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 Appeal Brief
In the Appeal Brief, filed 02/17/2026, applicant presents arguments in response to the Final Rejection filed on 07/14/2025. After full consideration, Examiner agrees with these arguments. In particular, Applicant' s arguments, see Appeal Brief, filed 02/17/2026, with respect to 101 Abstract Idea Rejection applied to claims 1, 3, 4, 7-9, 11, 13, 14, 16-20 have been fully considered and are persuasive. The 101 Abstract Idea Rejection applied to claims 1, 3, 4, 7-9, 11, 13, 14, 16-20 has been withdrawn.
Additionally, applicant' s arguments, see Appeal Brief, filed 02/17/2026, with respect to 101 Abstract Idea Rejection applied to claims 1, 3, 4, 7-9, 11, 13, 14, 16-20 have been fully considered and are persuasive. The 101 Abstract Idea Rejection applied to claims 1, 3, 4, 7-9, 11, 13, 14, 16-20 has been withdrawn.
However, new 112(a) and 112(b) issues have been identified within the claims. See the below 112(a) and 112(b) rejections of claims 1-20 regarding this matter. Since these new grounds of rejection was not necessitated by amendment, this action is non-final. The examiner apologizes for the delay in prosecution.
Claims 1-20 are pending regarding this application.
Claim Objections
Claims 1, 11, and 20 are objected to because of the following informalities:
Claim 1 recites “…characteristic pixels metadata that indicative of multiple examples…” in line 6. Please amend to recite “…characteristic pixels metadata that are indicative of multiple examples…” (emphasis added).
Claim 1 recites “…wherein the pixel property statistic comprise at least one of…” in lines 12-13. Please amend to recite “…wherein the pixel property statistic comprises at least one of…”.
Claim 11 recites “…characteristic pixels metadata that indicative of multiple examples…” in line 8. Please amend to recite “…characteristic pixels metadata that are indicative of multiple examples…” (emphasis added).
Claim 11 recites “…wherein the pixel property statistic comprise at least one of…” in lines 12-13. Please amend to recite “…wherein the pixel property statistic comprises at least one of…”.
Claim 20 recites “…characteristic pixels metadata that indicative of multiple examples…” in line 7. Please amend to recite “…characteristic pixels metadata that are indicative of multiple examples…” (emphasis added).
Claim 20 recites “…wherein the pixel property statistic comprise at least one of…” in line 13. Please amend to recite “…wherein the pixel property statistic comprises at least one of…”.
Appropriate correction is required.
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 1-20 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 claim 1, applicant claims “wherein the characteristic pixels metadata comprises (a) boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. However, applicant’s specification never describes how boundary shape pixels metadata that is indicative of shapes of boundary segments of the object is calculated and/or determined. Furthermore, the limitation presents further confusion as it is unclear how metadata of a singular pixel can be indicative of a shape of boundary segment(s) of an object. Applicant’s specification discusses this process in para. [0022]-[0025] and [0033]-[0036]. However, nowhere in these sections does the applicant specifically define how boundary shape pixels metadata that is indicative of shapes of boundary segments of the object is calculated for each individual pixel. Applicant solely defines the boundary of the object (i.e. “An object related boundary may be a boundary between different object portions that differ from each other and correspond to different examples of the pixels properties” in para. [0033]) and discusses generally identifying shapes of boundary segments of the object or object portion(s). Furthermore, “boundary shape pixels metadata” is only recited three times in the specification (para. [0036] and [0050]), and none of these sections define the term “boundary shape pixels metadata”, nor do they describe how the boundary shape pixels metadata is calculated/determined. 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.
Similar analysis can be applied to corresponding independent claims 11, and 20.
Claims 2-10 and 12-19 are rejected due to their dependency upon rejected claims 1, 11, and 20, respectively.
Claim Rejections - 35 USC § 112(a), enablement
Claims 1-20 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 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.
Regarding claim 1, applicant claims “wherein the characteristic pixels metadata comprises (a) boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. It is the Examiner’s position that the subject matter described above is not described in the specification in such a way as to enable one skilled in the art to which it pertains, to make and use the invention, without undue experimentation.
In accordance with MPEP § 2164, the examiner has the initial burden of establishing a prima facie case of lack of enablement. The question posed when making a lack of enablement rejection is: Is the experimentation needed to practice the invention undue or unreasonable? See Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916). The test for lack of enablement was established in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) and set forth several factors which must be considered by the examiner when making a determination of lack of enablement. These factors can be found in MPEP § 2164.01(a). Furthermore, the examiner need not discuss every factor. The examiner need only to focus on those factors, reasons, and evidence that lead the examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation.
In Re Wands Factors
B) The nature of the invention
The invention of the aforementioned claim is directed towards a method of object segmentation based on characteristic pixels metadata. The limitation in question is drawn towards “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. Applicant’s disclosure generally states “utilizing the boundary shape pixels metadata to provide an intermediate search result” in para. [0036], but fails to define “boundary shape pixels metadata” or describe how the “boundary shape pixels metadata” is determined/calculated.
C) The state of the prior art
After a thorough prior art search, regarding the claims, a determination has been made that it is known in the art to determine object boundaries. However, no prior art has been found that is capable of calculating or determining “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. Additionally no prior art has been found that is capable of calculating or determining “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object” for a specific pixel.
D) The level of one of ordinary skill in the art
The examiner is of the opinion that it is well known in the art to detect boundaries of an object. However, the Examiner's position on the claims is that it is not well known in the art to calculate or determine “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. Applicant has not described the invention is sufficient detail for one of ordinary skill in the art to ascertain how applicant’s invention is carried out; and one of ordinary skill in the art would have trouble understanding applicant’s invention based on their disclosure.
F) The amount of direction provided by the inventor
As discussed above applicant has not provided any details on the aforementioned claim limitations. Regarding the claims, applicant has not described how calculating or determining “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object” – is carried out. Applicant appears to only generally mention the recording of the aforementioned boundary shape pixels metadata in passing. See para. [0022]-[0025] and [0033]-[0036] of the specification. These paragraphs merely recite language similar to the claim language, or define the boundary of an object in general terms. Applicant’s specification does not describe anything capable of calculating or determining “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. Additionally, it is unclear how it is even possible for metadata of a pixel to convey a shape of boundary segments of an object. One of ordinary skill in the art would recognize that much more information would be needed in order to implement the claimed invention to determine boundary shape pixels metadata for pixels within an object.
G) The existence of working examples
There is neither mention of a working example, nor any example in any of the prior art.
H) The quantity of experimentation needed based on the disclosure
Since the invention as claimed is not described in detail in the specification, the amount of experimentation would be great in order to make/use the invention. As mentioned previously, applicant has not provided any direction on the above-mentioned claim limitation. Applicant merely discloses these limitations in passing in para. [0022]-[0025] and [0033]-[0036] of the specification, or generally discusses the definition of boundary segments, and has not provided any disclosure on these limitations. In particular, applicant has not described anything capable of calculating or determining “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object”. Neither does applicant describe what the boundary shape pixels metadata entails. Thus, one of ordinary skill in the art would have to engage in undue experimentation in order to figure out how to create the claimed invention. Therefore, since the specification provides no detail on how these claim limitations are made and used, the disclosure is non-enabling. See MPEP § 2164.06.
When considering all of the pertinent In re Wands factors, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the Examiner has reached the conclusion that one of ordinary skill in the art would not be enabled to make and/or use the claimed invention without undue experimentation, particularly since the amount of direction provided by the applicant is minimal.
Similar analysis can be applied to corresponding claims 11 and 20.
Claims 2-10 and 12-19 are rejected due to their dependence upon rejected claims 1, 11, and 20.
Claim Rejections - 35 USC § 112
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 1-20 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.
Regarding claim 1, claim 1 recites “characteristic pixels metadata that indicative of multiple examples of pixels properties of pixels” in lines 6-7 and “wherein the pixel property statistic comprise at least one of a mean, a median, a standard deviation, or other higher order moment of at least one property of the pixel” in lines 12-14. Here, it is unclear whether the “properties of the pixels” as claimed in line 8 is distinct from or equivalent to the “at least one property of the pixel” as claimed in line 14.
Additionally, regarding claim 1, claim 1 recites “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object” in lines 10-11. However, it is unclear what the “metadata” entails in this context (i.e. a value). Furthermore, it is unclear, based on the detail given in the claim, how metadata for a pixel can indicate a shape of boundary segments of an object. Applicant discusses this limitation in para. [0022]-[0025] and [0033]-[0036] of the specification. However, nowhere in these sections does applicant clarify or describe how the boundary shape pixels metadata is calculated or determined.
Lastly, regarding claim 1, claim 1 recites “wherein the pixel property statistic comprise at least one of a mean, a median, a standard deviation, or other higher order moment of at least one property of the pixel” in lines 12-14. However, from the claim language, it is unclear how these statistics can be calculated and/or determined for a single pixel. Stated differently, it is unclear how a median, mean, or standard deviation can be calculated based on a single pixel, as each of these calculations require utilizing multiple pixel values. Applicant’s specification discusses determining the pixel property statistics metadata in para. [0025]-[0027] and [0036]. However, nowhere in these sections does applicant explain or clarify how the process of determining the pixel property statistic takes place.
As a result, claim 1 fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Similar analysis can be applied to corresponding claims 11 and 20.
Claims 2-10 and 12-19 are rejected due to their dependency upon rejected claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to KYLA G ALLEN whose telephone number is (703)756-5315. The examiner can
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/Kyla Guan-Ping Tiao Allen/
Examiner, Art Unit 2661
/JOHN VILLECCO/Supervisory Patent Examiner, Art Unit 2661
Prosecution Insights