DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 03 March 2026 has been entered. Applicant amended claims 1-4, 6, 11-15, 17, and 20. Accordingly, claims 1-20 remain pending.
Response to Arguments
Applicant’s arguments with respect to the independent claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner will provide an updated prior art rejection if applicable once the issues raised in the 35 USC 112(a) and (b) rejections are resolved.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Claims 1, 12, and 20 recite “determine whether the second set of masking parameters is equal to or greater than the first set of masking parameters”. The specification does not provide adequate written description for describing how the masking parameters are quantifiable to determine whether the second masking parameter is equal to or greater than the first masking parameter.
Claims 2-11 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 1.
Claims 13-19 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 12.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1, 12, and 20 recite “determine whether the second set of masking parameters is equal to or greater than the first set of masking parameters”. The specification does not provide critical teachings of details working example, nor explanations for quantifying the masking parameters to make the determination of whether the second set of masking parameters is equal to or greater than the first set of masking parameters. The specification must show teachings for those skilled in the art how to make use the full scope of the claimed invention without under experimentation.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
[A] The breadth of the claims — Everything within the scope of the claim is not enabled. The specification does not provide critical teaching of how the determination is made to quantify the two masking parameters and thus does not provide critical teachings on “determining whether the second set of masking parameters is equal to or greater than the first set of masking parameters”.
[B] The nature of the invention — Specification provides no algorithms, critical teachings, nor working examples for elements for “determining whether the second set of masking parameters is equal to or greater than the first set of masking parameters”.
[C] The state of the prior art –While masking and masking rules/parameters may be known in the art, there are still different possible processes/techniques for quantifying the two masking parameters.
[D] The level of one of ordinary skill- Even skilled artisans would need to devise methods to practice the invention across its entire scope and must experiment broadly to make determination for quantifying the two masking parameters for “determining whether the second set of masking parameters is equal to or greater than the first set of masking parameters”.
[E] The level of predictability in the art- Depending on the data type, results can vary greatly and be unpredictable in quantifying the two masking parameters for the determination in “determining whether the second set of masking parameters is equal to or greater than the first set of masking parameters”.
[F] The amount of direction provided by the inventor —no formulas/algorithms are supplied to provide “determining whether the second set of masking parameters is equal to or greater than the first set of masking parameters”.
[G] The existence of working examples — no examples that contain formulas or algorithms are provided.
[H] The quantity of experimentation needed to make or use the invention based on the content of the disclosure — undue experimentation, since artisans must invent techniques and determine the data types and how to make the claimed parameters quantifiable so that this claimed comparison could be made. The lack of detail in the specification would require undue experimentation on the part of those having ordinary skill in the art to figure out how to make the claimed parameters quantifiable so that this claimed comparison could be made. The masking parameters could be implementable using a vast array of data types, quantifying the parameters would require any manner of undisclosed processing to arrive at a comparable state.
Based on the evidence regarding the Wands factors above, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
Claims 2-11 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 1.
Claims 13-19 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 12.
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.
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 12, and 20 fail to particularly point out how the masking parameters are quantifiable for obtaining a determination on whether the second masking parameter is equal to or greater than the first masking parameter.
Claims 2-11 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 1.
Claims 13-19 are rejected as being dependent on, and failing to overcome the deficiencies of, rejected independent claim 12.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA FARROW whose telephone number is (571)272-1856. The examiner can normally be reached M - F 7:30am-4:00pm (EST).
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/F.F/ Examiner, Art Unit 2437
/BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437