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 . All the claims have been examined on the basis of the merit of the claims.
Priority
The present application is a continuation of 18/607296 filed 03/15/2024 now patent 12411542 which claims priority from provisional applications: 63/453045 filed 03/17/2023; 63/453333 filed 03/20/2023; 63454937 filed 03/27/2023 and 63/496677 filed 03/15/2024. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/04/2026 is considered and attached.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Applicant argues “for example, in rejecting claims 3, 4, and 6 as previously presented, the Office did not identify any of the cited references as disclosing any of the aforementioned features. See, e.g., Office Action, pages 9-10 and 13-14. And indeed, none of the cited references discloses or suggests any of these features. Accordingly, claim 1 is neither anticipated by Chi, nor render obvious in view of Chi and/or Connor. Therefore, the rejections of claim 1 and its dependent claims should be withdrawn, and the claims should be allowed. As amended, claim 11 recites similar subject matter as in claim 1. Therefore, for at least similar reasons as those discussed in connection with claim 1, the rejections of claim 11 and its dependent claims also should be withdrawn and the claims should be allowed.”
Examiner respectfully disagrees. The claimed limitations appear in an alternative clause and therefore examiner reads only one limitation. See the underlined. Claim 1, in part recites “wherein the output data comprises at least one of (This limitation appears in an “one of” clause, therefore only the following one is read): at least one of a size or a fit of the item of interest (only this limitation is read. Fig.10b, SIZE information 1014),
an indication of at least one article of clothing to complement the item of interest,
a distance between (i) a retailer offering the item of interest for purchase and (ii) the user,
a shipping item associated with the item of interest by the retailer, or a recipe having the item of interest as an ingredient.
presenting, using the output device, at least a portion of the output data to the user (displayed on the image 1002 or outputs an AR image 612 corresponding to the selected object through the display unit)).
Accordingly, the arguments are not persuasive because they are not commensurate with the scope of the claims. The independent claim 11 is rejected by same rationale.
It is noted that the applicant does not argue reading interpretations of alternative clauses. Throughout the office action wherever the claimed limitations appear in an alternative or “one of” or “or” clauses, examiner has read only one or one of the limitations.
Additionally, it is noted that applicant does not substantively argue in regard to the double patenting rejection and as such it is maintained.
Accordingly, the rejection is sustained and made final.
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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 10-16 and 20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims of U.S. Patent No. 12411542 as outlined in the table below. Although the claims at issue are not identical, they are not patentably distinct from each other because they are anticipated by the patented claims.
Present application
U.S. Patent No. 12411542
Claim 1
Claim 23
Claim 2
Claim 1
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 6
Claim 6
Claim 7
Claim 10
Claim 1
Claim 11
Claim 24
Claim 12
Claim 1
Claim 13
Claim2
Claim 14
Claim 3
Claim 15
Claim 6
Claim 16
Claim 7
Claim 20
Claim 24
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-3, 5-7, 10-13, 15-17 and 20 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by CHI et al. (US-20180136465-A1, hereinafter as CHI).
In regard to claims 1, 11, CHI discloses a system, One or more non-transitory computer-readable media storing instructions (para 0105, various embodiments described herein may be implemented in a computer-readable medium, a machine-readable medium, or similar medium using, for example, software, hardware, or any combination thereof), comprising: one or more image sensors; one or more microphones; an output device; at least one processor; and memory storing instructions that, when executed by the at least one processor, cause the at least one processor to perform a set of operations (fig.1, controller includes a display unit 151, para 0048, the input unit 120 includes a camera 121 for obtaining images or video, a microphone 122) comprising: generating, using the one or more image sensors, image data regarding an environment of a user; determining, based on the image data, an item of interest in the environment of the user (para 0030, figs. 3a-3e, in the mobile terminal and a controlling method thereof according to the present disclosure, an image of an object or product in which a user was interested in an actual environment is marked through a VR screen); receiving, using the one or more microphones, a user input from the user, wherein the user input comprises a command with respect to the item of interest, and wherein the command comprises a request for information regarding the item of interest (para 0180, fig. 6, if a third unput (e.g. a predetermined voice command..) for selecting a corresponding object is received in the state in which the image object 611 is marked as described above, the controller 180 may select corresponding object and); performing, using one or more machine learning models, the command with respect to the item of interest, wherein performing the command comprises generating output data using the one or more machine learning models, and wherein the output data (outputs an AR image 612 corresponding to the selected object through the display unit) comprises at least one of: “wherein the output data comprises at least one of (This limitation appears in an “one of” clause, therefore only the following one is read): at least one of a size or a fit of the item of interest (only this limitation is read. Fig.10b, SIZE information 1014),
an indication of at least one article of clothing to complement the item of interest,
a distance between (i) a retailer offering the item of interest for purchase and (ii) the user,
a shipping item associated with the item of interest by the retailer, or a recipe having the item of interest as an ingredient.
presenting, using the output device, at least a portion of the output data to the user (displayed on the AR image 1002 or outputs an AR image 612 corresponding to the selected object through the display unit) These limitations appearing in an “or” or alternative or “at least one of” clause is not read).
In regard to claim 2, CHI discloses the system of claim 1, wherein the output data comprises at least one of (limitations appearing in an “or” or alternative or “at least one of” clause): an identity of the item of interest (only this limitation is read. Para 0180, a direction (e.g., a ‘speech bubble’) in which the selected object is located and a product name (e.g., ‘product 1’) of the selected object may be marked on the AR image 612. The product name is considered as an identity code), or at least one of a make or a model of the item of interest.
In regard to claim 3, CHI discloses the system of claim 1, wherein the output data comprises at least one of (limitations appearing in an “or” or alternative or “at least one of” clause): at least one of the size or the fit of the item of interest, at least one of the color (only this limitation is read. Fig. 10b, color, size or price, Para [0181] the controller 180 may store, in the memory 170, information related to the selected object, e.g., at least one of a position at which the selected object is located, a user's visiting time, and corresponding product information (e.g., quantity information, color information, information related to purchase, etc.).) or the style of the item of interest, the indication of at least one article of clothing to complement the item of interest.
In regard to claim 5, CHI discloses the system of claim 1, wherein the output data comprises the indication of the retailer offering the item of interest for purchase (fig. 7B, store 1 or store 2 offering the item).
In regard to claim 6, CHI discloses the system of claim 5, wherein the output data further comprises at least one of (limitations appearing in an “or” or alternative or “at least one of” clause): a purchase price associated with the item of interest at that retailer (fig. 9, purchase price 913), or an availability of the item of interest at the retailer.
In regard to claim 7, CHI discloses the system of claim 1, wherein the system comprises a smart phone (mobile terminal 100 can receive call and answer the call, para 0064 is therefore a smart phone by definition as equipped with communication protocols as described in para 0059-0063).
In regard to claim 10, CHI discloses the system of claim 1, wherein the system comprises a wearable device (para 0064, wearable device).
In regard to claim 12, CHI discloses the one or more non-transitory computer-readable media of claim 11, wherein the output data comprises at least one of (limitations appearing in an “or” or alternative or “at least one of” clause): an identity of the item of interest (only this limitation is read. Para 0180, a direction (e.g., a ‘speech bubble’) in which the selected object is located and a product name (e.g., ‘product 1’) of the selected object may be marked on the AR image 612. The product name is considered an identity of the item of interest), or at least one of a make or a model of the item of interest.
In regard to claim 13, CHI discloses the one or more non-transitory computer-readable media of claim 11, wherein the output data comprises: at least one of (limitations appearing in an “or” or alternative or “at least one of” clause) the color (only this limitation is read. Fig. 10b, color, size or price, Para [0181] the controller 180 may store, in the memory 170, information related to the selected object, e.g., at least one of a position at which the selected object is located, a user's visiting time, and corresponding product information (e.g., quantity information, color information, information related to purchase, etc.).) or the style of the item of interest.
In regard to claim 15, CHI discloses the one or more non-transitory computer-readable media of claim 11, wherein the output data comprises an indication of the retailer offering the item of interest for purchase (fig. 7b, store 1 or store 2 offering the item for sale).
In regard to claim 16, CHI discloses the one or more non-transitory computer-readable media of claim 15, wherein the output data further comprises at least one of (limitations appearing in an “or” or alternative or “at least one of” clause):a distance of the retailer from the user, a purchase price associated with the item of interest at that retailer (only this limitation is read, fig.9, price), or an availability of the item of interest at the retailer.
In regard to claim 17, CHI discloses the one or more non-transitory computer-readable media of claim 11, wherein the electronic device comprises a smart phone (mobile terminal 100 can receive call and answer the call, para 0064 is therefore a smart phone by definition as equipped with communication protocols as described in para 0059-0063).
In regard to claim 20, CHI discloses the one or more non-transitory computer-readable media of claim 11, wherein the electronic device comprises a wearable device (para 0064, wearable device).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 4, 8-9, 14 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHI in view of Connor et al. (US-20220415476-A1, hereinafter as Connor).
In regard to claims 4, 14, CHI discloses the system of claim 1, CHI discloses the one or more non-transitory computer-readable media of claim 11, CHI does not disclose wherein the output data comprises at least one of: the nutritional value of the item of interest, the one or more ingredients of the item of interest, the one or more allergens of the item of interest, the one or more serving sizes of the item of interest, at least one of the place of origin or the place of production of the item of interest, the recipe having the item of interest as an ingredient, or the indication of at least one food item to complement the item of interest.
Connor discloses wherein the output data comprises at least one of: a nutritional value of the item of interest (only this limitation is read, para 0389-0390, the nutritional intake information can be shared by the system), one or more ingredients of the item of interest, one or more allergens of the item of interest, one or more serving sizes of the item of interest, at least one of aa [grammar issue] place of origin or the place of production of the item of interest, an the indication of at least one food item to complement the item of interest.
It would have been obvious to one of ordinary skill in the art, before the effective filing of the invention, to use Connor’s teachings to provide nutritional information of a consumed food in CHI’s invention to include restaurant or food retailers in the VR system.
In regard to claims 8, 18, CHI discloses the system of claim 1, the one or more non-transitory computer-readable media of claim 11, CHI does not disclose wherein the system comprises a tablet computer.
Connor discloses wherein the system comprises a tablet computer (para 0976, includes electronic tablet).
It would have been obvious to one of ordinary skill in the art, before the effective filing of the invention, to use Connor’s teachings to configure and provide these VR features in a tablet computer in CHI’s invention.
In regard to claims 9, 19, CHI discloses the system of claim 1, the one or more non-transitory computer-readable media of claim 11, CHI does not disclose wherein the system comprises a laptop computer.
Connor discloses wherein the system comprises a laptop computer (para 0976, laptop).
It would have been obvious to one of ordinary skill in the art, before the effective filing of the invention, to use Connor’s teachings to configure and provide these VR features in a laptop computer in CHI’s invention.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/DEEPROSE SUBEDI/ Primary Examiner, Art Unit 2627
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