CTNF 19/279,562 CTNF 90637 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Inventorship 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Japanese Pub. No. 2016197816 A by Nomura (“Nomura”) in view of U.S. Pub. No. 2023/0138204 by Penugonda et al. (“Penugonda”) . As to claim 1, Nomura discloses a wearable device that is usable in a plurality of usage forms and that is worn on a head of a user (Nomura, head mounted display (HMD) 10, Figure 1), the wearable device comprising: a display (Nomura, display unit 28, Figure 1) ; at least one memory storing instructions (Nomura, The storage unit 22 stores, for example, a program executed by the control unit 20. Figure 1, ¶ [0020]) ; and at least one processor which (Nomura, The control unit 20 is, for example, a program control device such as a CPU that operates in accordance with a program stored in the storage unit 22. Figure 1, ¶ [0019]) , upon execution of the stored instructions configures the at least one processor to function as Nomura continues to teach the state switching unit 34 which includes two display states of the HMD 10 (Nomura, each time the receiving unit 24 receives an operation signal, the state switching unit 34 switches the state of the optical system 32 from one of the video see-through state and the optical see-through state to the other state. In this way, in the present embodiment, the user can switch the state of the optical system 3 2 to the video see-through state or the optical see-through state by operating the controller or the like. ¶ [0030]). However, Nomura does not teach a notification unit. Nomura does not expressly teach a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the recommendation information being information determined based on information relating to an external environment. Penugonda teaches a wearable augmented reality system a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the recommendation information being information determined based on information relating to an external environment (Penugonda, the method (100) includes generating (block 103) a notification related to the identified object. In some examples, the notification may be generated (block 103) responsive to the object coming within the view of the user. Figure 1, ¶ [0036]) (Penugonda, the notification may be a pop-up window indicating a task (either as part of a routine or a non-routine recommendation) to be completed. ¶ [0039]) (Penugonda, A generated notification is then presented (block 104) on a display device of the wearable AR system. That is, the wearable AR system may include a wearable display device. Figure 1, ¶ [0040]). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Nomura’s display state change to include Penugonda’s detection and notification because such a modification is the result of applying a known technique to a known device ready for improvement to yield predictable results. More specifically, Penugonda’s detection and notification permits user notification of tasks to perform. This known benefit in Penugonda is applicable to Nomura’s display state change as they both share characteristics and capabilities, namely, they are directed to head mounted displays. Therefore, it would have been recognized that modifying Nomura’s display state change to include Penugonda’s detection and notification would have yielded predictable results because (i) the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate Penugonda’s detection and notification in head mounted displays and (ii) the benefits of such a combination would have been recognized by those of ordinary skill in the art. Thus, Nomura, as modified by Penugonda, teaches the displayed notification of a suggested state change . Double Patenting 08-33 AIA 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. 08-34 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,032,163 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is simply a broader recitation of the patented claim 1 of the parent . Instant application (Claim 1) Parent Patent No. 12,032,163 (Claim 1) A wearable device that is usable in a plurality of usage forms and that is worn on a head of a user, the wearable device comprising: A wearable device that is usable in a plurality of usage forms and that is worn on a head of a user, the wearable device comprising: a display; a display; at least one memory storing instructions; and at least one memory storing instructions; and at least one processor which, upon execution of the stored instructions configures the at least one processor to function as at least one processor which, upon execution of the stored instructions configures the at least one processor to function as a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the recommendation information being information determined based on information relating to an external environment. a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the usage forms being determined by at least one of display mode and form of the wearable device , the recommendation information being information determined based on information relating to an external environment. As shown in the table above, the instant application independent claim 1 is completely within claim 1 of the parent patent. The instant application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,399,364 in view of U.S. Pub. No. 2023/0138204 by Penugonda et al. (“Penugonda”) . Instant application (Claim 1) Parent Patent No. 12,399,364 (Claim 1) A wearable device that is usable in a plurality of usage forms and that is worn on a head of a user, the wearable device comprising: A wearable device that is usable in a plurality of usage forms and that is worn on a head of a user, the wearable device comprising: a display; a display; at least one memory storing instructions; and at least one memory storing instructions; and at least one processor which, upon execution of the stored instructions configures the at least one processor to function as at least one processor which, upon execution of the stored instructions configures the at least one processor to function as a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the recommendation information being information determined based on information relating to an external environment. a notification unit configured to notify the user, via the display, of indication information 1) indicating a usage form corresponding to an external environment out of the plurality of usage forms or 2) indicating release of attachment of the wearable device, the indication information being information determined based on information relating to the external environment. The instant application is mostly recited in claim 1 of the Parent Patent No. 12,399,364 except for the “recommendation information” and “a recommended usage form”. However, additional prior art of Penugonda teaches a wearable augmented reality system a notification unit configured to notify the user, via the display, of recommendation information indicating a recommended usage form out of the plurality of usage forms, the recommendation information being information determined based on information relating to an external environment (Penugonda, the method (100) includes generating (block 103) a notification related to the identified object. In some examples, the notification may be generated (block 103) responsive to the object coming within the view of the user. Figure 1, ¶ [0036]) (Penugonda, the notification may be a pop-up window indicating a task (either as part of a routine or a non-routine recommendation) to be completed. ¶ [0039]) (Penugonda, A generated notification is then presented (block 104) on a display device of the wearable AR system. That is, the wearable AR system may include a wearable display device. Figure 1, ¶ [0040]). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the parent patent’s notification system to include Penugonda’s detection and notification because such a modification is the result of applying a known technique to a known device ready for improvement to yield predictable results. More specifically, Penugonda’s detection and notification permits user notification of tasks to perform. This known benefit in Penugonda is applicable to parent patent’s notification system as they both share characteristics and capabilities, namely, they are directed to head mounted displays with notification systems. Therefore, it would have been recognized that modifying parent patent’s notification system to include Penugonda’s detection and notification would have yielded predictable results because (i) the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate Penugonda’s detection and notification in head mounted displays and (ii) the benefits of such a combination would have been recognized by those of ordinary skill in the art. Thus, the parent patent, as modified by Penugonda, teaches the displayed notification of a suggested state change for recommended use. Inquiries Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT D CASTIAUX whose telephone number is (571)272-5143. The examiner can normally be reached Mon-Fri 7:30 AM- 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chanh Nguyen can be reached at (571)272-7772. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRENT D CASTIAUX/Primary Examiner, Art Unit 2623 Application/Control Number: 19/279,562 Page 2 Art Unit: 2623 Application/Control Number: 19/279,562 Page 3 Art Unit: 2623 Application/Control Number: 19/279,562 Page 4 Art Unit: 2623 Application/Control Number: 19/279,562 Page 5 Art Unit: 2623 Application/Control Number: 19/279,562 Page 6 Art Unit: 2623 Application/Control Number: 19/279,562 Page 7 Art Unit: 2623 Application/Control Number: 19/279,562 Page 8 Art Unit: 2623 Application/Control Number: 19/279,562 Page 9 Art Unit: 2623 Application/Control Number: 19/279,562 Page 10 Art Unit: 2623 Application/Control Number: 19/279,562 Page 11 Art Unit: 2623 Application/Control Number: 19/279,562 Page 12 Art Unit: 2623 Application/Control Number: 19/279,562 Page 13 Art Unit: 2623 Application/Control Number: 19/279,562 Page 14 Art Unit: 2623
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