DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 4
II. Continued Examination Under 37 CFR 1.114 4
III. Priority 4
IV. Pertinent Prosecution History 5
V. Claim Status 7
VI. Reissue Requirements 7
VII. Reissue Oath/Declaration 9
VIII. Claim Objections 9
IX. Claim Interpretation 11
A. Lexicographic Definitions 11
B. 35 U.S.C § 112 6th Paragraph 11
(2) Functional Phrase – “Program Code I” 12
(3) Functional Phrase – “Program Code II” 17
X. Claim Rejections – 35 U.S.C. § 112 22
A. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 22
(1) New Matter 22
B. 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph 24
XI. Claim Rejections – 35 U.S.C. § 251 29
A. Oath/Declaration 29
B. New Matter 29
C. Original Patent Requirement 30
XII. Claim Rejections – 35 USC § 103 32
A. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ladron et al. (International Publication No. WO 2017/207064 A1) (“Ladron”) in view of Rothberg et al. (U.S. Publication No. 2017/0360412) (“Rothberg”) and Das et al. (U.S. Patent No. 10,962,939) (“Das”). 33
B. Claims 13 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ladron et al. (International Publication No. WO 2017/207064 A1) (“Ladron”) in view of Rothberg et al. (U.S. Publication No. 2017/0360412) (“Rothberg”) and Das et al. (U.S. Patent No. 10,962,939) (“Das”) as applied to claims 1-20 above, and further in view of Sliz et al. (U.S. Patent No. 10,587,796)(“Sliz”). 91
XIII. Response to Arguments 93
A. Oath/Declaration Issue 93
B. Claim Objection(s) 94
C. Claim Interpretation - 35 U.S.C. § 112, Sixth Paragraph, Invocation 94
(1) Instructions/Program Code 94
D. 35 U.S.C. § 112 Rejections 97
(1) 35 U.S.C.§ 112(b) Rejections 97
(2) 35 U.S.C.§ 112(d) Rejections 98
E. 35 U.S.C. § 251 Rejections 98
(1) Oath/Declaration Issue 98
(2) Original Patent Requirement 99
F. 35 U.S.C. § 103 Rejections 99
(1) Claims 1-21, 24-26, 29, 30 and 33-35 99
(2) Claims 13, 14, 23, 24, 28, 32 and 33 103
XIV. Conclusion 105
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 . 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 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.
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 03 September 2024 has been entered.
Priority
Applicant filed the instant reissue application 17/528,668 (“‘668 Reissue Application”) on 17 November 2021 for U.S. Application No. 16/553,388 (“‘388 Application"), filed 28 August 2019, now U.S. Patent No. 10,482,343 (“‘343 Patent”), issued 19 November 2019, which is a continuation of U.S. Application No. 16/283,157 (“‘157 Application"), filed 22 February 2019, now U.S. Patent No. 10,445,609 (“‘609 Patent”), issued 15 October 2019, which is a continuation in part of U.S. Application No. 16/150,772 (“‘772 Application"), filed 03 October 2018, now U.S. Patent No. 10,242,283 (“‘283 Patent”), issued 26 March 2019.
Thus, the Examiner concludes that for examination purposes the instant ‘668 Reissue Application claims a priority date of 3 October 2018.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘668 Reissue Application on 17 November 2021. The Examiner finds that the instant ‘668 Reissue Application included a preliminary amendment (“Nov 2021 Preliminary Amendment”) to the claims (“Nov 2021 Claim Amendment”). The Nov 2021 Claim Amendment includes an amendment: providing amended original claims 1, 6, 8, 10-12, 14, 16-18 and 20; original claims 2-5, 7, 13, 15 and 19; and adding new claims 21-34.
The Office issued a Non-Final Office action on 03 November 2023 (“Nov 2023 Non-Final Office Action”). In particular, the June 2023 Non-Final Office Action provided rejections for claims 1-34 (“Rejected Claims”) under 35 U.S.C. §§ 112(a), 112(b), 102(a)(1-2), 103, 251, and non-statutory Double Patenting. 1
On 03 April 2024, Applicant filed a Response to Non-Final Office Action (“April 2024 Applicant Response”). The April 2024 Applicant Response contained: “Remarks,” a “Terminal Disclaimer” (“April 2024 TD”), “Amendments to the Drawing” (“April 2024 Drawings Amendment”), “Amendments to the Specification” (“April 2024 Spec Amendment”), and “Amendments to the Claims” (“April 2024 Claim Amendment”) including: twice2 amended original claims 1, 6, 8, 10, 11, 14 and 16-18; once3 amended original claims 3, 9, 15 and 20; original claims 2, 4, 5, 7, 12, 13 and 19; once4 amended new claims 24, 26-28 and 33; and new5 claims 21-23, 25, 29-32, 34 and 35.
The Office issued a Final Office action on 03 May 2024 (“May 2024 Final Office Action”). In particular, the May 2024 Final Office Action provided rejections for claims 1-35 (“Rejected Claims”) under 35 U.S.C. §§ 112(b), 112(d), 103 and 251. 6
On 31 July 2024, the Office and Applicant had an interview (“July 2024 Interview”) discussing the May 2024 Final Office Action (see Interview Summary mailed 06 August 2024 (“Aug 2024 Int Summary”).
On 03 September 2024, Applicant filed a Response to Final Office Action (“Sept 2024 Applicant Response”). The Sept 2024 Applicant Response contained: “Remarks,” and “Amendments to the Claims” (“Sept 2024 Claim Amendment”) including: thrice7 amended original claims 1, 10, 16 and 18; twice8 amended original claims 6, 8, 11, 14 and 17; once9 amended original claims 3, 9, 15 and 20; original claims 2, 4, 5, 7, 12, 13 and 19; and canceled10 new claims 21-35.
Claim Status
The Examiner finds that the claim status in the instant ‘668 Reissue Application is as follows:
Claim(s) 1, 10, 16 and 18 (Original and thrice amended)
Claim(s) 6, 8, 11, 14 and 17 (Original and twice amended)
Claim(s) 3, 9, 15 and 20 (Original and once amended)
Claim(s) 2, 4, 5, 7, 12, 13 and 19 (Original)
Claim(s) 21-35 (New and canceled)
Thus, the Examiner concludes that claims 1-20 are pending in the instant ‘668 Reissue Application. Claims 1-20 are examined (“Examined Claims”).
Reissue Requirements
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 proceed-ing in which the ‘343 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
The Examiner notes that Amendment practice for Reissue Applications is NOT the same as for non-provisional applications. See MPEP §§ 1413 and 1453. Reissue application amendments must comply with 37 CFR 1.173, while non-provisional application amendments must comply with 37 CFR 1.121. Particularly,
Manner of making amendments under 37 CFR 1.173:
All markings (underlining and bracketing) are made relative to the original patent text, 37 CFR 1.173(g) (and not relative to the prior amendment).
For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets, and the added matter must be underlined. See 37 CFR 1.173(d).
For amendments to the drawings, any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. See 37 CFR 1.173(d)(3).
The Examiner further notes that all amendments to the instant ‘668 Reissue Application must comply with 37 CFR 1.173(b)-(g).
Reissue Oath/Declaration
The Examiner finds that the Declaration filed by Applicant on 17 November 2021 (“Nov 2021 Oath/Declaration”) is defective because of the following:
The Examiner finds that the Nov 2021 Oath/Declaration filed by Applicant states,
Patentee believes the issued patent to be partially inoperative by reason of the patentee claiming less than they had a right to claim. Amended claims 1, 10, and 18 are broader than issued claims 1, 10, and 18 at least in that the feature "identification card" has been replaced by "object". Thus, this reissue seeks to broaden at least claims 1, 10, and 18 of the issued patent. All errors corrected by this reissue arose without deceptive intent.
(Nov 2021 Oath/Declaration; emphasis added). The Examiner finds that the Nov 2021 Oath/Declaration does identify a specific claim that the instant ‘668 Reissue Application seeks to broaden. However, in light of the April 2024 Claim Amendment (i.e., amendment from “object” back to original claim requirement “identification card),” the Nov 2021 Oath/Declaration does not identify a single word, phrase, or expression in the specification or in an original claim that the instant ‘668 Reissue Application seeks to broaden; nor identify how it renders the original patent wholly or partly inoperative or invalid. See 37 CFR 1.175(b) and MPEP § 1414.II.
Claim Objections
MPEP § 1453 states,
pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions). The failure to submit an explanation will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)).
(MPEP § 1453; emphasis added). The Examiner finds that Applicant has not provided sufficient explanation of support for at least the amendments to claims 1, 10 and 18 instantly provided in the Sept 2024 Claim Amendment, as set forth in 37 CFR 1.173(c). (Id.) While the Sept 2024 Applicant Response provides direction for the Examiner to find support for the claim amendment, the Examiner finds that the direction is not sufficient. Specifically, while the Sept 2024 Applicant Response cites to Figures and sections of the ‘343 Patent which are directed to “types of identification cards,” the Examiner finds that the citations do not provide support for images utilized for training the “trained neural network” being images representing “acceptable and unacceptable types of identification cards” as well a “determining that the at least a first image is of an acceptable type of identification card and unusable (i.e., for the later emphasis on both determinations being made). (Sep 2024 Applicant Response at 4, 16 and 18; emphasis added).
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. (See MPEP § 2111.01(IV)). Following an independent review of the claims in view of the specification herein, Examiners find that Applicant has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
35 U.S.C § 112 6th Paragraph
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. § 112(6th ¶) and MPEP §§ 2181-2183. As noted in MPEP § 2181, a three prong test is used to determine the scope of a means-plus-function or step-plus-function limitation in a claim:
(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"
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The Examiner finds herein that claims 10-17 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Each such limitation will be discussed in turn as follows:
Functional Phrase – “Program Code I”11
A first means-plus-function phrase is recited in claim 10 (and included in each of dependent claims 11-17) which recites “program code …” or hereinafter “Functional Phrase 2” or “FP2.” The Examiner determines herein that FP2 does meet the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 10 expressly recites:
program code that, when executed by the one or more processors, cause the system to determine, using the trained neural network, whether at least a first image of the one or more images is of an acceptable type of identification card and unusable by the remote post-validation platform based at least in part on one or more analyzed quality features of the first image
[emphasis added]; and claim 16 expressly recites:
wherein the one or more processors are further configured to, when executing the program code, cause the system to determine whether at least a second image of the one or more captured images is usable by the remote post-validation platform
[emphasis added];
i. 3-Prong Analysis: Prong (A)
FP2 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “program code” is a generic placeholder or nonce term equivalent to “means” because the term “program code” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘343 Patent does not specifically define “program code” and thus the specification of the ‘343 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘343 Patent uses this same phrase to describe several program codes.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that program code is a sufficient and definite structure to perform the functions recited in FP2. For example, U.S. Patent No. 10,962,939 illustrates program code for restricting images having different program code (i.e., implemented blocks) and distinct operation from any of the program code of the ‘343 Patent. Similarly, U.S. Patent No. 10,587,796 illustrates program code for determining if an image is unacceptable/acceptable having different program code (i.e., implemented blocks) and distinct operation from any of the program code of the ‘343 Patent.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “program code …” in FP2 as the name of a sufficiently definite structure for performing the functions recited in FP2 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “program code …” is a generic placeholder having no specific structure associated therewith. Because “program code …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP2 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP2, the Examiner finds that claimed function(s) are:
[D]etermin[ing], using the trained neural network, whether at least a first image of the one or more images is of an acceptable type of identification card and unusable by the remote post-validation platform based at least in part on one or more analyzed quality features of the first image
D]etermin[ing] whether a second image of the one or more captured images is usable by the remote post-validation platform
Because FP2 recites the above recited functions, the Examiner concludes that FP2 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 2, the Examiner finds that Functional Phrase 2 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 2. Specifically, the Examiner finds that FP2 recites further program code including: using the trained neural network. In fact, the Examiner finds that FP2 recites insufficient structure and/or algorithms for performing the claimed function, rather the Examiner finds that claim 10 recites only the underlying function of using the trained neural network. From the perspective, the Examiner finds that Functional Phrase 2 does not recite sufficient structure for performing the claimed function.
Because Functional Phrase 2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 2 meets invocation Prong (C).
Because Functional Phrase 2 does meet the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 2 does invoke 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 2
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP2.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP2. In reviewing the original disclosure, the Examiner finds that the ‘343 Patent utilizes a good/bad determination based upon the output of the “special image processing 412 and/or image analysis 414 modules and/or software in communication with a trained neural network 415.” (‘343 Patent at c.10, ll.47-56). Furthermore, in examination of annotated Figure 4 of the ‘343 Patent above, again, while one of ordinary skill in the art would recognize that the exemplary process for validating an image, the Examiner finds that the ‘343 Patent provides a “good/bad” categorization being determined by black boxes. As noted in the MPEP, “merely referencing [] a black box designed to perform their cited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. [Emphasis added.] ” (MPEP § 2181 II. B citing Blackboard). In lieu of the black box, the Examiner [AltContent: textbox (Figure 4 of '343 Patent (Annotated))]
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finds it unclear to what the exact criteria the ‘343 Patent utilizes to ascertain good or bad. (See id. at c.11, l.65 – c. 12, l.15). Moreover, in further examination of Figure 4 above, while one of ordinary skill in the art would recognize that if the processor/system determines an image to be “good” (i.e., acceptable), the Examiner finds that no further processing is provide to determine if the ”good” (i.e., acceptable) image is unusable, only to the “good” (i.e., acceptable) image being provide to a “3rd Party Validation Service” for further processing.” Thus, the Examiner concludes that the functions and ‘343 Patent fail to clearly link and associate corresponding structure to FP2.12
In light of the finding that Functional Phrase 2 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 2 is construed to cover the corresponding structure described in the specification and equivalents thereof. From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as program code, that can be executed by at least one processor, using the output of the trained neural network model, to determine whether the output parameter of detected feature categorizes the input image as confirmed13 and unusable, or its equivalent.
Functional Phrase – “Program Code II”14
A second means-plus-function phrase is recited in claim 10 (and included in each of dependent claims 11-17) which recites “program code …” or hereinafter “Functional Phrase 3” or “FP3.” The Examiner determines herein that FP3 does meet the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 10 expressly recites:
wherein the one or more processors, when executing the program code, are configured to output feedback instructions to capture one or more new images for determining whether the one or more new images are unusable by the remote post-validation platform
[emphasis added];
i. 3-Prong Analysis: Prong (A)
FP3 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “program code” is a generic placeholder or nonce term equivalent to “means” because the term “program code” does not convey any particular structure. The Examiner further notes that the specification of the ‘343 Patent does not specifically define “program code” and thus the specification of the ‘343 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘343 Patent uses this same phrase to describe several program codes. (See § IX.B.(2).i, supra).
Additionally, the Examiner has reviewed the prosecution history and the relevant prior art of record herein, and performed a prior art search for the phrase “program code,” and finds that “program code” as used in the claims does not provide an art-recognized structure to perform the claimed function. This is evidenced by the analysis applied to the use of this phrase in Functional Phrase 2 above. (See § IX.B.(2).i, supra). Thus, rather more than a simple program code would be required to perform the function recited in FP3.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “program code …” in FP3 as the name of a sufficiently definite structure for performing the functions recited in FP3 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “program code …” is a generic placeholder having no specific structure associated therewith. Because “program code …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP3 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP3, the Examiner finds that claimed function(s) are:
[O]utput[ting] feedback instructions to capture one or more new images for determining whether the one or more new images are unusable by the remote post-validation platform
Because FP3 recites the above recited functions, the Examiner concludes that FP3 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 3, the Examiner finds that Functional Phrase 3 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 3.15 In fact, the Examiner finds that the Functional Phrase 3 recites very little structure (beyond some generically recited structure) for performing the claimed function.
Because Functional Phrase 3 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 3 meets invocation Prong (C).
Because Functional Phrase 3 does meet the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 3 does invoke 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 3
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP3.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP3. In reviewing the original disclosure, the Examiner finds that the ‘343 Patent utilizes various sensors and/or image processing to provide parameters for determining keystone or other issues of captured images for outputting feedback instructions. (c.5, l.58 – c.6, ll.9; c.6, ll.45-59; c.12, l.7 – c.13, l.23; see Figures 4-7). Furthermore, in examination of annotated Figure 4 of the ‘343 Patent above, again, while one of ordinary skill in the art would recognize that the exemplary process of performing the various image processing tasks, the Examiner finds that the ‘343 Patent provides such processing being performed by black boxes. As noted in the MPEP, “merely referencing [] a black box designed to perform their cited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. [Emphasis added.] ” (MPEP § 2181 II. B citing Blackboard). In lieu of the black box, while one of ordinary skill in the art would recognize that various distance, focus, etc. parameters may be obtained by the sensors, the Examiner finds that the image processing and the correlation to the various sensor parameters being measured would require more than simple and/or generic image processing techniques, as is evidenced by Figure 5-7. To support the Examiner’ position, the Examiner finds that the ‘343 Patent states,
[t]he program instructions or program code may include specially designed and constructed instructions or code. For example, the disclosed embodiments may execute high-level and/or low-level software instructions, such as machine code (e.g., such as that produced by a compiler) and/or high-level code that can be executed by a processor using an interpreter.
(‘343 Patent at c.10, ll.9-15; emphasis added). One of ordinary skill in the art would recognize that the ‘343 Patent provides disclosure to broad and undefined image processing software. From this perspective, the Examiner finds that the ‘343 Patent fails to disclose or discuss any exact, unique and separate specific algorithms to perform image processing to attain the keystone and or other issues of captured images. Thus, the Examiner concludes that the functions and ‘343 Patent fails to clearly link and associate corresponding structure to FP3. Thus, the Examiner concludes that the ‘343 Patent fails to clearly link and associate corresponding structure to FP3.16
In light of the finding that Functional Phrase 3 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 3 is construed to cover the corresponding structure described in the specification and equivalents thereof. From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as program code, that can be executed by at least one processor, outputting feedback instructions to a user for corrective action, or its equivalent.
Claim Rejections – 35 U.S.C. § 112
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
New Matter
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to the limitations of claims 1, 10 and 18, the Examiner finds that claims 1, 10 and 18 recite:
the trained neural network having been trained using a dataset including images that have been rejected by the remote post-validation platform and images representing acceptable and unacceptable types of identification cards;
(Sept 2024 Claim Amendment at claims 1, 10 and 18 emphasis added). The Examiner finds that the recitation to “the trained neural network having been trained using a dataset including … images representing acceptable and unacceptable types of identification card” is not sufficiently described in the ‘343 Patent. First, the Examiner finds insufficient support for the claim requirements in the ‘343 Patent as indicated by Applicant. (See Sept 2024 Applicant Response at 14, 16, 18). Second, to support the Examiner’s position, the Examiner finds that the ‘343 Patent explicitly discloses the trained neural network being trained with “a history of acceptances and/or rejections of previously submitted ID images.” (‘343 Patent at c.10, ll.52-53). Specifically, the Examiner finds that the “trained neural network” is “trained using a dataset including images that have been accepted by a post-validation platform and images that have been rejected by the post-validation platform.” (Id. at Abstract; c.2, ll.20-23; c.3, ll.48-51; c.4, ll.23-27; c.13, ll.35-38). To the contrary, the Examiner finds that the ‘343 Patent only discloses an “unacceptable or wrong type of ID card” being provided to the system for the determination process, not at the training process. (Id. at c.6, ll.7-9; c.12, ll.7-15). While one of ordinary skill in the art would recognize that rejected images are based upon parameters and/or characteristics of the rejected images, the Examiner finds that the ‘343 Patent provides insufficient disclosure to the parameter and/or characteristic being an “unacceptable type of identification card,” only to features of the rejected image being insufficient. Moreover, while the ‘343 Patent does disclose an embodiment in which the neural network is pre-trained for particular subsets of ID card images for each state in the United States and utilizes the trained neural network to provide a match for a particular state type of ID (id. at c.11, ll.44-54), again, and light of the above disclosure from the ‘343 Patent, the Examiner finds that these images utilized to train the neural network are deemed acceptable and rejectable based upon a process that previously occurred at and by a post-validation platform and not explicitly disclosed as being acceptable or unacceptable types of identification images. (Emphasis added). In addition, the Examiner finds that the acceptable images utilized to train the neural network are specifically from a post-validation platform and not broadly without that post-validation platform process being utilized to determine the rejected/accepted images. Hence, even though the ‘343 Patent provides disclosure to the trained neural network having been trained using a dataset including images that have been rejected and accepted by a post-validation platform, the Examiner finds that neither the ‘343 Patent, nor its prosecution history, establish that the ‘343 Patent was concerned with trained images being acceptable/unacceptable based upon the type of identification card, nor the trained images not coming from a post-validation platform.
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a system, method or computer readable media (“CRM”) for pre-validation of identification images comprising “the trained neural network having been trained using a dataset including images that have been rejected by the remote post-validation platform and images representing acceptable and unacceptable types of identification cards,” as recited.
Claims 2-9, 11-17, 19 and 20 are similarly rejected based on their dependency from independent claims 1, 10 and 18.
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph
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 10-17 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 pre-AIA the applicant regards as the invention.
With respect to claim 10, the claim element “program code”(i.e., FP2 and FP3) is a limitation that invoke 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structures, materials, or acts to the claimed functions such that one of ordinary skill in the art would recognize what structures, materials, or acts perform the claimed function.
With respect to the “program code,” the phrases are indefinite because–to one of ordinary skill in this art–the metes and bounds of the phrases cannot be reasonably determined. The Examiner finds that the ‘343 Patent’s written description fails to disclose the corresponding structures, materials, or acts for the claimed function. (See § IX.B.(2)-(3)17 for explanation supra).
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 11-17 are similarly rejected based on their dependency from independent claim 10.
Claims 1-20 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 pre-AIA the applicant regards as the invention.
With respect to the limitations of claim 1, the Examiner finds that claim 1 recites the limitation,
responsive to the determining that the at least a first image is of an acceptable type of identification card and unusable
(Sept 2024 Claim Amendment at claim 1; emphasis added). The Examiner finds that the claim previously recites “determining, … , whether at least a first image of the one or more captured images is unusable by a remote post-validation platform.” The Examiner finds it unclear and indefinite to how the “responsive” step is based on a previous determination step to whether the image is of an acceptable type of identification card when there is no antecedent basis for such a determination. Further clarification is required to either provide proper antecedent basis or further differentiate the limitations.
Claims 2-9 are similarly rejected based on their dependency from independent claim 1.
With respect to the limitations of claim 10, the Examiner finds that claim 10 recites the limitation,
determine, … , whether at least a first image of the one or more images is of an acceptable type of identification card and unusable by a remote post-validation platform
(Sept 2024 Claim Amendment at claim 10; emphasis added). The Examiner finds that the claim further recites “determining whether the one or more images are unusable by a remote post-validation platform.” The Examiner finds it unclear and indefinite to: (1) how many different determination steps are required to satisfy the claim requirements; and/or (2) to why the “second” determination step does not have the requirement of determining whether the one or more images are of an acceptable type of identification card, like the previous determination step. Further clarification is required to either provide proper antecedent basis or further differentiate the limitations.
Claims 11-17 are similarly rejected based on their dependency from independent claim 10.
With respect to the limitations of claim 16, the Examiner finds that claim 16 recites the limitation,
wherein the one or more processors are further configured to, when executing the program code, cause the system to determine whether at least a second image of the one or more captured images is usable by the remote post-validation platform.
(Sept 2024 Claim Amendment at claim 10; emphasis added). The Examiner finds that the preceding claim recites “determin[ing] … , whether at least a first image of the one or more images is of an acceptable type of identification card and unusable by a remote post-validation platform.” The Examiner finds it unclear and indefinite to: (1) how many different determination steps are required to satisfy the claim requirements; (2) to why the “second” determination step does not have the requirement of determining whether the one or more images are of an acceptable type of identification card, like the previous determination step; and/or (3) what is the difference between determining usability” versus” unusability.” Further clarification is required to either provide proper antecedent basis or further differentiate the limitations.
With respect to the limitations of claim 18, the Examiner finds that claim 18 recites the limitation,
determining, … , whether at least a first image of the one or more captured images is unusable by a remote post-validation platform
(Sept 2024 Claim Amendment at claim 18; emphasis added). The Examiner finds that the claim further recites “determining whether the one or more images are of an acceptable type of identification card and unusable by a remote post-validation platform.” The Examiner finds it unclear and indefinite to: (1) how many different determination steps are required to satisfy the claim requirements; and/or (2) to why the “second” determination step does have the requirement of determining whether the one or more images are of an acceptable type of identification card, whereas the previous determination step does not. Further clarification is required to either provide proper antecedent basis or further differentiate the limitations.
Claims 11-17 are similarly rejected based on their dependency from independent claim 10.
Claim Rejections – 35 U.S.C. § 251
Oath/Declaration
Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action. (See § VII supra).
New Matter
Claims 1-20 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
The Examiner finds that there is insufficient indication in the specification that Applicant had possession of at least a system, method or computer readable media (“CRM”) for pre-validation of identification images including a trained neural network having been trained using a dataset including images representing acceptable and unacceptable types of identification, in addition to images that have been rejected by the remote post-validation platform cards. (See § X.A.(1) supra).
Original Patent Requirement
Claims 1, 2, 8, 9 and 16-22 are rejected under 35 U.S.C. 251 as being in violation of the original patent requirement.
Section 251 requires that reissue is for “the invention disclosed in the original patent.” In order to satisfy the original patent requirement, “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942). Furthermore, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. In other words, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014).
In the instant case, it does not appear from the face of the original patent that Applicant intended to a system, method or CRM for pre-validation of identification images in which the determination step performs a determination of both whether the first image is of an acceptable type of identification card and unusable. 18
The Technical Problem makes clear that the invention is drawn to a system, method or CRM for pre-validation of identification images in which images are captured and analyzed, utilizing a trained neural network, to determine whether an image captured is unusable/usable is a remote post-validation process. (‘343 Patent at c.2, ll.16-20). The Examiner finds the problem is solved by a particular system, method and CRM comprising:
[a] mobile computing device captures image(s) of an ID card. In response, a pre-validation system in communication with the mobile computing device analyzes one or more quality features of the image(s), which includes determining, utilizing a trained neural network (trained using a dataset including images that have been accepted by a post-validation platform and images that have been rejected by the post-validation platform) and based on the one or more quality features, whether at least a first image of the captured image(s) is usable by a remote post-validation process.
(Id. at Abstract; c.2, ll.19-28; emphasis added)19. First, it is readily apparent that the entire point of the ‘343 Patent was to solve a problem of providing a system, method and CRM capable of prevalidating an image captured for a post-validation process in order to determine whether the captured image is unusable/usable. (Id. at c.2, ll.16-20). The claims as filed and during prosecution of the were always drawn to a system, method and CRM comprising performing multiple steps, including ““determining, … , whether at least a first image of the one or more captured images is unusable by a remote post-validation platform. (Id. at Abstract; c.1, ll.42-47; c.2, ll.16-20; c.12, ll.7-20; c.12, l.35 – c.13,l.23; emphasis added on “unusable”). Moreover, the claims in the ‘343 Patent are with respect to the inventive feature of what must occur if the determination is based upon the first image being “unusable” as opposed to “usable.” This is evidenced by comparing the claims filed in the ‘388 Application of the ‘343 Patent with the claims filed and patented in both ‘609 and ‘283 Parent Patents. (Compare ‘388 Application Claims with both the ‘609 and ‘283 Parent Patent Claims).
This situation is also somewhat analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
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267
600
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Greyscale
Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the patent here does not clearly and unequivocally disclose any embodiment that includes
a system, method and CRM comprising performing steps, including: determining whether the first image is both of an acceptable type of identification card and unusable. Thus, to broaden the claims to permit such an embodiment runs afoul of the original patent requirement.
Claims 2-9, 11-17, 19 and 20 are similarly rejected based on their dependency from independent claims 1, 10 and 18, respectively.
Claim Rejections – 35 USC § 103
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 whic