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
Applicant’s amendments to claims 1, 8, 9, 14, and 16 are accepted and entered.
Claims 2-4, 6, 10, 15, and 17 have been cancelled.
Claims 1, 5, 7, 8, 9, 11, 12, 13, 14, and 16 are pending regarding this application.
Response to Arguments
Applicant’s arguments, see Remarks, filed 02/26/2026, with respect to the claim objections previously applied to claims 1, 4, 6, 14, and 16 have been fully considered and are not persuasive. While certain aspects of the Objections have been resolved (specifically regarding claims 4 and 6), the amendments/arguments in regards to the objection(s) applied to claims 1 and 14 are not persuasive. In fact, applicant’s amendments to claims 1 and 14 in regards to the objection of the previously recited “one spatially resolved image of a container", "the image", and "the captured image” in the claims filed 10/29/2025 has escalated the Objection to a 112(b) rejection, as the new information introduces confusion regarding the distinction between the “one spatially resolved image of a container", "the recorded image", and "the image capture”. Please see the 112(b) rejection of claims 1 and 14 regarding this matter. Additionally, after careful review of the amendments to the claims, new claim objections have arisen. Please see claim objections below regarding this matter.
Applicant’s arguments, see Remarks, filed 02/26/2026, with respect to the 112(b) rejections previously applied to claims 1, 4, 5, 6, 7, 8, 9, 11, 12, 13, and 16 have been fully considered and are not persuasive. While certain aspects of the 112(b) rejection have been resolved, specifically regarding the antecedent basis issue previously applied to the inspected container in claims 1 and 14, the 112(b) rejection of claims 8 and 17, the amendments/arguments as applied to the 112(b) rejection applied to claim 9 are not persuasive. Please see the updated 112(b) rejection of claim 9 regarding this matter. Additionally, after careful review of the amendments to the claims, new 112(b) rejections have arisen. Please see claim objections below regarding this matter.
Applicant’s cancellation of claims 4 and 6, see Claims, filed 02/26/2026, has rendered any rejections previously applied to claims 4 and 6, moot. Therefore, claims 4 and 6 are no longer rejected under 103, 112(b), or 112(d).
Applicant’s arguments, see Remarks, filed 02/26/2026, with respect to the 103 rejections previously applied to claims 1, 4, 5, 6, 7, 8, 9, 11, 12, 13, 16, and 17 have been fully 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. Furthermore, the below 112(a) and 112(b) rejections result in a lack of clarity that prevents the examiner from properly applying prior art to reject the claims, as there exists confusion as to what the applicant is claiming in the amended subject matter. Therefore, no prior art rejections (102/103) are included in this action. See also the Note included at the end of the office action, prior to the conclusion, regarding this matter.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14, line 10 recites “the image evaluation configured to”. Please amend to recite “the image evaluation device is configured to”.
Claim 14, line 16 recites “the device”. Please amend to recite “the image evaluation device”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) 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. Such claim limitation(s) is/are: in claims 1, 14, and 17.
In claim 1: “said method comprising transporting the containers along a predetermined transport path using a transport device and inspecting the containers using an inspection device, wherein the inspection device records at least one spatially resolved image of a container using an image recording device and an image evaluation device is used to evaluate the recorded image, wherein data of a model of this container are used for evaluating the recorded image”
In claim 14: “having a transport device configured to transport the containers along a predetermined transport path, and having an inspection device configured to inspect the containers, wherein the inspection device having an image recording device which takes at least one spatially resolved image of a container to be inspected, and an image evaluation device configured to evaluate the recorded image, wherein the image evaluation device is configured to use data of a model of the container to evaluate the recorded image”.
After a careful analysis, as disclosed above, and a careful review of the specification, the image evaluation device in the above limitations in claims 1 and 14 are interpreted as computer-implemented 112(f). Below is the corresponding structure and/or algorithm which are being read into the above limitations:
“a transport device” (In the specification, page 2, lines 12-13 define the transport device as a conveyor belt or a transport chain. Therefore, the corresponding structure for the transport device is a physical structure. Applicant further discusses the transport device on page 10, lines 18-21. See also FIG. 1 and page 17, lines 28-31.).
“an inspection device” (See FIG. 1, #4 inspection device which is described as having one or more image recording devices on page 17, lines 32-33 of Applicant’s specification. Page 16, lines 1-4 further define the inspection device as a device comprising an image recording device which records an image of a container to be inspected. Therefore, the corresponding structure for the inspection device is the physical structure of the image recording devices (camera)).
“an image evaluation device” (Applicant’s specification defines the image evaluation device 44 as processor based on page --------------18, lines 14-16. Therefore, the corresponding structure for the image evaluation device is a processor and the corresponding algorithm for the image evaluation device which can be found on page --------------14, line 28 - page 15).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a), new matter
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.
Claims 1, 5, 7, 8, 9, 11, 12, 13, 14, and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, applicant has amended claims 1 and 14 to recite the limitation of “wherein a calibration of the image capture or the recorded image is performed, so that a position and, in particular, a relative arrangement and/or a relative alignment between the image capture device and the container to be inspected and/or the inspected container is derived from the calibration of the image capture device and/or by the calibration of the image capture device”. However, the disclosed “image capture device” is not recited anywhere in the specification. Additionally, while claim 1 recites a calibration of a recorded image and a calibration of an image recording device, the specification fails to disclose both a calibration of an image recording device/recorded image and a calibration of an image capture device/captured image, wherein each calibration is separate and distinct. While applicant’s specification discusses a calibration of an image recording device, since both the image recording device and the image capturing device are introduced in the independent claims, it is apparent that applicant means to imply the image recording device is separate and distinct from the image capture device. Therefore, this newly amended limitation constitutes new matter.
Similar analysis can be applied to corresponding claim 14. Claims 5, 7, 8, 9, 11, 12, 13, and 16 are rejected due to their dependence upon claims 1 and 14, respectively.
Claim Rejections - 35 USC § 112(a), written description
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.
Claims 1, 5, 7, 8, 9, 11, 12, 13, 14, and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Background
35 U.S.C. § 112(a) requires that the “specification shall contain a written description of the invention”. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).
There is a presumption that an adequate written description of the claimed invention is present when the application is filed. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) (“we are of the opinion that the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims”). However, as discussed in subsection I., supra, the issue of a lack of adequate written description may arise even for an original claim when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention. The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature which is not adequately described in the specification and which is not conventional in the art or known to one of ordinary skill in the art. While it is not necessary for the examiner to present factual evidence, to make a prima facie case it is necessary to point out the claim limitations that are not adequately supported and explain any other reasons that the claim is not fully supported by the disclosure to show that the inventor had possession of the invention. See for example, Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007).
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc.v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Ralston Purina Co.v.Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In reKaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)). See MPEP§ 2163 - https://www.uspto.gov/web/offices/pac/mpep/s2163.html
Regarding claims 1 and 14 applicant claims “a calibration of an image capture or the recorded image is performed, so that, a position and a relative arrangement and/or a relative alignment between the image recording device and a container to be inspected and/or an inspected container is derived from the calibration of the image capture or the recorded image" in lines 12-16 and "wherein a calibration of the image capture or the recorded image is performed, so that a position and, in particular, a relative arrangement and/or a relative alignment between the image capture device and the container to be inspected and/or the inspected container is derived from the calibration of the image capture device and/or by the calibration of the image capture device" in line 21-25. However, applicant’s specification never describes the image capture device, and therefore how the limitation of “the calibration of the image capture device and/or by the calibration of the image capture device” can take place. No portion of the specification discusses the calibration of the image capture device. The calibration process is discussed in the specification on page 11, line 14, through page 13, line 24, but nowhere in this section does it clarify a separate process of determining the calibration of an image capture device. Additionally, while the specification discusses a calibrated image recording device in this section, it seems from the claims that there is a distinction between the claimed image recording device and the claimed image capture device in claim 1, as claim 1 refers to both a calibration of a recorded image and a calibration of an image recording device/image capture. As such, the specification fails to disclose the necessary steps for both a calibration of a recorded image/image recording device and a calibration of an image capture/image capture device, wherein each calibration is separate and distinct. Applicant’s specification has not described a structure or method for performing “the calibration of the image capture device and/or by the calibration of the image capture device”. Furthermore, one of ordinary skill in the art would not understand how to carry out “the calibration of the image capture device and/or by the calibration of the image capture device”, as it is unclear what “the image capture device” entails. Therefore, one of ordinary skill in the art would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed.
Claim Rejections - 35 USC § 112(b)
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 1, 5, 7, 8, 9, 11, 12, 13, 14, and 16 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.
Claim 1 recites the limitation "a calibration of an image capture or the recorded image is performed, so that, a position and a relative arrangement and/or a relative alignment between the image recording device and a container to be inspected and/or an inspected container is derived from the calibration of the image capture or the recorded image" in lines 12-16. Additionally, claim 1 recites "wherein a calibration of the image capture or the recorded image is performed, so that a position and, in particular, a relative arrangement and/or a relative alignment between the image capture device and the container to be inspected and/or the inspected container is derived from the calibration of the image capture device and/or by the calibration of the image capture device" in line 21-25. Here, it is unclear how many separate and distinct calibration processes are occurring, as both instances of the calibration have instances of identical language (i.e. “a calibration of…”) and instances of many calibration processes (“a calibration of an image capture [1] or the recorded image [2]” in line 13, “a calibration of an image capture [separate instance from 1, but same language] or the recorded image [separate instance from 2, but same language]” in line 22, and “the calibration of the image capture device [3] and/or by the calibration of the image capture device [separate instance from 3, but same language]” in lines 24-25. Applicant discusses a calibration process on page 11, line 14, through page 13, line 24. However, nowhere in these sections does applicant describe multiple separate calibration processes applied to an image capture, a recorded image, an image recording device, and an image capture device. In fact, nowhere in the specification does the applicant reference the image capture device in any way. Therefore, it is additionally unclear how a separate calibration of an image capture device can occur as claimed by the applicant, when the applicant does not define the image capture device anywhere in the specification (see above 112(a) rejection). Furthermore, the above limitations have matching language in regards to “a position” and “a relative arrangement and/or a relative alignment”. As such, it is unclear whether the position and relative arrangement and/or relative alignment in these two “separate” calibration processes are equivalent or distinct. Either way, the language regarding the calibration(s), the position(s), and the relative arrangement(s) and/or relative alignment(s) needs to be changed to reflect whether applicant intends to convey separate or equivalent calibration processes.
Similar analysis can be applied to corresponding claim 14. Claims 5, 7, 8, 9, 11, 12, 13, and 16 are rejected due to their dependence upon claims 1 and 14, respectively.
Claim 1 recites “at least one spatially resolved image of a container using an image recording device” in lines 3-4, “the recorded image” in line 5, and “an image capture” in line 13. Here, it is unclear whether these three separate variables (and any further instances of the aforementioned variables as recited later in claim or any claim which depends on claim 1) are equivalent or distinct. Applicant’s specification seemingly uses the terms “recorded image” and “captured image” interchangeably, wherein the “image capture” in the claim language is interpreted as equivalent to the recited “captured image” in the specification. Nowhere in the specification does the applicant clarify a distinction between the recorded image and the captured image. Furthermore, it is unclear whether the calibration applied to the image capture or the recorded image in both lines 13 and 22, are distinct or equivalent calibration processes. See the above 112(b) rejection regarding the calibration process regarding this matter. Additionally, even if the image capture and the recorded image are distinct, it remains unclear within the claim if the “at least one spatially resolved image of a container using an image recording device” in lines 3-4 and “the recorded image” in line 5 are equivalent or distinct.
Similar analysis can be applied to corresponding claim 14. Claims 5, 7, 8, 9, 11, 12, 13, and 16 are rejected due to their dependence upon claims 1 and 14, respectively.
**NOTE: The above 112(a) and 112(b) rejections result in a lack of clarity that prevents the examiner from properly understanding the scope of the claim and applying prior art to reject the claims, as there exists confusion as to what the applicant is claiming in the amended subject matter. Therefore, the examiner is unable to make any 35 U.S.C. 102(a) and/or 35 U.S.C. 103 (prior art) rejections of claims 1, 5, 7, 8, 9, 11, 12, 13, 14, and 16 until the 112 issues as explained above are adequately addressed in a matter that allows the examiner to understand what is being claimed.
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 extension fee 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 date of this final action.
Contact
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/Kyla Guan-Ping Tiao Allen/
Examiner, Art Unit 2661
/JOHN VILLECCO/Supervisory Patent Examiner, Art Unit 2661
Prosecution Insights