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.
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Claims 1, 5, 12, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 7 of U.S. Patent No. 12296255B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the U.S. patent describe using generative AI to generate a script for lighting effects used in an animation on a digital canvas in which the lighting effects are mirrored on end devices. The claim language between the instant application and the U.S. patent have with only minor differences, which are not patently distinct each other.
For example, in claim 1 of the current application recites the limitation of, “a generative AI model configured to receive a user prompt describing a spatial lighting effect;” which is more specific than claim of the U.S. patent, “a generative AI model configured for receiving a user prompt;”. However, U.S. patent later recites “generate a script instructing spatial effects across the LEPD based on the received prompt by the generative model;” in which LEPD stands for “light-emitting peripheral device” thus implying that the user prompt would be one that describes spatial lighting effects.
Another example in claim 1 includes the U.S. patent defining that the end device (E-D) is a light-emitting peripheral device (LEPD) and wherein the LEPD is a RGB-keyboard. Because the U.S. patent already claimed a specific species for the end devices, while the instant application claims the broader genus of just end devices, even though the claim language different, the U.S. patent would anticipate the instant application’s claim limitation of end devices.
Claim Mapping between the current application and the U.S. Patent No. 12296255B2
Current Application
1
5
12
15
U.S. Patent No. 12296255B2
1
7
1
7
Below is a Limitation Mapping between Claim 1 of the current application and Claim 1 of U.S. Patent No. 12296255B2
Current Application
U.S. Patent No. 12296255B2
A system for generative AI-prompting end-device effects, said system comprising:
one or more end devices;
A system for generative AI-prompting end-device effects, said system comprising: at least one end-device (E-D) in communication with at least a first device (D1) outputting audio/video (a/v) programming;
a generative AI model configured to receive a user prompt describing a spatial lighting effect;
a generative AI model configured for receiving a user prompt;
a processor; and a memory element coupled to the processor, storing a program, wherein the program is executable by the processor to:
a processor; a memory element coupled to the processor; a program executable by the processor to:
position virtual representations of the one or more end devices;
position a virtual representation of the E-D on a digital canvas displayed on a D1-coupled display representing a user's physical space, wherein the E-D is a light-emitting peripheral device (LEPD);
generate, based on the user prompt, a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices; and
trigger lighting effects on the one or more end devices based on the lighting control instructions of the generated script, wherein the lighting effects are coordinated to mirror the animation of the digital canvas.
generate a script instructing spatial effects across the LEPD based on the received prompt by the generative model;
and mirror an effect on the LEPD corresponding to the canvas-positioned LEPD animated by the generated script, wherein the LEPD is a RGB-keyboard.
Below is a Limitation Mapping between Claim 12 of the current application and Claim 1 of U.S. Patent No. 12296255B2
Current Application
U.S. Patent No. 12296255B2
A system for generative AI-prompting end-device effects, said system comprising:
one or more end devices;
A system for generative AI-prompting end-device effects, said system comprising: at least one end-device (E-D) in communication with at least a first device (D1) outputting audio/video (a/v) programming;
a generative AI model configured to receive a user prompt describing a spatial lighting effect;
a generative AI model configured for receiving a user prompt;
a processor; and a memory element, coupled to the processor, storing a program, wherein the program is executable by the processor to:
a processor; a memory element coupled to the processor; a program executable by the processor to:
position a virtual representation of the E-D on a digital canvas displayed on a D1-coupled display representing a user's physical space, wherein the E-D is a light-emitting peripheral device (LEPD);
generate, based on the user prompt, a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices; and
trigger lighting effects on the one or more end devices based on the lighting control instructions of the generated script, wherein the lighting effects are coordinated to mirror the animation of the digital canvas.
generate a script instructing spatial effects across the LEPD based on the received prompt by the generative model;
and mirror an effect on the LEPD corresponding to the canvas-positioned LEPD animated by the generated script, wherein the LEPD is a RGB-keyboard.
Claims 3-4, 7-11, 14, and 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12296255B2 in view of CalcProgrammer1 (“Keyboard Visualizer and OpenRGB 0.4 Tutorial and Demo”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Patent No. 12296255B2 with CalcProgrammer1 to include limitations related to the digital canvas such as animations, and the physical end devices that mirror the lighting effects of the digital canvas.
The motivation to combine U.S. Patent No. 12296255B2 with CalcProgrammer1 would have been obvious as both arts are within the same field of manipulating lighting effects for end devices and having a mirroring animations on a digital canvas (See CalcProgrammer1 6:40-6:45). CalcProgrammer1 simply teaches that there is a known application that can accomplish the features of lighting up end devices like RBG Keyboards.
Claim Mapping between the current application and the U.S. Patent No. 10628907B2
Current Application
3
4
7
8
9
U.S. Patent No. 10628907B2
1 and CalcProgrammer1 (See 6:40-6:45)
1 and CalcProgrammer1 (See 6:40-6:45)
1 and CalcProgrammer1
(See 6:40-6:45)
1 and
CalcProgrammer1
(See 3:07-3:20)
1 and
CalcProgrammer1
(See 6:40-6:45)
Current Application
10
11
14
18
U.S. Patent No. 10628907B2
1 and
CalcProgrammer1 (See 6:30 – 6:35)
1 and
CalcProgrammer1 (See 6:30 – 6:35)
1 and
CalcProgrammer1 (See 6:30 – 6:35)
1 and
CalcProgrammer1
(See 6:40-6:45)
Current Application
19
20
21
22
U.S. Patent No. 10628907B2
1 and
CalcProgrammer1
(See 3:07-3:20)
1 and
CalcProgrammer1
(See 6:40-6:45)
1 and
CalcProgrammer1
(See 3:07-3:20)
1 and
CalcProgrammer1
(See 3:07-3:20)
Claims 2 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12296255B2 in view of ETC, (“01.5 Virtual Effect Layers”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Patent No. 12296255B2 with ETC to include a virtual effects layers which is independent of other media content.
The motivation to combine U.S. Patent No. 12296255B2 with ETC would have been obvious as ETC teaches that a digital canvas can have multiple layers (See 0:01 – 0:58). In particular, ETC describes a content layer as well as a virtual effects layer, which can be used to simulate a virtual scene for a screen in events like a band performance. Thus, a benefit of including something like a virtual effects layer would be that it allows for more creative options for users.
Claim Mapping between the current application and the U.S. Patent No. 10628907B2
Current Application
2
13
U.S. Patent No. 10628907B2
1 and ETC (See 0:01 – 0:58)
1 and ETC (See 0:01 – 0:58)
Claims 6 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12296255B2 in view of Singh et al. (US 20240296314 A1) (Hereinafter referred to as Singh).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Patent No. 12296255B2 with Singh to include limitations related to the generative AI model and how it parses and tokenizes the user prompt.
The motivation to combine U.S. Patent No. 12296255B2 with Singh would have been obvious as both arts are within the same field of generative AI (See Singh Abstract). Singh simply teaches that the technique to semantically parse and tokenize the user prompt are standard practices within the field and are well-known.
Claim Mapping between the current application and the U.S. Patent No. 10628907B2
Current Application
6
16
17
U.S. Patent No. 10628907B2
1 and
Singh (See [0095])
1 and
Singh (See [0095])
1 and Singh (See [0041])
Allowable Subject Matter
Claims 1-22 allowed over prior art.
Reasons For Allowance
It should be noted that the current application is a continuation-in-part (CIP) and claims priority to prior CIPs. These prior art references are considered based on the filing date of 06/23/2023, which is the effective filing date of the claimed priority application of App No. 18/213,625 which is where the limitations incorporating generative AI were first introduced.
The following is an examiner’s statement of reasons for allowance:
Regarding Claim 1, the closest prior art, reference Li et al. (US 20170061696 A1) (Hereinafter referred to as Li), teaches
A system for end-device effects, said system comprising: (See [0196], “The computer-readable recording medium may be any recording apparatus capable of storing data that is read by a computer system.”)
one or more end devices; (See [0083], “A method of displaying a physical keyboard in the virtual reality display apparatus 200.”),
a processor; and a memory element coupled to the processor, storing a program, wherein the program is executable by the processor to: (See [0048], “. . . include a random access memory (RAM) . . . a read-only memory (ROM) that stores a control program for controlling peripheral devices, and a processor.”),
position virtual representations of the one or more end devices; (See [0117], “According to an exemplary embodiment, the virtual reality display apparatus 200 may overlay the physical keyboard on the virtual reality image, or display the physical key board as a picture-in-picture image.” Also see Fig. 4 showing the steps of 420 and 430.)
However, Li fails to explicitly disclose
A system for generative AI-prompting end-device effects, said system comprising:
a generative AI model configured to receive a user prompt describing a spatial lighting effect;
generate, based on the user prompt, a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices; and
trigger lighting effects on the one or more end devices based on the lighting control instructions of the generated script, wherein the lighting effects are coordinated to mirror the animation of the digital canvas.
The combination of Li in view of CalcProgrammer1 (“Keyboard Visualizer and OpenRGB 0.4 Tutorial and Demo”) would teach
one or more end devices; (See CalcProgrammer1 6:40-6:45 showing a physical RBG keyboard.)
position virtual representations of the one or more end devices; (See CalcProgrammer1 6:40-6:45 showing a virtual representation the keyboard.)
a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices; and (See CalcProgrammer1 3:07 showing an interface in which a user can enter animation instructions for a digital canvas and lighting control instructions for end devices like an RGB keyboard.)
trigger lighting effects on the one or more end devices based on the lighting control instructions of the script, wherein the lighting effects are coordinated to mirror the animation of the digital canvas. (See CalcProgrammer1 6:40-6:45 showing a virtual and a physical keyboard in which lighting effects are triggered based on the lighting control instructions and the lighting effects are coordinated to mirror the animation of the digital canvas.)
However, Li in view of CalcProgrammer1 still fails to explicitly disclose
A system for generative AI-prompting end-device effects, said system comprising:
a generative AI model configured to receive a user prompt describing a spatial lighting effect;
generate, based on the user prompt, a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices;
The combination of Li in view of CalcProgrammer1 and Singh et al. (US 20240296314 A1) (Hereinafter referred to as Singh) would teach
A system for generative AI-prompting end-device effects, said system comprising: (See Singh Abstract, “A generative artificial intelligence (AI) model application programming interface (API) receives a generative AI request and routes the generative AI request to a generative AI model.”)
one or more end devices; (See Singh [0120], “In addition to the monitor, computers may also include other peripheral output devices such as speakers 897 and printer 896, which may be connected through an output peripheral interface 895.”)
a generative AI model configured to receive a user prompt (See Singh [0002], “Large language models receive a request or prompt and generate an output based on the request or prompt.”)
generate, based on the user prompt, a response. (See Singh [0002], “The operation of generating the output can take a variety of different forms. For instance, when the generative AI model is deployed as part of a chatbot, then the generated output is an interactive output that responds to a user chat input.”)
However, the above prior arts alone nor in combination fails to teach specifically the limitations of “a generative AI model configured to receive a user prompt describing a spatial lighting effect;” and “generate, based on the user prompt, a script comprising animation instructions for a digital canvas and lighting control instructions for the one or more end devices; and trigger lighting effects on the one or more end devices based on the lighting control instructions of the generated script, wherein the lighting effects are coordinated to mirror the animation of the digital canvas.” Although CalcProgrammer1 does teach having an interface in which parameters can be entered (a script would be implied) that controls animation instructions for a digital canvas and lighting control instructions for the one or more end devices and Singh et al. teaches a generative model that generates an output based on a user prompt, the combination still does not explicitly teach using the generative model in such a way as to generate specifically a script for the animation of a digital canvas and lighting controls for one or more end devices and triggering the effects and animations in a coordinated manner.
Other independent Claim 12 are allowable for the same reason as set forth above.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANG G HUYNH whose telephone number is (571)272-5432. The examiner can normally be reached Mon-Thu 7:30am-4:30pm EST | Fri 7:30am-11:30am EST.
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/T.G.H./Examiner, Art Unit 2611
/KEE M TUNG/Supervisory Patent Examiner, Art Unit 2611
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