DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 5
II. Priority 5
III. Pertinent Prosecution History 5
IV. Claim Status 6
V. Reissue Requirements 7
VI. Drawings Objections 8
VII. Claim Objections 10
VIII. Claim Interpretation 10
A. Lexicographic Definitions 11
B. 35 U.S.C § 112 6th Paragraph 11
(1) Functional Phrase – “Receiving Instructions” 12
(2) Functional Phrase – “Deriving Instructions I” 13
(3) Functional Phrase – “Generating Instructions” 19
(4) Functional Phrase – “Deriving Instructions II” 24
(5) Functional Phrase – “Combining Instructions” 29
IX. Claim Rejections – 35 U.S.C. § 112 34
A. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 34
(1) Written Description 34
(2) New Matter 37
B. 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph 38
X. Broadening of Examined Claims 42
A. Broadening of Examined Claims’ Limitations 42
(1) Claims 1 and 12 42
(2) Claim 25 44
XI. Claim Rejections - 35 USC § 251 46
A. New Matter 46
B. Broadening/Recapture 47
C. Original Patent Requirement 57
XII. Claim Rejections – 35 USC § 103 59
A. Claims 1, 2, 11, 12, 14, 15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Priest (U.S. Publication No. 2017/0024929) in view of Ohhashi (U.S. Patent No. 11,428,527). 60
B. Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Priest (U.S. Publication No. 2017/0024929) in view of Ohhashi (U.S. Patent No. 11,428,527) as applied to claims 1, 2, 11, 12, 14, 15 and 17-19 above, and in further view of Engstrom (U.S. Publication No. 2011/01910213). 75
C. Claims 3-6, 8, 10 and 20-26 is rejected under 35 U.S.C. 103 as being unpatentable over Priest (U.S. Publication No. 2017/0024929) in view of Ohhashi (U.S. Patent No. 11,428,527) as applied to claims 1, 2, 11, 12, 14, 15 and 17-19 above, and in further view of Robert et al. (U.S. Publication No. 2017/0193693)(“Robert”). 76
XIII. Response to Arguments 96
A. Oath/Declaration Objection(s) 96
B. Claim Objection(s) 97
C. Claim Interpretation - 35 U.S.C. § 112, Sixth Paragraph, Invocation 97
(1) Deriving Instructions I, Generating Instructions, Deriving Instructions II and Combining Instructions 97
D. 35 U.S.C. § 112, First Paragraph, Rejections 101
(1) Written Description 101
(a) Claims 12, 14-16, 18, 19, 21, 22 and 24 101
(b) Claims 21, 23 and 24 102
(c) Claim 25 103
E. 35 U.S.C. § 112, Second Paragraph, Rejections 104
(1) Claims 12, 14-16, 18, 19, 21, 22 and 24 104
(2) Claims 1-8, 10-12 and 14-24 106
(3) Claims 10 and 15 106
(4) Claim 22 107
(5) Claims 21, 23 and 24 107
F. 35 U.S.C. § 251 Rejections 108
(1) Oath/Declaration 108
(2) New Matter 109
(3) Broadening/Recapture 109
G. 35 U.S.C. § 102 Rejections 112
H. 35 U.S.C. § 103 Rejections 112
(1) Combination of Priest and Ohhashi 112
XIV. Conclusion 117
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.
Priority
Applicant filed the instant reissue application 17/675,811 (“‘811 Reissue Application”) on 18 February 2022 for U.S. Application No. 15/881,073 (“‘073 Application"), filed 26 January 2018, now U.S. Patent No. 10,565,787 (“‘787 Patent”), issued 18 February 2020, which claims domestic priority to Provisional Application No. 62/451,295 (“‘295 Prov Application”), filed 27 January 2017.
Thus, the Examiner concludes that for examination purposes the instant ‘811 Reissue Application claims a priority date of 27 January 2017.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘811 Reissue Application on 18 February 2022. The Examiner finds that the instant ‘811 Reissue Application included a preliminary amendment (“Feb 2022 Preliminary Amendment”) to the claims (“Feb 2022 Claim Amendment”), and the specification (“Feb 2022 Spec Amendment”). The Feb 2022 Claim Amendment includes an amendment: providing amended original claims 1, 3, 10, 11, 12 and 14, original claims 2, 4-8 and 15-19; canceled original claims 9 and 13; and adding new claims 20-26.
The Office issued a non-Final Office action on 03 April 2024 (“April 2024 Non-Final Office Action”). In particular, the April 2024 Non-Final Office Action provided rejections for claim 1-8, 10-12 and 14-26 (“Rejected Claims”) under 35 U.S.C. §§ 112, 102(a)(1)/(a)(2), 103 and 251.1
On 23 September 2024, Applicant filed a response to the April 2024 Non-Final Office Action (“Sept 2024 Applicant Response”). The Sept 2024 Applicant Response contained: “Remarks,” “Amendments to the Specification” (“Sept 2024 Spec Amendment”), a new Oath/Declaration (“Sept 2024 Oath/Declaration”) and “Amendments to the Claims” (“Sept 2024 Claim Amendment”) including: currently twice amended2 original claims 1, 10, 11 and 12; once amended3 original claims 3, 14 and 15; original claims 2, 4-8 and 16-19; canceled4 original claims 9 and 13; once amended5 new claims 20-25; and previously presented6 new claim 26
Claim Status
The Examiner finds that the claim status in the instant ‘811 Reissue Application is as follows:
Claim(s) 1, 10, 11 and 12 (Original and twice amended)
Claim(s) 3, 14 and 15 (Original and once amended)
Claim(s) 2, 4-8 and 16-19 (Original)
Claim(s) 9 and 13 (Original and canceled)
Claim(s) 20-25 (New and once amended)
Claim(s) 26 (New)
Thus, the Examiner concludes that claims 1-8, 10-12 and 14-26 are pending in the instant ‘668 Reissue Application. Claims 1-8, 10-12 and 14-26 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).
Drawings Objections
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “generating the 3D model” step further including comprising deriving 3D point clouds for laser scan data obtained from the one or more LiDAR scanners at respective locations near a complex object; combining the first 3D point cloud with derived 3D point clouds into a single 3D point cloud; and then generating again the 3D point model from the newly combined single 3D point cloud, as recited in claims 21, 23 and 24, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.173(b)(1) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure of an amended drawing should be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be surrounded by brackets and identified as "Canceled," and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.173(b)(3). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 11 is objected to because of the following informalities: “the plurality of images is captured from the perspective of the UAV in flight.” in lines 1-2, respectively, should read – the plurality of overlapping images are captured from the perspective of the UAV in flight –. [Emphasis added]. The claim will be examined as such.7
Moreover, to expedite prosecution, the Examiner recommends Applicant provide a complete set and listing of claims (i.e., original, original/amended, original/canceled, new, and new/amended) to better facilitate the examination, and any future printing, processes.
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 and 26-29 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 uses 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 – “Receiving Instructions”
A first means-plus-function phrase is recited in claim 12 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24) which recites “instructions …” or hereinafter “Functional Phrase 1” or “FP1.” The Examiner determines herein that FP1 does not meet the three prong test and thus will not interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 12 expressly recites:
instructions executable by the one or more processors, wherein the instructions comprise:
receiving a plurality of overlapping images of a complex object from one or more cameras mounted to an unmanned aerial vehicle (UAV), wherein each image of the plurality of overlapping images overlaps one or more respective other images in the plurality of overlapping images by more than 90%
[emphasis added];
i. 3-Prong Analysis: Prong (A)
FP1 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘787 Patent does not specifically define “instructions” and thus the specification of the ‘787 Patent does not impart or disclose any structure for the phrase.
However, the Examiner has reviewed the prosecution history and the relevant prior art of record herein and finds that “instructions” as used in the claims does provide an art-recognized structure to perform the claimed function. The Examiner finds that “instructions” would be simply software that simply receives a plurality of overlapping images captured by an unmanned aerial vehicle (“UAV”) having a certain percentage of overlap. (‘787 Patent at c.1, ll.64-66; c.2, ll.8-10, 25-27, 37-39; c.3, ll.9-13; c.5, l.66 – c.6, l.11; also see Priest (U.S. Publication No. 2017/0024929) at ¶¶ 0213-0215, 0236-0238, 0241-0242; see Figures 48, 49).
In light of the above, the Examiner finds that the instructions in association with the specific function associated therewith implies sufficient/known structure. Thus, the Examiner concludes that FP1 does not meet invocation Prong (A).
Because Functional Phrase 1 does not meet Prong (A) of the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 1 does not invoke 35 U.S.C § 112 6th paragraph.
Functional Phrase – “Deriving Instructions I”
A second means-plus-function phrase is recited in claim 12 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24) which recites “instructions …” 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 12 expressly recite:
instructions executable by the one or more processors, wherein the instructions comprise:
deriving a first 3D point cloud of a first portion of the complex object from the plurality of overlapping images, wherein at least a section of the first portion of the complex object is partially or wholly occluded
[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 “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘787 Patent does not specifically define “instructions” and thus the specification of the ‘787 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘787 Patent uses this same phrase to describe several instructions.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that instructions is a sufficient and definite structure to perform the functions recited in FP2. For example, U.S. Publication No. 2017/0024929 illustrates instructions for: utilizing a plurality of overlapping image to derive a first 3D point cloud of a first portion of a complex object; and utilizing the derived first 3D point cloud to generate a 3D model having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘787 Patent. Similarly, U.S. Patent No. 11,428,527 illustrates instructions for: utilizing a plurality of overlapping image to derive a first 3D point cloud of a first portion of a complex object; utilizing a plurality of 3D measurement devices to derive corresponding 3D point clouds at corresponding locations near the complex object; combine the derived 3D point clouds into a single 3D point cloud; and utilizing the combined single 3D point cloud to generate a 3D model having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘787 Patent.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “instructions …” 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 “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” 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) is:
[D]eriv[ing]a first 3D point cloud of a first portion of the complex object from the plurality of overlapping images, wherein at least a section of the first portion of the complex object is partially or wholly occluded
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, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structures for performing the claimed function.8 Thus, 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.
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 meets the 3-prong analysis as set forth in MPEP § 2181 I, the Examiner concludes that Functional Phrase 2 does invokes 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 ‘787 Patent discloses:
Method 400 may be implemented on one or more computing devices. The one or more computing devices may, for example, contain one or more processors, memories, and other components typically present in general purpose computing devices. The one or more processors may be any conventional processors, such as, for example, commercially available CPUs. The processors may also be dedicated devices such as, for example, ASICs or other hardware-based processors. The one or more memories may be of any type capable of storing information accessible by the one or more processors. For example, one or more memories may include a computing device-readable medium, or other medium that stores data that may be read with the aid of an electronic device, such as, for example, a hard-drive, memory card, ROM, RAM, DVD or other optical disks, as well as other write-capable and read-only memories. The information stored in the one or more memories may include instructions and data that may be executed or otherwise used by the one or more processors. The instructions may be stored in object code format for direct processing by the processor, or in any other computing device language including scripts or collections of independent source code modules that are interpreted on demand or compiled in advance.
(‘787 Patent at c.10, ll.31-45- emphasis added). In lieu of above, the Examiner finds that the ‘787 Patent discloses instructions as being stored code, language, scripts etc. for direct processing by a processor. (Id.) From this perspective, one of ordinary skill in the art would look to the rest of the ‘787 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 2. In examination of the ‘787 Patent, the Examiner finds that the instructions 440, occurring in the method 400 of Figure 4 of the ‘787 Patent, to derive a 3D point cloud from a plurality of images as being essentially a “black box.” 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 finds that the ‘787 Patent discloses instructions as being “photogrammetry software, such as, for example, Pix4Dmapper Pro [can be used] to derive a 3D point cloud from a plurality of images.” (‘787 Patent at c.5, ll.35-38; c.6, ll.47-50; c.9, ll.30-50; see Figure 4). One of ordinary skill in the art would recognize that the ‘787 Patent provides disclosure to 1) broad and undefined photogrammetry software; and 2) an example of specific software.
With respect to 1), the Examiner finds that to derive a 3D point cloud from a plurality of overlapping images requires more than generic image processing photogrammetry software, as evidenced by Applicant’s own ‘787 Patent’s disclosure. (Id.; emphasis at c.9, ll.30-50). From this perspective, the Examiner finds that the ‘787 Patent fails to disclose or discuss any exact, unique and separate specific algorithms to derive a 3D point cloud from a plurality of overlapping images. (See Id.)
With respect to 2), the Examiner finds that the ‘787 Patent discloses a known technique(s) to provide the photogrammetry processing to derive a 3D point cloud from a plurality of overlapping images. (‘787 Patent at c.5, ll.35-38; c.6, ll.47-50; c.9, ll.30-50; see Figure 4). However, the MPEP states,
the corresponding structure, material, or acts cannot include any structure, material, or acts disclosed only in the material incorporated by reference or a prior art reference. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317, 94 USPQ2d 1261, 1267 (Fed. Cir. 2010) (stating, "[s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references."); Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999).
(MPEP § 2181 III; emphasis). In this light, the Examiner finds that “[a] bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation.” (Id.) Thus, the Examiner concludes that the functions and ‘787 Patent fails to clearly link and associate corresponding structure to FP2.9
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. In light of the examination of the ‘787 Patent above, the Examiner finds that the ‘787 Patent provides insufficient corresponding structures and thus this phrase is nothing more than “instructions.” From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as instructions, that can be executed by a computer/processing device, comprising: some type of photogrammetry software which accepts a plurality of overlapping images and produces 3D point cloud data, or its equivalent.
Functional Phrase – “Generating Instructions”
A third means-plus-function phrase is recited in claims 12, 21 and 24 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24) which recites “instructions …” 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 12 expressly recites:
instructions executable by the one or more processors, wherein the instructions comprise:
generating a 3D model of the complex object from the single 3D point cloud
[emphasis added]; claim 21 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
generating the 3D model from the single 3D point cloud
[emphasis added]; and claim 24 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
generating the 3D model of the complex object from the single 3D point cloud
[emphasis added].
3-Prong Analysis: Prong (A)
FP3 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘787 Patent does not specifically define “instructions” and thus the specification of the ‘787 Patent does not impart or disclose any structure for the phrase, for the same reasons as set forth above. (See § VIII.B.(2).i, supra).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” 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 functions are:
[G]enerat[ing] a 3D model of the complex object from the single 3D point cloud;
[G]enerat[ing] the 3D model from the single 3D point cloud;
[G]enerat[ing] the 3D model of the complex object from the single 3D point cloud
Because FP3 recites the above recited functions, the Examiner concludes that FP3 meets Invocation Prong (B).
3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 3, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structures for performing the claimed function.10 Thus, 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.
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 meets the 3-prong analysis as set forth in MPEP § 2181 I, the Examiner concludes that Functional Phrase 3 does invokes 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 ‘787 Patent discloses:
Method 400 may be implemented on one or more computing devices. The one or more computing devices may, for example, contain one or more processors, memories, and other components typically present in general purpose computing devices. The one or more processors may be any conventional processors, such as, for example, commercially available CPUs. The processors may also be dedicated devices such as, for example, ASICs or other hardware-based processors. The one or more memories may be of any type capable of storing information accessible by the one or more processors. For example, one or more memories may include a computing device-readable medium, or other medium that stores data that may be read with the aid of an electronic device, such as, for example, a hard-drive, memory card, ROM, RAM, DVD or other optical disks, as well as other write-capable and read-only memories. The information stored in the one or more memories may include instructions and data that may be executed or otherwise used by the one or more processors. The instructions may be stored in object code format for direct processing by the processor, or in any other computing device language including scripts or collections of independent source code modules that are interpreted on demand or compiled in advance.
(‘787 Patent at c.10, ll.31-45- emphasis added). In lieu of above, the Examiner finds that the ‘787 Patent discloses instructions as being stored code, language, scripts etc. for direct processing by a processor. (Id.) From this perspective, one of ordinary skill in the art would look to the rest of the ‘787 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 3. In examination of the ‘787 Patent, the Examiner finds that the instructions 460, occurring in the method 400 of Figure 4 of the ‘787 Patent, to generate a 3D model of the complex object as being essentially a “black box.” 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 finds that the ‘787 Patent discloses instructions as being “[s]oftware, such as Leica Cyclone, Leica CloudWorx, and/or AutoCAD, [may be used] to extract structural members and other objects from the single 3D point cloud to generate the 3D model of the cell tower.” (‘787 Patent at c.10, ll.5-10; see Figure 4). One of ordinary skill in the art would recognize that the ‘787 Patent provides disclosure to 1) broad and undefined software; and 2) an example of specific software.
With respect to 1), the Examiner finds that to generate a 3D model of the complex object using a 3D point cloud requires more than generic processing software, as evidenced by Applicant’s own ‘787 Patent’s disclosure. (Id.) From this perspective, the Examiner finds that the ‘787 Patent fails to disclose or discuss any exact, unique and separate specific algorithms to generate a 3D model of the complex object using a 3D point cloud.
With respect to 2), the Examiner finds that the ‘787 Patent discloses a known technique(s) to provide the software processing to generate a 3D model of the complex object using a 3D point cloud. (‘787 Patent at c.10, ll.5-10; see Figure 4). However, the MPEP states,
the corresponding structure, material, or acts cannot include any structure, material, or acts disclosed only in the material incorporated by reference or a prior art reference. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317, 94 USPQ2d 1261, 1267 (Fed. Cir. 2010) (stating, "[s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references."); Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999).
(MPEP § 2181 III; emphasis). In this light, the Examiner finds that “[a] bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation.” (Id.) Thus, the Examiner concludes that the functions and ‘787 Patent fails to clearly link and associate corresponding structure to FP3.11
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. In light of the examination of the ‘787 Patent above, the Examiner finds that the ‘787 Patent provides insufficient corresponding structures and thus this phrase is nothing more than “instructions.” From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as instructions, that can be executed by a computer/processing device, comprising: some type of software which accepts a 3D point cloud and generates 3D model, or its equivalent.
claims 12, 21 and 24 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24)
Functional Phrase – “Deriving Instructions II”
A fourth means-plus-function phrase is recited in claims 12, 21 and 24 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24) which recites “instructions …” or hereinafter “Functional Phrase 4” or “FP4.” The Examiner determines herein that FP4 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 12 expressly recites:
instructions executable by the one or more processors, wherein the instructions comprise:
deriving a second 3D point cloud from scan data obtained from one or more scanners at a first location near the complex object ;
[emphasis added]; claim 21 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
deriving one or more 3D point clouds from laser scan data obtained from one or more LiDAR scanners at respective locations near the complex object;
[emphasis added]; and claim 24 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
deriving a third 3D point cloud from laser scan data obtained from the one or more LIDAR scanners at a second location near the complex object
[emphasis added].
3-Prong Analysis: Prong (A)
FP4 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘787 Patent does not specifically define “instructions” and thus the specification of the ‘787 Patent does not impart or disclose any structure for the phrase, for the same reasons as set forth above. (See § VIII.B.(2).i, supra).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP4 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP4, the Examiner finds that claimed functions are:
[D]eriving one or more 3D point clouds from laser scan data obtained from one or more LiDAR scanners at respective locations near the complex object;
[D]eriving a second 3D point cloud from laser scan data obtained from one or more LIDAR scanners at a first location near the complex object; and
[D]eriving a third 3D point cloud from laser scan data obtained from the one or more LIDAR scanners at a second location near the complex object
Because FP4 recites the above recited functions, the Examiner concludes that FP4 meets Invocation Prong (B).
3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 4, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structures for performing the claimed function.12 Thus, the Examiner finds that Functional Phrase 4 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 4.
Because Functional Phrase 4 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 4 meets invocation Prong (C).
Because Functional Phrase 4 meets the 3-prong analysis as set forth in MPEP § 2181 I, the Examiner concludes that Functional Phrase 4 does invokes 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 4
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 FP4.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP4. In reviewing the original disclosure, the Examiner finds that the ‘787 Patent discloses:
Method 400 may be implemented on one or more computing devices. The one or more computing devices may, for example, contain one or more processors, memories, and other components typically present in general purpose computing devices. The one or more processors may be any conventional processors, such as, for example, commercially available CPUs. The processors may also be dedicated devices such as, for example, ASICs or other hardware-based processors. The one or more memories may be of any type capable of storing information accessible by the one or more processors. For example, one or more memories may include a computing device-readable medium, or other medium that stores data that may be read with the aid of an electronic device, such as, for example, a hard-drive, memory card, ROM, RAM, DVD or other optical disks, as well as other write-capable and read-only memories. The information stored in the one or more memories may include instructions and data that may be executed or otherwise used by the one or more processors. The instructions may be stored in object code format for direct processing by the processor, or in any other computing device language including scripts or collections of independent source code modules that are interpreted on demand or compiled in advance.
(‘787 Patent at c.10, ll.31-45- emphasis added). In lieu of above, the Examiner finds that the ‘787 Patent discloses instructions as being stored code, language, scripts etc. for direct processing by a processor. (Id.) From this perspective, one of ordinary skill in the art would look to the rest of the ‘787 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 4. In examination of the ‘787 Patent, the Examiner finds that the instructions 410, 420, 430, occurring in the method 400 of Figure 4 of the ‘787 Patent, to
derive 3D point clouds from laser scan data obtained from one or more LiDAR scanners at respective locations near a complex object as being essentially a “black box.” 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 finds that the ‘787 Patent discloses the LiDAR scanner providing laser scan data from various locations, in which the location specific obtained laser scan data is utilized to derive corresponding 3D point cloud data at that location. (‘787 Patent at c.6, ll.12-29; c.8, ll.11-16; see Figures 2A-2C). The Examiner finds that the ‘787 Patent discloses the derived 3D point clouds containing a plurality of unique points, however, the ‘787 Patent does not discloses how the plurality of unique points are derived from the obtained laser scan data at each respective location. (Id.) From this perspective, one of ordinary skill in the art would recognize that the ‘787 Patent provides disclosure to block 410 deriving 3D point clouds, however, the Examiner finds that the ‘787 Patent fails to disclose or discuss any exact, unique and separate specific algorithms utilized to derive the 3D point clouds from the respective obtained laser scan data from each position. Thus, the Examiner concludes that the functions and ‘787 Patent fails to clearly link and associate corresponding structure to FP4.13
In light of the finding that Functional Phrase 4 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 4 is construed to cover the corresponding structure described in the specification and equivalents thereof. In light of the examination of the ‘787 Patent above, the Examiner finds that the ‘787 Patent provides insufficient corresponding structures and thus this phrase is nothing more than “instructions.” From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as instructions, that can be executed by a computer/processing device, comprising: some type of software which accepts laser scan data and derives 3D point cloud data therefrom, or its equivalent.
Functional Phrase – “Combining Instructions”
A fifth means-plus-function phrase is recited in claims 12, 21 and 24 (and included in each of dependent claims 14-16, 18, 19, 21, 22 and 24) which recites “instructions …” or hereinafter “Functional Phrase 5” or “FP5.” The Examiner determines herein that FP5 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 12 expressly recites:
instructions executable by the one or more processors, wherein the instructions comprise:
combining the first and second 3D point clouds into a single 3D point cloud
[emphasis added]; claim 21 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
combining the first 3D point cloud and the one or more 3D point clouds into the single 3D point cloud
[emphasis added]; and claim 24 expressly recites:
[instructions executable by the one or more processors, wherein the instructions comprise:]
combining the first, second, and third 3D point clouds into the single 3D point cloud
[emphasis added].
3-Prong Analysis: Prong (A)
FP5 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘787 Patent does not specifically define “instructions” and thus the specification of the ‘787 Patent does not impart or disclose any structure for the phrase, for the same reasons as set forth above. (See § VIII.B.(2).i, supra).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP5 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP5, the Examiner finds that claimed functions are:
[C]ombining the first 3D point cloud and the one or more 3D point clouds into a single 3D point cloud; and
[C]ombining the first, second, and third 3D point clouds into a single 3D point cloud
Because FP5 recites the above recited functions, the Examiner concludes that FP5 meets Invocation Prong (B).
3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 5, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structures for performing the claimed function.14 Thus, the Examiner finds that Functional Phrase 5 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 5.
Because Functional Phrase 5 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 5 meets invocation Prong (C).
Because Functional Phrase 5 meets the 3-prong analysis as set forth in MPEP § 2181 I, the Examiner concludes that Functional Phrase 5 does invokes 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 5
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 FP5.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP5. In reviewing the original disclosure, the Examiner finds that the ‘787 Patent discloses:
Method 400 may be implemented on one or more computing devices. The one or more computing devices may, for example, contain one or more processors, memories, and other components typically present in general purpose computing devices. The one or more processors may be any conventional processors, such as, for example, commercially available CPUs. The processors may also be dedicated devices such as, for example, ASICs or other hardware-based processors. The one or more memories may be of any type capable of storing information accessible by the one or more processors. For example, one or more memories may include a computing device-readable medium, or other medium that stores data that may be read with the aid of an electronic device, such as, for example, a hard-drive, memory card, ROM, RAM, DVD or other optical disks, as well as other write-capable and read-only memories. The information stored in the one or more memories may include instructions and data that may be executed or otherwise used by the one or more processors. The instructions may be stored in object code format for direct processing by the processor, or in any other computing device language including scripts or collections of independent so