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 .
This action is responsive to the amendment of 11/25/2025.
Response to Arguments
Specification
The objection to the specification is overcome by amendment.
Claim Objection
The objection is overcome by amendment.
Rejections under 35 U.S.C. § 112(b)
Regarding claim 19, Applicant’s remarks clarify for the record that the broadest reasonable interpretation of the claim as laid out in the previous action is intended (that the further limitation recited in claim 19 is limiting only on the origin of images obtained rather than requiring a step of generating the images as part of obtaining them), so the indefiniteness rejections for claims 19-20 and 27 are withdrawn.
Regarding claim 25, the indefiniteness rejection is overcome by amendment.
Rejections under 35 U.S.C. § 101
Applicant’s argument is that analyzing pixel data of digital images to identify a persistent dark area that remains dark through a range of tilt angles, and identifying a transition digital image where the persistent dark area has brightened as recited in claim 14 amount to patent-eligible specific technical operations, however, this argument is not persuasive. Analyzing pixel data, identifying a persistent dark area, and identifying a digital image where it has brightened all encompass embodiments as mathematical calculations or mental processes, both categories of abstract idea, as described below.
Rejections under 35 U.S.C. §§ 102 and 103
Applicant’s first argument is that Sasian does not teach identifying a transition digital image, however, this argument is not persuasive. In particular, see paragraphs 123 and 124 for additional discussion of variation of colors (i.e., degree of obscuration, described in the instant application in terms of persistent dark areas) from one angle to another and the images and angles at which that occurs.
Applicant’s second argument is that Sasian does not teach the claimed persistent dark area, however, this argument is not persuasive. The persistent dark area as defined in the claims (corresponding to light obscured by the viewer’s head) is not different from the blue portions described by Sasian as corresponding to light obscured by the viewer’s head (see, for example, paragraph 112 of Sasian). A prior art reference is not required to use exactly the same words to describe a particular concept as a claim uses to be said to teach the subject matter claimed.
Applicant’s third argument is that while Sasian discloses grading based on color proportions, Sasian dos not “assigning a bow tie rating using the transition angle.” This argument is not persuasive. The color proportions taught by Sasian correspond to the extent to which the particular areas are likely to be obscured by the viewer’s head or illuminated in particular ways, and Sasian teaches measuring those and their transitions based on angles. The distinction that Applicant is attempting to point out with this argument may not be reflected in the actual claims as written.
Applicant also argues similar features recited in independent claims 31 and 35, however, these arguments are not persuasive for similar reasons as those set forth above.
Applicant’s penultimate argument is that Sasian does not teach type I or type II bow ties, however, this argument is not persuasive. Sasian does teach dark areas caused by retroreflection within the gem which causes the viewer to see their own reflection, which is typically darker than the sources of illumination that light up the room, and Sasian teaches quantifying that darkness due to retroreflection, whether Sasian used the same terminology to describe it or not.
Applicant’s final argument is that the portion of Sasian that points to the peripheral region of the diamond does not teach claim 28 as currently amended, however, this argument is not persuasive It is elsewhere in Sasian that teaches the claim as currently amended, as described below. Also note that the term “artificial intelligence” can reasonably be interpreted quite broadly, to include, for example, expert systems that make judgements based on preprogrammed criteria.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-20, 25, and 27-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 14:
Broadest reasonable interpretation
Under the broadest reasonable interpretation (BRI), the terms of the claim are presumed to have their plain meaning consistent with the specification as it would be interpreted by one having ordinary skill in the art. See MPEP 2111.
Claim 14 is a process claim which generally recites steps of obtaining digital images, but does not explicitly require creating the images, especially in light of Applicant’s clarification regarding claim 19 and in light of claim 29 (one could, for example, download images that were produced before the beginning of the process); analyzing pixel data; identifying a transition digital image; determining a transition angle; and assigning a bow tie rating.
Step 1
Yes, the claim is for a process, which is one of the four statutory categories.
Step 2A, Prong 1
Yes, the claim recites analyzing digital images, identifying a digital image, determining an angle, and assigning a rating, which each encompass embodiments as mathematical calculations or mental processes, categories of abstract idea.
Step 2A Prong 2
No, the additional element, obtaining digital images of a diamond, does not integrate the judicial exception into a practical application, as it amounts to mere data gathering necessary to practice the abstract idea, so the claim is directed to the abstract idea.
Step 2B
No, the claim does not amount to significantly more than the judicial exception, as, in addition to the above, the data gathering step is well-understood, routine, and conventional.
Dependent claims 15-20, 25, and 27-30
Claims 15 and 16 expand the judicial exception by adding an additional step as part of the mental process (claim 15) and adding details to the new step (claim 16). Expanding an abstract idea does not make it non-abstract.
Claims 17 and 30 give details as to the nature of the images, but still do not positively state that the images are made as part of the process. Claim 17 also well as adding a detail to the mental process from claim 15. These limitations do not suffice to make claims 17 or 30 eligible.
Claims 18-20 and 27, similar to claim 17, specify details as to the kind of image considered, but do not require that the diamond tilting video or ray tracing images be recorded or generated as a step of the process.
Claim 25 attempts to limit the outcome of the process rather than the steps of the process or how they are performed, so does not add eligibility.
Claim 28 recites the use of artificial intelligence, recited at a high level of generality, to perform parts of the abstract idea. Performing an abstract idea using a generic computer does not render the idea non-abstract.
Claim 29 recites that the digital images are received, which does not require concrete steps of recording or producing the digital images.
Claim 31:
Broadest reasonable interpretation
The claim is interpreted according to the broadest reasonable interpretation of the plain meaning of the claim language in light of the disclosure. Claim 31 is a process claim which generally recites steps of positioning a diamond in an enclosure; capturing digital images; identifying a digital image; recording an angle; and assigning a rating.
Step 1
Yes, the claim is for a process, which is one of the four statutory categories.
Step 2A, Prong 1
Yes, the claim recites identifying a digital image, determining an angle, and assigning a rating, which each encompass embodiments as mental processes.
Step 2A, Prong 2
No, the additional elements, position the diamond and capturing digital images of it, do not integrate the judicial exception into a practical application, as they amount to mere data gathering necessary to practice the abstract idea, so the claim is directed to the abstract idea.
Step 2B
No, the claim does not amount to significantly more than the judicial exception, as, in addition to the above, the data gathering step is well-understood, routine, and conventional.
Dependent claims 32-34
Claims 32 and 33 recite the use of artificial intelligence or a server, recited at a high level of generality, to perform parts of the abstract idea. Performing an abstract idea using a generic computer does not render the idea non-abstract.
Claim 34 does add some detail to the additional element outside of the judicial exception (the physical observation enclosure), but that detail is insufficient to render the claim as a whole eligible.
Claim 35:
Broadest reasonable interpretation
Under the broadest reasonable interpretation (BRI), the terms of the claim are presumed to have their plain meaning consistent with the specification as it would be interpreted by one having ordinary skill in the art. See MPEP 2111.
Claim 35 is a process claim which generally recites steps of obtaining a diamond model, generating digital images via simulation, recording a transition angle, and assigning a rating.
Step 1
Yes, the claim is for a process, which is one of the four statutory categories.
Step 2A, Prong 1
Yes, the claim recites generating digital images, recording a transition angle, and assigning a rating, which each encompass embodiments as mathematical calculations or mental processes, categories of abstract idea.
Step 2A Prong 2
No, the additional element, obtaining a diamond model, does not integrate the judicial exception into a practical application, as it amounts to mere data gathering necessary to practice the abstract idea, so the claim is directed to the abstract idea.
Step 2B
No, the claim does not amount to significantly more than the judicial exception, as, in addition to the above, the data gathering step is well-understood, routine, and conventional.
Dependent claims 36-38
Claim 36 gives a detail as to the nature of the diamond model, but does not render the generation of images from that diamond model the analysis of those images non-abstract.
Claims 37-38 recite the use of a server or artificial intelligence, recited at a high level of generality, to perform parts of the abstract idea. Performing an abstract idea using a generic computer does not render the idea non-abstract.
Conclusion
The courts have decided that natural phenomena, laws of nature, and abstract intellectual concepts, such as mental processes and mathematical calculations, are not patentable, as they are the basic tools of scientific and technological work (Gottschalk v Benson, 409 U.S.63, 175 USPQ 673 (1972)). It is well established that the mere physical or tangible nature of additional elements, such as a data input or detection step, does not automatically confer eligibility on a claim directed to an abstract idea (see Alice Corp. Pty. Ltd. v CLS Bank, 573 US, 134 S. Ct. 2347, 110 USPQ.2d 1976 (2014)).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 14-16, 18-20, 25, 27-28, 30-33, and 35-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasian (US Patent Publication 20050190356).
Regarding claim 14, Sasian teaches a diamond bow tie grading process for elongated diamonds (paragraph 195, which lists several elongated shapes) comprising:
obtaining digital images (paragraph 5) of an elongated diamond from a lighting environment with a known angle of obscuration (paragraph 93), where each digital image has an image tilt angle, where 0° tilt angle is straight above the table of the diamond (inherent, as all images have an image tilt angle. See paragraph 100 regarding means to provide such a tilt angle, as well as paragraph 122 for examples of tilt angles),
analyzing pixel data of the digital images to identify a persistent dark area, where a persistent dark area is a dark area that remains dark through a range of tilt angles near 0° tilt angle (paragraph 114 describes using pixel data as part of the analysis),
identifying, from the digital images, a transition digital image where the persistent dark area has brightened (paragraph 123 describes identifying of the object that brighten or darken from one image to the next (note that the colors described in Sasian correspond to whether that region is likely to be dark or bright under typical viewing conditions)),
determining a transition angle based on the image tilt angle of the transition digital image (paragraph 123 describes how the required amount of change in brightness may depend on the orientation change), and
assigning a bow tie rating using the transition angle (paragraph 123 describes applying ratings based on the changes in brightness and the distribution of brightness using the angles at which those quantities are measured to change).
Regarding claim 15, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) further comprising:
determining if the elongated diamond lacks the persistent dark area, and if the diamond lacks the persistent dark area assign a best bow tie rating (paragraph 116, not having too high of a percentage of blue).
Regarding claim 16, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 15 (as described above) where determining if the elongated diamond lacks the persistent dark area is determined by the by the presence of scintillation near 0° tilt angle (paragraph 117 discusses scintillation, as does paragraph 123).
Regarding claim 18, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) where the digital images are from a diamond tilting video (paragraph 123, a diamond tilting video comprises images at multiple orientations, sufficient to evaluate the diamond’s appearance under dynamic conditions).
Regarding claim 19, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) where the digital images are generated using ray-tracing and a diamond model (paragraph 39).
Regarding claim 20, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 19 (as described above) where the diamond model comes from a standard triangle language file (paragraph 39, STL file).
Regarding claim 25, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) where the persistent dark area comprises at least one of Type I bow tie caused by table-crown parallel or near parallel light rays or Type II bow tie caused by table-table parallel or near parallel light rays, where near parallel light rays are light rays where light from within the angle of obscuration travels to the diamond and reflects back to an observer (paragraph 116, the method taught by Sasian will detect as blue light the dark area caused by a bow tie, i.e., a dark area corresponding to light blocked by the observer due to retroreflection in the diamond. As paragraph 116 points out, too much light from the region representing the observer’s head (within the angle of obscuration, which Sasian represents with blue light) can make a substantial area of the diamond dark and make it appear dull.).
Regarding claim 27, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 19 (as described above) where the ray-tracing is performed by a server accessible through the internet (paragraph 170, a server accessible through the internet is a type of machine capable of running a computer program).
Regarding claim 28, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) further comprising using artificial intelligence to determine when the persistent dark area brightens by analyzing pixels in the digital images (paragraph 123 describes how an expert system (a type of artificial intelligence) might assess whether a dark area has brightened by comparing changes to particular thresholds).
Regarding claim 30, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above) where the range of tilt angles near 0° tilt angle comprises tilt angles within 5° of 0° tilt angle (paragraph 122 lists values of about 1°, 2°, 3°, 4°, and 5°, which each fall within the claimed range).
Regarding claim 31, Sasian teaches a diamond bow tie grading process for elongated diamonds (paragraph 195, which lists several elongated shapes) comprising:
positioning an elongated diamond in a physical observation enclosure (FIG. 2A, system 100) having a known angle of obscuration (FIG. 2B, range of polar angles 222),
capturing digital images (paragraph 5) of the elongated diamond at a plurality of tilt angles, where 0° tilt angle is straight above the table of the diamond (See paragraph 100 regarding means to provide such a tilt angle, as well as paragraph 122 for examples of tilt angles),
identifying a transition digital image where a persistent dark area brightens, where the persistent dark area is near 0° tilt angle (paragraph 123 describes identifying of the object that brighten or darken from one image to the next (note that the colors described in Sasian correspond to whether that region is likely to be dark or bright under typical viewing conditions)),
recording a transition angle based on the image tilt angle of the transition digital image (paragraph 123 describes how the required amount of change in brightness may depend on the orientation change), and
assigning a bow tie rating using the transition angle (paragraph 123 describes applying ratings based on the changes in brightness and the distribution of brightness using the angles at which those quantities are measured to change).
Regarding claim 32, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 31 (as described above) further comprising using artificial intelligence to determine when the persistent dark area brightens by analyzing pixels in the digital images (paragraph 123 describes how an expert system (a type of artificial intelligence) might assess whether a dark area has brightened by comparing changes to particular thresholds).
Regarding claim 33, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 31 (as described above) further comprising transmitting the digital images to a server accessible through the internet for the identifying (paragraph 170, a server accessible through the internet is a type of machine capable of running a computer program).
Regarding claim 35, Sasian teaches a diamond bow tie grading process for elongated diamonds (paragraph 195, which lists several elongated shapes) comprising:
obtaining a diamond model of an elongated diamond (paragraph 39),
generating digital images of the diamond model using ray-tracing at a plurality of tilt angles (paragraph 39, last sentence. Also see paragraph 100 regarding means to provide such a tilt angle, as well as paragraph 122 for examples of tilt angles),
where 0° tilt angle is straight above the table of the diamond (paragraph 122),
recording a transition angle where a persistent dark area brightens, where the persistent dark area is near 0° tilt angle (paragraph 123 describes identifying of the object that brighten or darken from one image to the next (note that the colors described in Sasian correspond to whether that region is likely to be dark or bright under typical viewing conditions)), and
assigning a bow tie rating using the transition angle (paragraph 123 describes applying ratings based on the changes in brightness and the distribution of brightness using the angles at which those quantities are measured to change).
Regarding claim 36, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 35 (as described above) where the diamond model comes from a standard triangle language file (paragraph 39, STL file).
Regarding claim 37, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 35 (as described above) where the ray- tracing is performed by a server accessible through the internet (paragraph 170, a server accessible through the internet is a type of machine capable of running a computer program).
Regarding claim 38, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 35 (as described above) further comprising using artificial intelligence to determine when the persistent dark area brightens by analyzing pixels in the digital images (paragraph 123 describes how an expert system (a type of artificial intelligence) might assess whether a dark area has brightened by comparing changes to particular thresholds).
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 which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 17 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sasian (US Patent Publication 20050190356) in view of Sivovolenko (Non-Patent Literature “How diamond performance attributes: Brilliance, Scintillation and Fire depend on human vision features”).
Regarding claim 17, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 15 (as described above).
Sasian does not explicitly teach that the digital images are in pairs providing binocular views of the elongated diamond, and where determining if the diamond lacks the persistent dark area is determined by the presence of binocular rivalry.
In the same field of endeavor of measuring optical properties of diamonds, Sivovolenko does teach that the digital images are in pairs providing binocular views of the elongated diamond, and where determining if the diamond lacks the persistent dark area is determined by the presence of binocular rivalry (section 4, ViBox and Diamond Stereo Videos, paragraph 5, special image splitter creates stereo movies. Also see FIG. 4.2). By using a special image splitter to make stereo movies, Sivovolenko is able to capture the effects seen by humans using binocular vision, which affect the subjective perception of diamonds (section Binocular vision effects), such as binocular rivalry.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the optical diamond measuring methods of Sasian with the binocular imaging of Sivovolenko in order to capture visual effects experienced by humans using binocular vision, such as binocular rivalry.
Regarding claim 34, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 31 (as described above).
Sasian does not explicitly teach that the physical observation enclosure comprises two viewport openings providing binocular vision, and where identifying the transition digital image is based on the presence of binocular rivalry.
In the same field of endeavor of measuring optical properties of diamonds, Sivovolenko does teach that the physical observation enclosure comprises two viewport openings providing binocular vision, and where identifying the transition digital image is based on the presence of binocular rivalry (section 4, ViBox and Diamond Stereo Videos, paragraph 5, special image splitter creates stereo movies. Also see FIG. 4.2). By using a special image splitter to make stereo movies, Sivovolenko is able to capture the effects seen by humans using binocular vision, which affect the subjective perception of diamonds (section Binocular vision effects), such as binocular rivalry.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the optical diamond measuring methods of Sasian with the binocular imaging of Sivovolenko in order to capture visual effects experienced by humans using binocular vision, such as binocular rivalry.
Claim(s) 29 is rejected under 35 U.S.C. 103 as being unpatentable over Sasian (US Patent Publication 20050190356) in view of Holloway (US Patent Publication 20200011807).
Regarding claim 29, Sasian teaches the diamond bow tie grading process for elongated diamonds of claim 14 (as described above).
Sasian does not explicitly teach that the digital images are received through the internet on a server for the analyzing.
In the same field of endeavor of judging diamonds computationally, Holloway does teach that the digital images are received through the internet on a server for the analyzing (paragraph 54). By storing digital images in a database accessible through the internet, Holloway is able to place the computations in a different physical location from the data gathering.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diamond grading method of Sasian with the internet-accessible database of Holloway to gain the predictable benefit of allowing the grading process to be performed separately from the image production, with a reasonable expectation of success.
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 PAUL D SCHNASE whose telephone number is (703)756-1691. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached at (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL SCHNASE/ Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877