DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 4-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 1 objected to because of the following informalities: the “wherein” clauses of claim 1 recites “the second head worn device” without a hyphen, whereas the claim elsewhere uses “second head-worn device.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4:
Claim 1 defines “a second virtual object comprising an avatar of the second user” and, separately, “a third virtual object comprising an avatar of the first user.” Claim 4 then recites sending “the second virtual object comprising the avatar of the first user.” This contradicts the parent claim: claim 1 fixes the second virtual object as the avatar of the second user, while claim 4 recites the second virtual object as the avatar of the first user. A person of ordinary skill cannot determine whether the object sent to the second head-worn device is the second virtual object (avatar of the second user, per claim 1) or the third virtual object (avatar of the first user, which is what claim 4’s “avatar of the first user” language actually describes). The two readings are mutually exclusive, rendering the claim indefinite. Further correction and/or clarification is required.
Regarding claim 5:
Claim 5 recites sending “the third virtual object comprising the avatar of the second user.” Claim 1 fixes the third virtual object as the avatar of the first user, not the second. It is unclear whether the object send to the first head-worn device is the third virtual object (avatar of the first user, per claim 1) or the second virtual object (avatar of the second user, which is what claim 5’s “avatar of the second user” language describes). The two readings are mutually exclusive, rendering the claim indefinite. Further correction and/or clarification is required.
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.
Claim(s) 1 and 4-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by [Miller; Samuel A. et al., US 20140306866 A1].
Regarding claim 1:
Miller discloses:
1. (Currently Amended) A computer implemented method of facilitating communication between first [Miller: Fig.9A: first user 901] and second users [Miller: Fig.9A: second user 922] wearing respective first and second head-worn devices [Miller: Fig.3: head-mounted display system 300; Fig.9A; ¶ 0091: “the individual user wearing the system 300”], the method comprising:
capturing, by a sensor [Miller: Fig.3: environment-sensing system 306: sensors 312] of the first head-worn device [Miller: Fig.3: head-mounted display system 300; Fig.9A], an image [Miler: ¶ 0015: “capturing a field-of-view image”] of a real-world object [Miller: Fig.9A: first object 902] from the first user's view of the real-world object [Miller: Fig.9A: first object 902; ¶ 0115: “the first object 902 may be scanned, for example, by the environment-sensing system 306 of a head-mounted interface 300”];
generating, by the first head-worn device [Miller: Fig.3: head-mounted display system 300] and based on the image, a view of a first virtual object [Miller: Fig.9A: first object 902] corresponding to the first user's [Miller: Fig.9A: first user 901] view of the real-world object [Miller: Fig.9A: first object 902; ¶ 0115: “ rendered in the virtual world … as a second rendered physical object 932”; ¶ 0015: “used to convert at least one physical object to a physically rendered virtual object”];
displaying, by the second head-worn device [Miller: Fig.3: head-mounted display system 300], the view of the first virtual object [Miller: Fig.9B: second rendered physical object 932] to the second user [Miller: Fig.9A: second user 922] wearing the second head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0116: “the second user 922 may observe and interact…with the rendered physical objects 931 and 932 representing the first user 901 and first object 902”],
wherein the view of the first virtual object [Miller: Fig.9B: second rendered physical object 932] from the first user's [Miller: Fig.9A: first user 901] view of the real-world object [Miller: Fig.9A: first object 902] is displayed on the second head worn device [Miller: Fig.3: head-mounted display system 300] in real-time with the capturing the image of the real-world object [Miller: Fig.9A: first object 902] from the first user's [Miller: Fig.9A: first user 901] view of the real-world object [Miller: Fig.9A: first object 902; ¶ 0116: “the virtual objects 931 and 932 may be transposed in realtime (or near real-time) to a location within the virtual world corresponding to the second location 925”];
displaying, by the first head-worn device [Miller: Fig.3: head-mounted display system 300], a second virtual object [Miller: Fig.12: avatar 2 of the second person] comprising an avatar of the second user [Miller: Fig.2: avatar 2; ¶ 0124: “ the flying bumble bee avatar 2 of the second person”] to the first user [Miller: Fig.9A: first user 901; ¶ 0124: “displayed in augmented reality for the first person”],
and displaying, by the second head-worn device [Miller: Fig.3: head-mounted display system 300], a third virtual object [Miller: Fig.9A: first rendered physical object 931] comprising an avatar of the first user [Miller: Fig.9A: first rendered physical object 931; ¶ 0033: “creating a remote avatar for a first user”] to the second user [Miller: Fig.9A: second user 922] wearing the second head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0115: “The first user 901 may be scanned … and rendered in the virtual world … as a first rendered physical object 931”];
and facilitating, by the first [Miller: Fig.3: head-mounted display system 300] and second head-worn devices [Miller: Fig.3: head-mounted display system 300], communications between the first [Miller: Fig.9A: first user 901] and second users [Miller: Fig.9A: second user 922] using the second [Miller: Fig.12: avatar 2 of the second person] and third virtual objects [Miller: Fig.9A: first rendered physical object 931] to simulate the first [Miller: Fig.9A: first user 901] and second users [Miller: Fig.9A: second user 922] being present in a common environment [Miller: Fig.7: common virtual world; ¶ 0048: “common virtual world”; ¶ 0048: “each interact with the other user and a common virtual world through their respective user devices”] and collaborating on the first virtual object [Miller: Fig.9B: second rendered physical object 932; ¶ 0124: “the two users may experience one another in that world in various fashions”; ¶ 0036: “transmit the first portion to a user device for presentation to a second user”].
Regarding claim 4:
Miller discloses:
4. (Currently Amended) The method of claim 1, further comprising sending, by a first processor [Miller: Fig.3: processor 308; ¶ 0115: “ rendered in the virtual world (by software/firmware stored in the … the user device 120 …)”; Examiner: User device 120 is embodied as the head-mounted display system 300 of Fig.3] of the first head-worn device [Miller: Fig.3: head-mounted display system 300], the second virtual object [Miller: Fig.9A: first rendered physical object 931] comprising the avatar of the first user [Miller: Fig. 9A: first rendered physical object 931; ¶ 0115: “The first user 901 may be scanned … and rendered in the virtual world … as a first rendered physical object 931”] to the second head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0116: “the virtual objects 931 and 932 may be transposed in realtime (or near real-time) to a location within the virtual world corresponding to the second location 925”; ¶ 0036: “transmit the first portion to a user device for presentation to a second user”; Examiner: Claim 4 is indefinite under 112(b) as discussed above. For purpose of applying prior art, the limitation is examined as best understood to recite sending the avatar of the first user (the third virtual object or claim 1) from the first head-worn device.].
Regarding claim 5:
Miller discloses:
5. (Currently Amended) The method of claim 1, further comprising sending, by a second processor [Miller: Fig.3: processor 308; ¶ 0037: “ remote avatars are animated based at least in part upon data on a wearable device”; Examiner: The second user’s wearable head-mounted system 300 provides the data animating and second the second user’s avatar] of the second head-worn device [Miller: Fig.3: head-mounted display system 300], the third virtual object [Miller: Fig.12: avatar 2 of the second person] comprising the avatar of the second user [Miller: Fig.12: avatar 2; ¶ 0124: “the flying bumble bee avatar 2 of the second person”] to the first head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0124: “displayed in augmented reality for the first person”; ¶ 0036: “transmit the first portion to a user device for presentation to a second user”; Examiner: Claim 5 is indefinite under 112(b) as discussed above. For purpose of applying prior art, the limitation is examined as best understood to recite sending the avatar of the second user (the second virtual object or claim 1) from the second head-worn device to the first head-worn device”].
Regarding claim 6:
Miller discloses:
6. (New) The method of claim 1, further comprising sending, by a first processor [Miller: Fig.3: processor 308; ¶ 0115: “ rendered in the virtual world (by software/firmware stored in the … the user device 120 …)”; Examiner: User device 120 is embodied as the head-mounted display system 300 of Fig.3.] of the first head-worn device [Miller: Fig.3: head-mounted display system 300], the first virtual object [Miller: Fig.9B: second rendered physical object 932] to the second head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0116: “the virtual objects 931 and 932 may be transposed in realtime (or near real-time) to a location within the virtual world corresponding to the second location 925”; ¶ 0036: “transmit the first portion to a user device for presentation to a second user”] .
Regarding claim 7:
Miller discloses:
7. (New) The method of claim 1,
wherein the first user [Miller: Fig.9B: first user 901] is located at a first geographic location [Miller: Fig.9B: first physical location 915; ¶ 0116: “the first user 901 and first object 902 are located at a first physical location 915”], and
wherein the second user [Miller: Fig.9B: second user 922] is located in a second geographic location [Miller: Fig.9B: second physical location 925] different from the first geographic location [Miller: Fig.9B ¶ 0116: “ the second user 922 is located at a different, second physical location 925 separated by some distance from the first location 915”].
Regarding claim 8:
Miller discloses:
8. (New) The method of claim 7, further comprising modifying, by the first user [Miller: Fig.9A: first user 901], the first virtual object [Miller: Fig.9A: second rendered physical object 932; ¶ 0076: “the state of the object may be permitted to be altered, controlled or manipulated by one or more users experiencing a digital world”].
Regarding claim 9:
Miller discloses:
9. (New) The method of claim 7, further comprising modifying, by the second user [Miller: Fig.9A: second user 922], the first virtual object [Miller: Fig.9A: second rendered physical object 932; ¶ 0076: “the state of the object may be permitted to be altered, controlled or manipulated by one or more users experiencing a digital world”].
Regarding claim 10:
Miller discloses:
10. (New) The method of claim 7, further comprising communicating, by the first [Miller: Fig.3: head-mounted display system 300] and second head-worn devices [Miller: Fig.3: head-mounted display system 300] and through a communications network [Miler: Fig.1: data network 130 (computing network 105)], modifications to the first virtual object [Miller: Fig.9A: second rendered physical object 932; ¶ 0076: “the state of the object may be permitted to be altered, controlled or manipulated by one or more users experiencing a digital world”; ¶ 0036: “The change in virtual world data may be presented to a second user device for presentation to the second user”].
Regarding claim 11:
Miller discloses:
11. (New) The method of claim 1, further comprising displaying, by the first head-worn device [Miller: Fig.3: head-mounted display system 300], the view of the first virtual object [Miller: Fig.9A: second rendered physical object 932] to the first user [Miller: Fig.9A: first user 901] wearing the first head-worn device [Miller: Fig.3: head-mounted display system 300; ¶ 0015: “to display the physically rendered virtual object to the user”; ¶ 0012: “The display object may be at least one of a virtual object, a rendered physical object, an image and a video”].
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 and 4-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,928, 384 (the ‘384 patent), and further over claim 1 of U.S. Patent No. 11,537,351 (the ‘351 patent) and claim 1 of U.S. Patent No. 12,379,890 (the ‘890 patent) in view of Gibson (US 2020/0117270 A1) or Miller (US 2014/0306866 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the patented claims recite the same method of capturing an image of a real-world object from a first user’s view by a sensor of a first head-worn device, generating a corresponding virtual object view, and displaying that view to a second user by a second head-worn device in real-time with the capturing, as shown in the table below.
Instant claim
Patented claim
1 (capture / generate / real-time display to second user)
‘384 claim 1
7 (first and second geographic locations)
‘384 claim 2
8 (modifying by the first user)
‘384 claim 3
9 (modifying by the second user)
‘384 claim 4
10 (communicating modifications over a network)
‘384 claims 5 and 6
6 (sending the first virtual object to the second device)
‘384 claim 1
11 (displaying the view to the first user by the first device)
‘351 claim 1
4, 5 (sending the avatars between the devices)
‘384 claim 1 to 6
The patented claims differ from the instant claims only in that they do not recite the second virtual object comprising an avatar of the second user displayed to the first user, the third virtual object comprising an avatar of the first user displayed to the second user, or the facilitating of communications using those avatars to simulate the users being present in a common environment. Representing users to one another with avatars in a shared augmented reality environment is well known, as shown by Gibson (¶ 0058, 0034). It would have been obvious to a person of ordinary skill before the effective filing date to include the recited avatars in the patented method, because doing so amount to applying a known technique to a known method read for improvement to yield the predictable result of representing the two collaborating users to each other within the shared session. The instant claims are therefore an obvious variation of the patented claims and not patentably distinct.
Claim 1 of U.S. Patent No. 12,379,890 recites the same subject matter in system form and independently supports this rejection; the difference in statutory category does not render the claims patentably distinct.
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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Koosha Sharifi-Tafreshi whose telephone number is (571)270-5897. The examiner can normally be reached Mon - Fri 8AM to 5PM EST.
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/KOOSHA SHARIFI-TAFRESHI/Primary Examiner, Art Unit 2628
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