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 .
The following FINAL Office Action is in response to Applicant’s communication filed 07/29/2026 regarding Application 19/071,456.
Status of Claim(s)
Claim(s) 1-20 is/are currently pending and are rejected as follows.
Response to Arguments – Double Patenting
Applicant’s arguments regarding the previously applied double patenting rejection have been fully considered but are not deemed persuasive.
Applicant argues that the currently amended claims recite do not recite or require receiving an interaction input form the replay view and presenting the label only in response to the input, and therefore the claims are not identical subject mater to cited ‘839 claims, and is not subject to a double patenting rejection.
Examiner does not find the argument persuasive as the amended claims still recite claims with different material but are still directed to the same inventive concept. The explicit content of the amended portion of the claims does not render the claims eligible as the input as disclosed by Applicant in the specification (Paragraph [0095]) does not limit what is reasonable to be interpreted as an input, and is not limited to a significant action upon the user to cause the invention to “display the label”. Further the recited timing of the replay for displaying the label constitutes an example of a rearrangement of parts, and is insufficient in amending the claims to be patentably distinct despite not being identical. Therefore the claims remain ineligible. Further elaboration regarding this determination is given in the double patenting rejection below.
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.
Claim(s) 1, 18, and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 18, and 20 of U.S. Patent No. US 12,271,839 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite subject matter that is either identical or would be obvious to one of ordinary skill in the art to be a rearrangement of parts of the granted patent. Citations are given below:
maintaining attendance data, wherein the attendance data describes remote attendance of a first attendee at an event at a first time, and wherein the attendance data is maintained in association with an identifier of the first attendee in a participant registration data store; (Palazzo: Claim(s) 1, 18, and 20, “creating attendance data describing remote attendance of a first attendee at an event at a first time; maintaining the attendance data in association with an identifier of the first attendee in a participant registration data store;”)
presenting a replay of the event to a second attendee at a second time that is later than the first time, the presenting comprising accessing the attendance data in the participant registration data store to determine that the first attendee attended the event at the first time, and representing the first attendee in the replay of the event as attending the event, wherein the first attendee is represented in the replay of the event by an avatar, wherein the avatar is shown with a label identifying the first attendee only in a case that the first attendee is a social media contact of the second attendee, wherein the label indicates in text form that the first attendee had been an original attendee, and wherein the label is presented only in response to an interaction input received from the second attendee while the replay is being presented; and (Palazzo: Claim(s) 1, 18, and 20, “presenting a replay of the event to a second attendee at a second time that is later than the first time, the presenting comprising accessing the attendance data in the participant registration data store to determine that the first attendee attended the event at the first time, and representing the first attendee in the replay of the event as attending the event, wherein the first attendee is represented in the replay of the event by an avatar, wherein the avatar is shown with a label identifying the first attendee only in a case that the first attendee is a social media contact of the second attendee, and wherein the label indicates in text form that the first attendee had been an original attendee; and”; the rearrangement of parts is rendered obvious to one of ordinary skill in the art as disclosed in Column 5 lines 9-32, “As shown in FIG. 3, another remote attendee of the live event, user 2 with a similar virtual reality viewer 302 and program 304, would see in User 2's view 300, for instance, an avatar 330 that represents Betsy and emulates her attendance as “in-person” during the live event, (to an extent, as the avatar is not generally seen as a real person). The avatar 330 can include a digital representation 230 (FIG. 2), which can be a face, an image, a more complete or complete avatar, e.g., provided by Betsy; (although shown as saved repeatedly for each timestamp t1, t2 and t3, it is alternatively feasible to store the image elsewhere and maintain links to the image). The avatar may be accompanied with a text label, such as Betsy's name, to help others in identifying her. Note that a user may need to interact to see such a label, as in a large audience the view would be inundated with such labels, and/or the size of the audience can be used to determine how to display labeling, and/or some limits can be used (a viewer can only see labels for attendees that are also his social media contacts). Note that Betsy's view 100 (FIG. 1) does not include the representation of her shown to herself. It is alternatively feasible, however, to offer a view that does show Betsy to herself, e.g., to visually confirm to Betsy that she is properly registered as attending.”)
responsive to receiving input from the first attendee, modifying the attendance data, that corresponds to the first attendee and that is in the participant registration data store, into an encrypted form with a decryption key only known to the first attendee. (Palazzo: Claim(s) 1, 18, and 20, “responsive to receiving input from the first attendee, modifying the attendance data, that corresponds to the first attendee and that is in the participant registration data store, into an encrypted form with a decryption key only known to the first attendee.”)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Philip N Warner whose telephone number is (571)270-7407. The examiner can normally be reached Monday-Friday 7am-4:00pm.
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, Jerry O’Connor can be reached at 571-272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Philip N Warner/Examiner, Art Unit 3624
/Jerry O'Connor/Supervisory Patent Examiner,Group Art Unit 3624
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