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 .
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 1-20 have been interpreted under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) to invoke 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) claim interpretation as follows.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“the second system is configured to provide second location data, the second location data relating a position of the second user to a position of a second virtual session handle of the session.” in claims 1, 14, and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Refer to all sections of MPEP 2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation [R-07.2022]
Claim Objections
Claim 18 is objected to because of the following informalities: claim 18 claims “the first system” which lacks antecedent basis. Note parent claim 14 claims “system” and “second system” but does not claim “first system”. Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,315,094. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claims differ by interchanging providing and receiving. For example the US patent’s method claim 1 claims “providing persistent coordinate data to a first system comprising a first wearable head device” and pending claim 1 claims “receiving, at a first system comprising a first wearable head device, persistent coordinate data”. Either claim language covers the same method of providing data to a system and receiving data at the system. Either claim language has overlapping claim coverage. Either claim language covers a multitude of species which overlap. Therefore, the word smithing of interchanging providing and receiving has resulted in obvious collections of words covering the overlapping methods. Thus, the pending claims are obvious variations of the patented method.
Regarding system claims 14-19 and non-transitory computer-readable medium claim 20: drafting system claim versions of method claims and non-transitory computer-readable medium claims would have been obvious since this type of claim drafting is routine and ordinary.
Regarding method claim 12 and system claim 19: these claims are obvious variations of patented claim 4 since it would have been obvious to draft a claim which in addition to a claim(s) covering first virtual handle to have a claim(s) covering second virtual handle by claiming second relational data to more completely claim a multi-user system.
Regarding method claim 13: this claim is an obvious variation of patented claim 3 which covers the second system is provided with input since it would have been obvious to draft a claim which in addition to a claim covering input from a second user but also have a claim covering input from a first user by claiming transmitting input from the first user to the second system to more completely claim a multi-user system.
Refer to the following two tables. The first table, Table 1, which correlates pending claims to patented claims and the second table, Table 2, which compares patented method claims 1-11 with the pending method, system, and non-transitory computer-readable medium claims.
Table 1
This app’s claims
1
2
3
4
5
6
U.S. Patent No. 12,315,094
1
2
3
4
5
6
This app’s claims
7
8
9
10
11
12
U.S. Patent No. 12,315,094
7
8
9
10
11
4
This app’s claims
13
14
15
16
17
18
U.S. Patent No. 12,315,094
3
1
2
5
9
10
This app’s claims
19
20
U.S. Patent No. 12,315,094
4
1
Table 2
US Patent No.12,315,094 method claims compared with pending method, system, and non-transitory computer-readable medium claims filed on 04/21/2025
US Patent No 12,315,094 methods claims 1-11
1. A method comprising:
providing persistent coordinate data to a first system comprising a first wearable head device, the first wearable head device comprising a transmissive display, the first system having a first user;
receiving first location data from the first system, wherein the first location data relates a position of the first user to a position of a first virtual session handle of a session;
receiving second location data from a second system comprising a second wearable head device, the second system having a second user, wherein the second location data relates a position of the second user to a position of a second virtual session handle of the session; and
providing first relational data to the first system, wherein the first relational data relates a first position of a virtual object to be presented on the transmissive display to the position of the first virtual session handle, wherein the session comprises data associated with the first user and further comprises data associated with the second user.
Following is from a portion of patented claim 1 above:
receiving second location data from a second system comprising a second wearable head device, the second system having a second user, wherein the second location data relates a position of the second user to a position of a second virtual session handle of the session; and
2. The method of claim 1, further comprising providing second relational data to the first system, wherein the second relational data relates a second position of the virtual object to the position of the first virtual session handle.
3. The method of claim 2, further comprising receiving an input from the second user, wherein the second relational data is provided in response to receiving the input from the second user.
4. The method of claim 2, wherein the second relational data is provided to the first system in response to receiving an input from the first user.
5. The method of claim 1, further comprising:
storing, in a memory at a first time, a session instance comprising the first position of the virtual object; and
retrieving, from the memory at a second time later than the first time, the session instance.
6. The method of claim 5, wherein a server remote to the first wearable head device comprises the memory.
7. The method of claim 5, wherein the method further comprises encrypting the session instance prior to storing the session instance in the memory.
8. The method of claim 1, further comprising receiving user identification data from the first system.
9. The method of claim 1, wherein the virtual object is associated with a capability of the session.
10. The method of claim 1, wherein providing the first relational data to the first system comprises providing the first relational data via an application connectivity platform, the application connectivity platform in communication with the first system and the second system.
11. The method of claim 10, wherein the application connectivity platform provides a low-latency communication pathway between the first system and the second system.
4. The method of claim 2, wherein the second relational data is provided to the first system in response to receiving an input from the first user.
3. The method of claim 2, further comprising receiving an input from the second user, wherein the second relational data is provided in response to receiving the input from the second user.
claims filed on 04/21/2025
method claims
1. A method comprising:
receiving, at a first system comprising a first wearable head device, persistent coordinate data, the first wearable head device comprising a transmissive display, the first system having a first user;
providing, from the first system, first location data, wherein the first location data relates a position of the first user to a position of a first virtual session handle of a session; and
receiving, at the first system, first relational data, wherein the first relational data relates a first position of a virtual object to be presented on the transmissive display to the position of the first virtual session handle, wherein:
the session comprises data associated with the first user and further comprises data associated with a second user of a second system, the second system comprising a second wearable head device, and the second system is configured to provide second location data, the second location data relating a position of the second user to a position of a second virtual session handle of the session.
2. The method of claim 1, further comprising receiving, at the first system, second relational data, wherein the second relational data relates a second position of the virtual object to the position of the first virtual session handle.
3. The method of claim 2, wherein the second relational data is provided in response to an input from the second user.
4. The method of claim 2, wherein the second relational data is provided in response to an input from the first user.
5. The method of claim 1, wherein:
a session instance is stored in a memory at a first time, the session instance comprising the first position of the virtual object; and
the session instance is retrievable from the memory at a second time later than the first time.
6. The method of claim 5, wherein a server remote to the first wearable head device comprises the memory.
7. The method of claim 5, wherein the session instance is encrypted prior to storing the session instance in the memory.
8. The method of claim 1, further comprising receiving, at the first system, user identification data.
9. The method of claim 1, wherein the virtual object is associated with a capability of the session.
10. The method of claim 1, wherein the first relational data is received via an application connectivity platform, the application connectivity platform in communication with the first system and the second system.
11. The method of claim 10, wherein the application connectivity platform provides a low-latency communication pathway between the first system and the second system.
12. The method of claim 1, wherein in response to an input from the first user, the position of the first virtual session handle of the session is updated.
13. The method of claim 12, further comprising transmitting the input to the second system.
claims filed on 04/21/2025
system claims
14. A system comprising:
a first wearable device comprising a transmissive display; and
one or more processors configured to perform a method comprising:
receiving persistent coordinate data, wherein the system has a first user;
providing first location data, wherein the first location data relates a position of the first user to a position of a first virtual session handle of a session; and
receiving first relational data, wherein the first relational data relates a first position of a virtual object to be presented on the transmissive display to the position of the first virtual session handle, wherein:
the session comprises data associated with the first user and further comprises data associated with a second user of a second system, the second system comprising a second wearable head device, and the second system is configured to provide second location data, the second location data relating a position of the second user to a position of a second virtual session handle of the session.
15. The system of claim 14, wherein the method further comprises receiving second relational data, wherein the second relational data relates a second position of the virtual object to the position of the first virtual session handle.
16. The system of claim 14, wherein:
a session instance is stored in a memory at a first time, the session instance comprising the first position of the virtual object; and
the session instance is retrievable from the memory at a second time later than the first time.
17. The system of claim 14, wherein the virtual object is associated with a capability of the session.
18. The system of claim 14, wherein the first relational data is received via an application connectivity platform, the application connectivity platform in communication with the first system and the second system.
19. The system of claim 14, wherein in response to an input from the first user, the position of the first virtual session handle of the session is updated.
claims filed on 04/21/2025
non-transitory computer-readable medium claims
20. A non-transitory computer-readable medium storing instructions that, when executed by one or more processors, cause the one or more processors to perform a method comprising:
receiving, at a first system comprising a first wearable head device, persistent coordinate data, the first wearable head device comprising a transmissive display, the first system having a first user;
providing, from the first system, first location data, wherein the first location data relates a position of the first user to a position of a first virtual session handle of a session; and
receiving, at the first system, first relational data, wherein the first relational data relates a first position of a virtual object to be presented on the transmissive display to the position of the first virtual session handle, wherein:
the session comprises data associated with the first user and further comprises data associated with a second user of a second system, the second system comprising a second wearable head device, and the second system is configured to provide second location data, the second location data relating a position of the second user to a position of a second virtual session handle of the session.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Arora et al., US Patent Application Publication No. 2021/0043005, describes first/second users 1402/1404 approach(es) virtual marker 1406 which initiates a SIG playback session, refer to paragraph [0090]. Arora et al. is silent with regards to a first user approaching a first virtual marker and a second user approaching a second marker.
Allowable Subject Matter
Claims 1-13 and 15-20 would be allowable if a proper terminal disclaimer is filed and claim 14 would be allowable if rewritten or amended to overcome the claim objection set forth in this Office action and if a proper terminal disclaimer is filed.
The following is a statement of reasons for the indication of allowable subject matter:
Similar to the reasons for allowance in the office action having mailed date of 03/19/2025 in parent 18/513,443 which matured into US Patent 12,315,094 the prior art of record fails to teach or suggest in the context of each of independent claims 1, 14, and 20:
providing, from the first system, first location data, wherein the first location data relates a position of the first user to a position of a first virtual session handle of a session; and
receiving, at the first system, first relational data, wherein the first relational data relates a first position of a virtual object to be presented on the transmissive display to the position of the first virtual session handle, wherein:
the session comprises data associated with the first user and further comprises data associated with a second user of a second system, the second system comprising a second wearable head device, and
the second system is configured to provide second location data, the second location data relating a position of the second user to a position of a second virtual session handle of the session (emphasis added).
For example while Arora et al., US Patent Application Publication No. 2021/0043005, describes first/second users 1402/1404 approach(es) virtual marker 1406 which initiates a SIG playback session, refer to paragraph [0090], Arora et al. is silent with regards to a first user approaching a first virtual marker and a second user approaching a second marker. The virtual marker is analogous to the claimed virtual handle, however, Arora et al. fails to teach or suggest first and second relational data corresponding to respective first and second virtual markers relating to respective first and second users.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A BRIER whose telephone number is (571)272-7656. The examiner can normally be reached on Mon-Fri from 8:30am-3:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao M Wu, can be reached at telephone number 571-272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JEFFERY A. BRIER
Primary Examiner
Art Unit 2613
/JEFFERY A BRIER/Primary Examiner, Art Unit 2613
