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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 and 21-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 1 is directed to method, which is a process and falls within a statutory category (See MPEP 2106.03).
Per step 2A, prong 1, claim 1 recites in a training mode: determining a first set of values associated with the number of objects counted by the computer vision tool; generating coefficients, using digital filters, wherein the coefficients are based on the number of objects counted by the computer vision tool and the first set of values; in a non-traininq mode: receiving a number of objects counted by the computer vision tool for one or more second images at the area of interest; and determining a statistically adjusted machine count for the one or more second images, where the statistically adjusted machine count is based at least in part on the coefficients generated in the traininq mode, and the number of objects counted by the computer vision tool for the one or more second images in the non-training mode. These claim limitations are mathematical calculations and mathematical relationships, which fall into the mathematical concepts grouping.
The additional element in claim 1 is receiving, for each of a plurality of first images an area of interest, a number of objects counted by the computer vision tool.
Per step 2A, prong 2, the additional element recited in claim 1 is mere data gathering in conjunction with the abstract idea, which is insignificant extra-solution activity (See MPEP 2106.05(g)). Therefore, the judicial exception is not integrated into a practical application.
Per step 2B, in addition to being insignificant extra-solution activity, the additional element in claim 1 is also well-understood, routine and conventional. The courts have recognized that retrieving or collecting data in various manners is well understood, routine and conventional (See MPEP 2106.05(d)(II)). Therefore, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 2-5 and 21-28 depend from claim 1. Claims 2-5 and 21-28 recite further details of the abstract idea and do not recite any further additional elements. Therefore, claims 2-5 and 21-28 are rejected for the same reason.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 29 is directed to a computer vision count assessment tool, which is a product and falls within a statutory category (See MPEP 2106.03).
Claim 29 recites an abstract idea and additional element similar to that recited in claim 1. Claim 29 recites further additional elements including a memory configured to store instructions: and at least one processor configured to execute instructions to operate in a training mode and a non-training mode. The recitation of the processor and memory amounts to instructions to implement the abstract idea on a computer (See MPEP 2106.05(f)). When considered in combination with the other additional elements, the additional elements do not provide anything beyond their individual functions. Therefore, claim 29 is not integrated into a practical application and is not significantly more than the abstract idea.
Claims 30-33 depend from claim 29. Claims 30-33 recite further details of the abstract idea and do not recite any further additional elements. Therefore, claims 30-33 are rejected for the same reason.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claim 34 is directed to a non-transitory computer-readable medium, which is a product and falls within a statutory category (See MPEP 2106.03).
Claim 34 recites an abstract idea and additional element similar to that recited in claim 1. Claim 34 recites further additional elements including a processor. The recitation of the processor amounts to instructions to implement the abstract idea on a computer (See MPEP 2106.05(f)). When considered in combination with the other additional elements, the additional elements do not provide anything beyond their individual functions. Therefore, claim 34 is not integrated into a practical application and is not significantly more than the abstract idea.
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 1-5 and 29-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 and 21-34, respectively of copending Application No. 18/073,017 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the claims in the present application are found in the claims of Application No. 18/073,017.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 23 March 2026 have been fully considered but they are not persuasive. Applicant states that the claimed invention provides an improvement in the functioning of a computer or an improvement to other technology or a technical field. Applicant states that improvements discussed in the Specification are reflected in the claims. Applicant refers to the claimed method 1 requiring operating in two modes wherein in the non-training mode, a statistically adjusted machine count for a set of images is determined just by using the object counts generated by the computer vision tool for these set of images and the coefficients determined during the training mode as an example. However, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements (See MPEP 2106.05(a), paragraph 6). The claim limitations for the non-training mode are limitations directed to the abstract idea. The only additional elements recited in the claims are receiving a number of objects counted in claims 1, 29 and 34 and a processor in claims 29 and 34. These additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea as discussed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANUEL L BARBEE whose telephone number is (571)272-2212. The examiner can normally be reached M-F: 9-5:30..
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, Shelby A Turner can be reached on 571-272-6334. 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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MANUEL L BARBEE/Primary Examiner, Art Unit 2857
Prosecution Insights