DETAILED ACTION
Claims 18-19, 21-27, 29-34, 36-38 are currently pending in the application. Cancelled claims 1-17 are original claims to patent US 9,297,641 B2 to Gideon Stein and claims 18-19, 21-27, 29-34, 36-38 are newly added claims.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/26/2024 has been entered.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,297,641 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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.
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.
Claims 26-27 and 29-32
Independent claim 26 recites, “… a processor operatively connectible to the camera, the processor being configured to …”. This language does not recite the word “means”, and therefore creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 USC 112(f)/6th. A review of the 9,297,641 patent disclosure does not reveal any cause to rebut the presumption. For example, the claimed “processor” is not described as a generic processor much less a generic “means” (‘641: 4:51-62, describing the processor as “an image processor”). Further, the processor is only described as part of a “Driver Assistance System” (‘641: figures 1-2; 1:14-17; 4:51-5:4).
As such, the presumption is not rebutted since the claim limitation recites function and sufficient structure, material or acts to entirely perform the recited function.
Claim Analysis – 35 USC § 251
Claims directed toward separate inventions/embodiments/species that were disclosed but never covered by the original prosecution claims may be to overlooked aspects. Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application (see MPEP 1412.01 II. and MPEP 1402.02).
Newly added claims 18-19, 21-27, 29-34, 36-38 are directed toward a driver assistance system mountable in a host vehicle: receiving at least one image captured by the camera from a field of view of the camera while the host vehicle travels along a road; processing the at least one image to locate a dark image patch; determining at least a first width of the dark image patch and a second width of the dark image patch; determining, based on the first width and the second width, a change in width of the dark image patch as it approaches a horizon represented in the at least one image; and determining, based on the change in width of the dark image patch, whether the dark image patch is consistent with a shadow cast by an obstacle in the road illuminated by headlights, wherein the obstacle is a soft shoulder at an edge of the road. These claims are represented by the embodiments disclosed in Figures 13a and 13b of the patent.
Original claims 1-17 are directed toward a driver assistance system mountable in a host vehicle: capturing a first image frame and a second image frame of a road in the field of view of the camera; processing said first image frame and said second image frame to locate a first dark image patch of said first image frame and a second dark image patch of said second image frame; tracking said first and said second dark image patches from said first image frame to said second image frame as corresponding images of the same portion of the road; measuring respective thicknesses in vertical image coordinates of said first and second dark image patches responsive to said tracking from said first image frame to said second image frame; and determining that a change of said thicknesses between said first and second dark image patches is consistent with a shadow cast by an obstacle in the road illuminated by the headlights. These claims are represented by the embodiments disclosed in at least Figure 11 of the patent.
As currently claimed, the newly added claims 18-19, 21-27, 29-34, 36-38 are directed toward overlooked aspects and are not subject to recapture.
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.
Claim 18-19, 21-27, 29-34, 36-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. RE48,106 to Gideon Stein (herein Stein) in view of US 2005/0169501 A1 to Fujii et al. (herein Fujii). While the claim language is not identical, it is not patentable distinct from the claims Stein when viewed by the teachings of Fujii. For example, Stein claims a driver assistance system capturing at least one image and making multiple width measurements of dark patches to determine obstacle shadows, including a road edge (Stein: claims 18-21). Fujii shows of the instant independent claims (18, 26, and 33), evaluating an image for determination of a shoulder road edge using multiple measurements corresponding to multiple features of the image (Fujii: figures 3A-4, [0075], [0090]-[0094]). It would have been obvious to one of ordinary skill in the art at the time of invention to implement the claimed dark patch width measurements taking multiple width measurements in at least one image as suggested by the teachings of Fujii. This implementation would have been obvious because one of ordinary skill in the art would have found the use of a single image is simpler and more accessible that acquiring multiple images/frames. The instant dependent claims features are substantially found in claims 1-25 of Stein and a vanishing point is found in figure 4 of Fujii.
Withdrawn Objections and Rejections
The following objections/rejections from the Office Action of 12/27/2023 are withdrawn in view of the Patent Owner Response of 06/26/2024: (1) Objections to the Drawings; (2) 35 USC 251, Original Patent Rejection; (3) 35 USC 251, Recapture Rejection; (4) 35 USC 112(a)/1st, Written Description; and (5) 35 USC 112(b)/2nd. Additionally, the means-plus-function claim interpretation analysis under the 35 USC 112(f)/6th is clarified.
Objections to the Drawings
The previous Objections to the Drawings are withdrawn. The limitations of the claims are reasonably found expressed in the drawing figures of the 9,297,641 patent. For example, figures 13a and 13b as described in column 10, lines 19-40 show: (1) processing the at least one image to locate a dark image patch either (‘641: figures 13a and/or 13b, 1300a or 1300b); (2) determining at least a first width of the dark image patch and a second width of the dark image patch (‘641: 10:28-30, “Soft shoulders can thus be detected by looking for a dark strip a few pixels wide at the edge between the dark asphalt and the lighter gravel”; and 10:33-37, “These dark shadow lines 1300a and 1300b have a unique feature; unlike road markings such as lane marks that get narrower in the image as they approach the horizon, the shadows like 1300a and 1300b on road edges stay the same width”); (3) determining, based on the first width and the second width, a change in width of the dark image patch as it approaches a horizon represented in the at least one image (‘641: 10:33-37); and (4) “determining, based on the change in width of the dark image patch, whether the dark image patch is consistent with a shadow cast by an obstacle in the road illuminated by headlights, wherein the obstacle is a soft shoulder at an edge of the road” (‘641: 10:26-28, “The step transition is called a soft shoulder which is a negative obstacle and will also generate a shadow like shadow lines 1300a and 1300b”).
Conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should but not must be illustrated in the drawings (see 37 CFR 1.83(a)). Based on the above citations and in conjunction with the other teachings of 9,297,641 patent, a person skilled in the art would recognize a reasonably clear description and enablement of the invention (see 35 USC 112(a)).
35 USC 251, Original Patent Rejection
The previous 35 USC 251 rejection for lack of Original Patent of claims 18, 19, 21-27, 29-34, and 36-37 is withdrawn. The specification of the original patent clearly and unequivocally discloses the newly claimed invention as a separate invention. For example, support for the independent claim limitations is found as described in the above section on the previous Objections to the Drawings. For example, the original disclosure discusses a dark patch/strip in an image and evaluating whether it is or isn’t narrower at different points, width measurement related to a soft shoulder (‘641: 10:28-40). While the disclosure does describe a property of a shadow, but also in a particular context of what and how to do something related to the invention.
The plain context of the 9,297,641 patent’s figures 13a and 13b and column 10, lines 19-40 are describing an additional aspect of the invention of the original patent (for example, a clear break in the narrative description to focus on and describe another aspect). Further, these teachings do not merely “nuance the invention” (see MPEP 1412.01), but instead actually articulate at least the basic necessities of the invention. As such, the original specification demonstrates, to one skilled in the art, a disclosure sufficient to indicate that the patentee could have claimed the subject matter (see MPEP 1412.01). Therefore, a 35 USC 251 rejection for lack of Original Disclosure is not warranted.
35 USC 251, Recapture Rejection
The previous 35 USC 251 rejection for Recapture of claims 18, 19, 21-27, 29-34, and 36-37 is withdrawn. As the above Recapture analysis demonstrates, the claims as presented now are drawn to Overlooked Aspects and not subject to Recapture.
35 USC 112(a)/1st, Written Description
The previous 35 USC 112(a)/1st rejection for lack of written description of claims 18, 19, 21-27, 29-34, and 36-37 is withdrawn. Support for the claim limitations is found as described in the above section on the previous Objections to the Drawings. Therefore, the claim language meets the requirements of written description and is not new matter.
35 USC 112(b)/2nd, Indefinite
The previous 35 USC 112(b)/2nd rejection for indefiniteness of claims 26, 27, and 29-32 is withdrawn. As discussed above in the Claim Interpretation section, the claim limitations are not interpreted under 35 USC 112(f)/6th. Therefore, the claim language does have sufficient structure and the scope of the claim language can be reasonably determined.
35 USC 112(f)/6th, Claim Interpretation
With regard to mean-plus-function limitations, the claim language is being interpreted under 35 USC 112(f)/6th as stated above.
Response to Arguments
Patent Owner’s arguments (06/26/2024) with respect to claim(s) 18-19, 21-27, 29-34, 36-38 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.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H WOOD whose telephone number is (571)272-3736. The examiner can normally be reached Monday-Friday 7am-3pm.
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/William H. Wood/
Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992