211,154.
Table 1 below lists corresponding claims between the present application and U.S. Patent No. 12,211,154
Example Claim Mapping:
‘154 discloses 1. A system comprising (‘154, Claim 1: “1. A system comprising:”):
a memory storing instructions (‘154, Claim 1: “a memory storing instructions; and”); and
a processor communicatively coupled to the memory and configured to execute the instructions to perform operations comprising (‘154, Claim 1: “a processor communicatively coupled to the memory and configured to execute the instructions to perform operations comprising:”):
determining that a viewpoint of a user of a display device is directed within an anchor region of a physical world containing the user while a medical procedure comprising a first operational stage and a second operational stage is performed in the physical world (‘154, Claims 1, 8: “determining that a viewpoint of a user of a display device is directed within an anchor region of a physical world… wherein a medical procedure is performed in the physical world”);
directing, in response to the determination that the viewpoint is directed within the anchor region, the display device to present augmented content in an evident manner, wherein the evident manner comprises anchoring the augmented content relative to the viewpoint, such that the augmented content follows the viewpoint as the user moves the viewpoint within the anchor region (‘154, Claim 1: “directing, in response to the determination that the viewpoint is directed within the anchor region, the display device to present augmented content in an evident manner, wherein the evident manner comprises anchoring the augmented content relative to the viewpoint, such that the augmented content follows the viewpoint as the user moves the viewpoint within the anchor region”); and
automatically redefining, in response to the medical procedure transitioning from the first operational stage to the second operational stage, the anchor region from a first region to a second region, the first region being associated with the first operational stage and the second region being associated with the second operational stage, the second region different from the first region (‘154, Claim 8: “automatically redefining, in response to the medical procedure transitioning from the first operational stage to the second operational stage, the anchor region from a first region to a second region, the first region being associated with the first operational stage and the second region being associated with the second operational stage, the second region different from the first region.”).
Table 1. Corresponding Claims
18/986,428
12,211,154
1
1 and 8
2
1
3
2
4
3
5
4
6
5
7
12
8
13
9
14
10
6
11
7
12
9
13
11
14
1 and 8
15
1
16
2
17
3
18
4
19
12
20
1 and 8
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
Claim(s) 1-20 objected to as being dependent upon a rejected base claim, but would be allowable upon filing of an approved terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
Robaina’s Teachings:
Robaina considers: “various embodiments may enhance image content presented to the user's central field of view and/or de-emphasize image content presented to the user's peripheral field of view (e.g., to increase visibility of image content of the environment in the user's central field of view) using the enhancing and/or de-emphasizing techniques described herein”
Robaina does not consider transition according to the procedure steps as claimed.
Poulos’s Teachings:
Poulos considers "In some examples, user 106 may desire to attach a free-floating virtual object, e.g., free-floating virtual object 130 shown in FIG. 1A, to a real-world surface in environment 100."
Poulos also does not consider transition according to the procedure steps claimed.
Parent Application 17/919,927
The claim limitations correspond to prior claim 14 indicated as allowable in the parent application.
No Teaching or Suggestion in the Art:
The cited prior art in combination does not teach or suggest all the limitations of the claim in context.
Additional Prior Art
Additional prior art relevant to Applicant’s disclosure but not relied upon:
Ozbek (US 2020/0085511) also consider surgical navigation in the same context.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN M GRAY whose telephone number is (571)272-4582. The examiner can normally be reached on Monday through Friday, 9:00am-5:30pm (EST).
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/RYAN M GRAY/Primary Examiner, Art Unit 2611
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