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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This action is in response to the correspondence filed 05/20/2025.
Claims 21-40 are presented for examination.
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.
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Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-20 of U.S. Patent No. 12,271,494. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 21, 29 and 36 of the present application are anticipated by each of the limitations of claim 2/1 and 17/16.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21, 23 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200294293 A1 to Boenig, II et al. (hereinafter Boenig).
As to claim 21, Boenig teaches a method comprising: storing a digital asset on a blockchain (paragraph 46, virtual content including persistent augmented reality objects; paragraphs 53-55, virtual content is stored in the virtual content registry which can be embodied in a distributed ledger (e.g., using blockchain technology)) that includes a restriction how the digital asset plays in augmented reality (AR) to owners and non-owners of the digital asset (paragraph 57, a virtual content owner may also place access control restrictions on the virtual content to control which users can access which portions of virtual content … the wearer of an augmented reality device 410 would have to be registered with an appropriate access level by the owner or creator of the virtual content; paragraph 59, a virtual content creator who initially uploads virtual content to a virtual content registry 430 may assign one or more passcodes to the virtual content for accessing parts of the virtual content, therefore, the creator may distribute the passcodes to trusted users such that when a trusted user accesses the virtual content registry using the stored passcode, the augmented reality device 410 will be granted access to view the appropriate virtual content; paragraph 63, instructions may provide parameters set by the virtual content creator or owner of an AR tagged object 420 that may affect the presentation or access to virtual content); and executing the restriction stored on the blockchain to prohibit playing of the digital asset in the AR to the non-owners of the digital asset but allowing the digital asset to be played in the AR to the owners of the digital asset (paragraph 63, the instructions may provide parameters set by the virtual content creator or owner of an AR tagged object 420 that may affect the presentation or access to virtual content; wherein the instructions include whether access to the content is allowed to be played as discussed above in paragraphs 57 and 59).
As to claim 23, Boenig teaches further comprising: executing the restriction stored on the blockchain to prohibit playing of the digital asset in three-dimensions (3D) to the non-owners of the digital asset but allowing the digital asset to be played in the 3D to the owners of the digital asset (paragraph 63, instructions include details regarding the format of the presentation of the virtual content).
As to claim 28, Boenig teaches executing the restriction stored on the blockchain to prohibit playing of the digital asset in virtual reality (VR) to the non-owners of the digital asset but allowing the digital asset to be played in the VR to the owners of the digital asset (paragraph 63, instructions include details regarding the format of the presentation of the virtual content).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Boenig in view of US 20200342381 A1 to Panikkar et al. (hereinafter Panikkar).
As to claim 22, Boenig teaches selecting the restriction how the digital asset plays in the AR to the owners and the non-owners of the digital asset (paragraph 57, access control restrictions may be created in the blockchain context by utilizing tools that use blockchain to create permanent digital identifications, such as IBM's Blockchain Trusted Identity™ or a similar solution to identify the wearer of an augmented reality device 410 and verify what objects or virtual content they are allowed to access). Boenig does not explicitly teach creating the digital asset with an artificial intelligence (Al) program.
However, Panikkar teaches creating the digital asset with an artificial intelligence (Al) program (paragraph 20, applied data-driven artificial intelligence operation to derive an optimum digital asset fulfillment process flow as well as which digital asset entitlement attributes should be applied when fulfilling a particular digital asset).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig to include the method of deriving digital assets using an artificial intelligence program as taught by Panikkar in order to optimize efficiency and speed of creating digital assets while reducing human error.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Boenig in view of US 20180197624 A1 to Robaina et al. (hereinafter Robaina).
As to claim 24, Boenig teaches spatializing the digital asset into AR images in response to receiving a command from the owner of the digital asset (paragraph 63, displaying the virtual content in association with the physical object by the augmented reality device; paragraph 51, wherein the augmented reality device includes an augmented reality headset). Boenig does not explicitly teach receiving, at a wearable electronic device (WED) worn on a head of an owner of the digital asset, an eye command.
However, Robaina teaches receiving, at a wearable electronic device (WED) worn on a head of an owner of the digital asset, an eye command (paragraph 125, the wearable system may simply wait for a command from the user to generate more virtual content … the wearable system may then wait for the command (a gesture, a head or eye movement, input from a user input device, etc.)).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig to include the method of receiving user input comprising eye movement commands as taught by Robaina in order to eliminate additional input devices while using the AR headset, thus simplifying the usability of the AR system for the user.
As to claim 25, Robaina teaches receiving, at a wearable electronic device (WED) worn on a head of an owner of the digital asset, an eye command(paragraph 125, the wearable system may simply wait for a command from the user to generate more virtual content … the wearable system may then wait for the command (a gesture, a head or eye movement, input from a user input device, etc.)) and Boenig teaches spatializing the digital asset into binaural sound in response to receiving the eye command from the owner of the digital asset (paragraph 63, displaying the virtual content in association with the physical object by the augmented reality device; paragraph 51, wherein the augmented reality device includes an augmented reality headset; paragraph 63, wherein the control instructions include details regarding the format of the presentation of virtual content, such as a volume level for audio content or cause the augmented reality device 410 to change the audio and/or visual virtual content displayed by the augmented reality device).
Claims 29-31, 36 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Boenig in view of US 20200005284 A1 to Vijayan.
As to claims 29 and 36, Boenig teaches storing a restriction that prevents non-owners of the NFT from playing the digital asset in augmented reality (AR) but allows owners of the NFT to play the digital asset in the AR (paragraph 57, a virtual content owner may also place access control restrictions on the virtual content to control which users can access which portions of virtual content … the wearer of an augmented reality device 410 would have to be registered with an appropriate access level by the owner or creator of the virtual content; paragraph 59, a virtual content creator who initially uploads virtual content to a virtual content registry 430 may assign one or more passcodes to the virtual content for accessing parts of the virtual content, therefore, the creator may distribute the passcodes to trusted users such that when a trusted user accesses the virtual content registry using the stored passcode, the augmented reality device 410 will be granted access to view the appropriate virtual content; paragraph 63, instructions may provide parameters set by the virtual content creator or owner of an AR tagged object 420 that may affect the presentation or access to virtual content). Boenig does not explicitly teach tokenizing, with one or more electronic devices, a digital asset as a non- fungible token (NFT) on a blockchain.
However, Vijayan teaches tokenizing, with one or more electronic devices, a digital asset as a non- fungible token (NFT) on a blockchain (paragraphs 9, 11, 86 and 109, minting NFT’s which are associated with smart contracts including restrictions).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig to include the method of tokenizing the digital asset into an NFT as taught by Vijayan in order to provide enhanced security and optimal immutability for the digital asset.
As to claim 30, Boenig teaches executing the restriction that allows binaural sound to play to the owners of the NFT but prevents the non-owners of the NFT from hearing the binaural sound (paragraph 63, wherein the control instructions include details regarding the format of the presentation of virtual content, such as a volume level for audio content or cause the augmented reality device 410 to change the audio and/or visual virtual content displayed by the augmented reality device).
As to claim 31, Boenig teaches executing the restriction that prevents the non-owners of the NFT from playing the digital asset as images in AR but allows the owners of the NFT to play the digital asset as the images in AR (paragraph 63, details regarding the format of the presentation of virtual content, such as a volume level for audio content, whether the virtual content is static or changes in some way, and/or a size or shape of the virtual content to be displayed, which may be a function of the viewable size of the object (i.e., based on the location of the user relative to the object)).
As to claim 40, Boenig teaches wherein the restriction prevents the NFT from displaying in virtual reality (VR) to the non-owners of the NFT but allows the NFT to display in the VR to the owners of the NFT (paragraph 63, instructions include details regarding the format of the presentation of the virtual content).
Claims 26, 27, 33-35 and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Boenig in view of Vijayan in further view of Robaina.
As to claims 26, 35 and 39, Boenig teaches a graphical representation being displayed with a wearable electronic device worn on a head of an owner of the digital asset (paragraph 63, displaying the virtual content in association with the physical object by the augmented reality device; paragraph 51, wherein the augmented reality device includes an augmented reality headset). Boenig does not explicitly teach tokenizing the digital asset into a non-fungible token (NFT) on the blockchain.
However, Vijayan teaches tokenizing the digital asset into a non-fungible token (NFT) on the blockchain (paragraphs 9, 11, 86 and 109, minting NFT’s which are associated with smart contracts including restrictions).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig to include the method of tokenizing the digital asset into an NFT as taught by Vijayan in order to provide enhanced security and optimal immutability for the digital asset.
Boenig and Vijayan do not explicitly teach receiving a single click on a graphical representation being displayed with a wearable electronic device (WED) worn on a head of an owner of the digital asset.
However, Robaina teaches receiving a single click on a graphical representation being displayed with a wearable electronic device (WED) worn on a head of an owner of the digital asset (paragraph 125, the wearable system may simply wait for a command from the user to generate more virtual content … the wearable system may then wait for the command (a gesture, a head or eye movement, input from a user input device, etc.) (paragraph 58, cameras 24 for monitoring eyes)).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig and Vijayan to include the method of receiving user input commands as taught by Robaina in order to eliminate additional input devices while using the AR headset, thus simplifying the usability of the AR system for the user.
As to claims 27, 33 and 38, Robaina teaches tokenizing (Vijayan, paragraphs 9, 11, 86 and 109 as discussed above) the digital asset as a non-fungible token (NFT) on the blockchain that stores the restriction in response to receiving an eye command at a wearable electronic device (WED) worn on a head of an owner of the digital asset (paragraph 125, the wearable system may simply wait for a command from the user to generate more virtual content … the wearable system may then wait for the command (a gesture, a head or eye movement, input from a user input device, etc.)).
As to claims 34 and 37, Boenig teaches spatializing the digital asset into AR images in response to receiving a command from the owner of the digital asset (paragraph 63, displaying the virtual content in association with the physical object by the augmented reality device; paragraph 51, wherein the augmented reality device includes an augmented reality headset) and Robaina teaches receiving, at a wearable electronic device (WED) worn on a head of an owner of the digital asset, an eye command (paragraph 125, the wearable system may simply wait for a command from the user to generate more virtual content … the wearable system may then wait for the command (a gesture, a head or eye movement, input from a user input device, etc.) (paragraph 58, cameras 24 for monitoring eyes)).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Boenig in view of Vijayan in further view of Panikkar.
As to claim 32, Boenig teaches selecting the restriction how the digital asset plays in the AR to the owners and the non-owners of the digital asset (paragraph 57, access control restrictions may be created in the blockchain context by utilizing tools that use blockchain to create permanent digital identifications, such as IBM's Blockchain Trusted Identity™ or a similar solution to identify the wearer of an augmented reality device 410 and verify what objects or virtual content they are allowed to access). Boenig and Vijayan do not explicitly teach creating the digital asset with an artificial intelligence (Al) program.
However, Panikkar teaches creating the digital asset with an artificial intelligence (Al) program (paragraph 20, applied data-driven artificial intelligence operation to derive an optimum digital asset fulfillment process flow as well as which digital asset entitlement attributes should be applied when fulfilling a particular digital asset).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Boenig and Vijayan to include the method of deriving digital assets using an artificial intelligence program as taught by Panikkar in order to optimize efficiency and speed of creating digital assets while reducing human error.
Conclusion
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MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/Primary Examiner, Art Unit 2497
