DETAILED ACTION
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
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.
Claims 1, 3-5, 9, 11-13, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-12, and 17 of U.S. Patent No. 12,272,005 (Patent ‘005, hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the features of current claims 1, 3-5, 9, 11-13, and 17 are already included in claims 1-4, 9-12, and 17 of Patent ‘005. See tables below.
Table I:
Current Application 19/071182
U.S. Patent No. 12,272,005
1, 3, 4, 5, 9, 11, 12, 13, 17,
1, 2, 3, 4, 9, 10, 11, 12, 17, respectively
Table II:
Current Application 19/071182
U.S. Patent No. 12,272,005
1. A method comprising:
at a first electronic device in communication with a display, one or more input devices, and a second electronic device:
while in a communication session with the second electronic device, displaying, via the display, a first three-dimensional environment including a visual representation of a user of the second electronic device;
while displaying the first three-dimensional environment including the visual representation of the user of the second electronic device, receiving, via the one or more input devices, a request from the second electronic device to share content with the first electronic device; and
in response to receiving the request:
in accordance with a determination that the request is accepted:
in accordance with a determination that the content shared with the first electronic device is a first type of content, displaying the content and the visual representation of the user of the second electronic device; and
in accordance with a determination that the content shared with the first electronic device is a second type of content, different from the first type of content, displaying the content without displaying the visual representation of the user of the second electronic device.
1. A method comprising:
at a first electronic device in communication with a display, one or more input devices, and a second electronic device:
while in a communication session with the second electronic device, presenting, via the display, a first computer-generated environment including an avatar corresponding to a user of the second electronic device;
while displaying the first computer-generated environment including the avatar corresponding to the user of the second electronic device, receiving, via the one or more input devices, a first indication corresponding to a request from the second electronic device to share content with the first electronic device; and
in response to receiving the first indication:
in accordance with a determination that the request is accepted:
in accordance with a determination that the content shared with the first electronic device is a first type of content:
replacing display of the first computer-generated environment with a second computer-generated environment corresponding to the content; and displaying the avatar corresponding to the user of the second electronic device in the second computer-generated environment; and
in accordance with a determination that the content shared with the first electronic device is a second type of content, different from the first type of content:
updating display of the first computer-generated environment to include a first object corresponding to the content; and
ceasing display of the avatar corresponding to the user of the second electronic device in the first computer-generated environment.
From the tables above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1-4, 9-12, and 17 of Patent ‘005 to be as current claims 1, 3-5, 9, 11-13, and 17 since the limitation avatar corresponding to the user in claims 1-4, 9-12, and 17 of Patent ‘005 is equivalent to the visual representation of the user of current claims 1, 3-5, 9, 11-13, and 17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hau H. Nguyen whose telephone number is: 571-272-7787. The examiner can normally be reached on MON-FRI from 8:30-5:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tammy Goddard, can be reached on (571) 272-7773.
The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAU H NGUYEN/Primary Examiner, Art Unit 2611
