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 .
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 therefor, subject to the conditions and requirements of this title.
Claims 1-22 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 1-10 recite a system/machine, claims 11-20 recite a method/ process and claims 21-22 recite 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, analyze the one or more images to determine if the indicia is positioned on an appendage; and
responsive to determining that the indicia is positioned on the appendage, trigger one or more mitigation actions.
[Emphasis added to show the bolded abstract idea being executed by unbolded additional elements that do not meaningfully limit the abstract idea]
This system, claim is grouped within the "mental processes” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test 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), attempting to decode (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 and decoder 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 and decoder 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 and decoder) performing functions of capturing, analyzing, attempting to decode, responsive to identifying, 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 because, when analyzed under step 2B of the Alice/Mayo test, the additional elements of cameras, processors, memories, indicia reader and decoder being used to perform the steps of capturing, analyzing, attempting to decode, responsive to identifying, determining, responsive to determining and triggering amounts to no more than using a computer or processor to automate and/or implement the abstract idea of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage. As discussed above, taking the claim elements separately, cameras, processors, memories, indicia reader and decoder perform the steps or functions of mental processes of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of mental processes of observation, evaluation and judgement/ opinion to determine if the indicia is positioned on an appendage because said combination of elements remains disclosed at a high level of generality. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(l)(A)(f) & (h)). Therefore, the claims are not patent eligible.
Independent claim 11 describes a method performing the functions of capturing, analyzing, attempting to decode, responsive to identifying, 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 and decoder 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 method performing the functions of capturing, analyzing, attempting to decode, responsive to identifying, 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 and decoder 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 2-10, 12-20 and 22 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, mapping, determining, comparing, analyzing, capturing, providing, pausing and preventing beyond the technical elements disclosed at a high level of generality such as cameras, two-dimensional cameras, three-dimensional 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 claim 1 also renders dependent claims 2-10, 12-20 and 22 as not patent eligible.
Allowable Subject Matter
Claims 1-22 are allowable over prior art for reasons described in the last Office Action (Non-Final Rejection dated 07/01/2025) and are not repeated here.
Response to Arguments
Applicant's arguments filed 10/01/2025 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 assertion that amended independent claims 1, 11 and 21 the claims recite a complete, technology-centered process that begins with image capture in a scanning region, proceeds through a decoder's attempt to decode indicia from the images, determines whether the indicia is on an appendage, and culminates in machine-implemented mitigation, 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. 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.
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 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