DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/13/2026 has been entered.
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 .
Priority
For the purpose of examination with regard to prior art, the effective filing date of the instant application is February 27th, 2023.
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 therefore, subject to the conditions and requirements of this title.
Claims 1, 3-11 and 13-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Whether a Claim is to a Statutory Category
In the instant case, claims 1 and 3-10 recite a system/machine, claims 11 and 13-20 recite a method/ process and claim 21 recites a non-transitory computer-readable medium/machine that are performing a series of functions. Therefore, these claims fall within the four statutory categories of invention of a machine and a process. Step 1 is satisfied.
Step2A – Prong 1: Does the Claim Recite a Judicial Exception
Exemplary claim 1 (and similarly claims 11 and 21) recites the following abstract concepts that are found to include an enumerated “abstract idea”:
A system for product scanning, comprising:
one or more cameras;
one or more processors; and
one or more memories storing instructions that, when executed by the one or more processors, cause the one or more processors to:
capture, by the one or more cameras, one or more images associated with a product scanning region of an indicia reader;
analyze, by one or more processors, the one or more images to identify an indicia in the one or more images, including attempting, by a decoder of the indicia reader, to decode the indicia present in the images to determine whether the indicia is decodable;
responsive to identifying the indicia in the one or more images:
identifying a two-dimensional position of the indicia in the product scanning region from one or more images captured by a two-dimensional camera;
generating a three-dimensional representation of the product scanning region, including an appendage, from one or more images captured by a three-dimensional camera; and
mapping the two-dimensional position of the indicia into the three-dimensional representation of the product scanning region to determine if the indicia is positioned on the appendage; and
responsive to determining that the indicia is positioned on the appendage, trigger one or more mitigation actions.
[Emphasis added in bold to show the abstract idea being executed by additional elements that do not meaningfully limit the abstract idea. The additional elements are addressed below in Step 2A Prong 2; Step 2B]
Exemplary claim 1 is grouped within the "mental processes” grouping of abstract ideas in Step 2A Prong 1 because the claims involve a series of steps for observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage which is a process that is encompassed by the abstract idea of mental processes. The steps of capturing (observation), analyzing (evaluation), identifying (evaluation), attempting to decode (evaluation), generating (judgement/ opinion), mapping (evaluation), determining or responsive to identifying or determining (evaluation) and triggering (judgement/ opinion) in the context of this claim encompass a human reviewing image data to determine if an indicia is located on an appendage of a user operating a product scanning device, except for the use of technical components disclosed at a high level of generality in their ordinary capacity. The examiner has reviewed each abstract idea from each step individually and in combination with each other limitation, and still finds that the claim 1 recites abstract idea. See e.g., MPEP 2106.04(a)(2)(III)(D) and 2106.05(f)&(h). Accordingly, claim 1 (and similarly claims 11 and 21) recite an abstract idea.
Step2A – Prong 2: Does the Claim Recite Additional Elements that Integrate the Judicial Exception into a Practical Application
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional elements of the claims such as cameras, processors, memories, indicia reader, decoder, two-dimensional camera and three-dimensional camera merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the cameras, processors, memories, indicia reader, decoder, two-dimensional camera and three-dimensional camera perform the steps or functions of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer (or technical elements disclosed at a high level of generality such as cameras, processors, memories, indicia reader, decoder, two-dimensional camera and three-dimensional camera) performing functions of capturing, analyzing, attempting to decode, identifying, responsive to identifying, generating, mapping, determining, responsive to determining and triggering that correspond to acts required to carry out the abstract idea (MPEP 2106.05(f) and (h)). Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Step2B: Does the Claim Amount to Significantly More
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element analysis of Step 2A Prong 2 is equally applied to Step 2B. “Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.” MPEP 2106.05(d). The courts have recognized the following computer functions as well‐understood, routine, and conventional (“WURC”) functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Exemplary claim 1 recites the following limitations that the courts have found to be WURC:
Claim 1 includes several limitations relating to storing and retrieving information in memory (capture, by the one or more cameras, one or more images associated with a product scanning region of an indicia reader; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.")
Claim 1 includes several limitations relating to performing repetitive calculations (analyze, by one or more processors, the one or more images to identify an indicia in the one or more images … attempting, by a decoder of the indicia reader, to decode the indicia present in the images to determine whether the indicia is decodable; identifying a two-dimensional position of the indicia in the product scanning region from one or more images …; generating a three-dimensional representation of the product scanning region, including an appendage …; mapping the two-dimensional position of the indicia into the three-dimensional representation of the product scanning region to determine if the indicia is positioned on the appendage…; responsive to determining that the indicia is positioned on the appendage, trigger one or more mitigation actions; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”);
Accordingly, when viewed alone and in ordered combination, these additional elements are not found to recite significantly more than the underlying abstract idea.
Independent claim 11 describes a method performing the functions of capturing, analyzing, attempting to decode, identifying, responsive to identifying, generating, mapping, determining, responsive to determining and triggering also relating to mental processes without additional elements beyond technical elements disclosed at a high level of generality such as a cameras, processors, indicia reader, decoder, two-dimensional camera and three-dimensional camera that provide significantly more than the abstract idea of mental processes of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage as noted above regarding claim 1. Therefore, this independent claim is also not patent eligible.
Independent claim 21 describes a non-transitory computer-readable medium performing the functions of capturing, analyzing, attempting to decode, identifying, responsive to identifying, generating, mapping, determining, responsive to determining and triggering also relating to mental processes without additional elements beyond technical elements disclosed at a high level of generality such as a non-transitory computer readable medium, processors, indicia reader decoder, two-dimensional camera and three-dimensional camera that provide significantly more than the abstract idea of mental processes of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage as noted above regarding claim 1. Therefore, this independent claim is also not patent eligible.
Dependent claims 3-10 and 13-20 further describe the abstract idea of mental processes of observation, evaluation and judgement/ opinion. These claims do not include additional elements to perform their respective functions of identifying, generating, determining, comparing, analyzing, capturing, providing, pausing and preventing beyond the technical elements disclosed at a high level of generality such as cameras, thermal cameras, infrared illuminators, infrared cameras, indicia reader and as disclosed in independent claims 1, 11 and 21, respectively, that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, these dependent claims are also not patent eligible. Further, the dependency of these claims on ineligible independent claims 1 and 11 also renders dependent claims 3-10 and 13-20 as not patent eligible.
Allowable Subject Matter
Claims 1, 3-11 and 13-21 are allowable over prior art for reasons described in the Non-Final Rejection dated 07/01/2025 and are not repeated here.
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered but they are not persuasive.
Rejection under 35 U.S.C. § 101:
The amendments to independent claims 1, 11 and 21 do not improve patent eligibility of the claimed invention of the instant application and the previous rejection under 35 U.S.C. § 101 in maintained.
Contrary to the applicant’s allegation that claim 1 recites practical application because independent claims 1, 11 and 21 recite and require two-dimensional-to-three-dimensional mapping operation performed with two-dimensional and three-dimensional cameras, said amendments leave the methods of said claims as executed by technical elements disclosed at a high level of generality such that said methods are not more than merely applying a computer, or other elements in their ordinary capacity, to perform the functions required by said methods, which does not show integration into a practical application nor does it show significantly more than the abstract ideas discussed above in the current rejection under 35 U.S.C. § 101. See “apply it” in MPEP 2106.05(d). As the claims are currently limited, the two-dimensional and three-dimensional cameras are used to capture two-dimensional and three-dimensional data respectively, which is using these technical elements in their ordinary capacity, “apply it”. The processor then maps said two-dimensional data into the three-dimensional data to determine if indicia is positioned on an appendage. This is merely applying a computer to perform the required functions of the claim limitations.
Further, due to this high level of generality, said claims do not reflect a technological improvement to a technical problem, but rather only reflect improvement of the abstract idea. The amended claims as they are currently limited, as a whole, merely show the intended use of a camera capturing image data, processors analyzing said data and a decoder to decode said data, all of which is using a computer or other machinery in its ordinary capacity. This does not show integration into a practical application or significantly more than the abstract idea. Any improvement of a claimed invention must be clearly reflected by the independent claims of an instant application to make said application eligible for a patent.
Although the amended independent claims now show a decoder attempting to decode indicia present in the captured image data, these amendments are conditional in nature because said decoding is only attempted, the claim limitations do not necessarily require that this step is invoked, therefore, independent claims 1, 11 and 21 remain to recite the abstract idea of mental processes as detail above in the current rejection under 35 U.S.C. § 101.
Dependent claims 2-10, 12-20 and 22 also remain rejected as described above in the current rejection under 35 U.S.C. § 101.
The specification of an instant application is not read into the claims during examination, nor are dependent claims read into their respective independent base claims.
However, after reviewing the specification, the examiner found subject matter that can make said independent claims eligible as said subject matter makes the claims as a whole similar to the subject matter eligibility guidance examples. This additional subject matter is shown below as a proposed examiner amendment.
Proposed Examiner Amendment
Claim 1 (and similarly claims 11 and 21):
A system for product scanning, comprising:
one or more cameras;
one or more processors; and
one or more memories storing instructions that, when executed by the one or more processors, cause the one or more processors to:
capture, by the one or more cameras, one or more images associated with a product scanning region of an indicia reader;
analyze, by the one or more processors, the one or more images to identify an indicia in the one or more images, including attempting, by a decoder of the indicia reader, to decode the indicia present in the images to determine whether the indicia is decodable;
responsive to identifying the indicia in the one or more images:
identifying a two-dimensional position of the indicia in the product scanning region from one or more images captured by a two-dimensional camera;
generating a three-dimensional representation of the product scanning region, including an appendage, from one or more images captured by a three-dimensional camera; and
mapping the two-dimensional position of the indicia into the three-dimensional representation of the product scanning region to determine if the indicia is positioned on the appendage; and
responsive to determining that the indicia is positioned on the appendage, trigger one or more mitigation actions, wherein said mitigation actions comprise:
capturing, by the one or more cameras, an image or a video of an individual present at the indicia reader at the time that the indicia is decoded; and
preventing future transactions of an individual present at the indicia reader at a time that the indicia is decoded.
If these amendments are accepted by the applicant, the instant application will be in a better condition of allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW S WERONSKI whose telephone number is (571)272-5802. The examiner can normally be reached M-F 8 am - 5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A. Obeid can be reached at 5712703324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW S WERONSKI/Examiner, Art Unit 3627
/PETER LUDWIG/Primary Examiner, Art Unit 3627
