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 Amendments
The amendment to the claims filed on 08/18/2026 does not comply with the requirements of 37 CFR 1.121(c) because the Claims have not been rewritten to reflect the previous claim amendments in the amendment filed on 08/17/2026. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Since the amendment, filed on 08/17/2026, is accepted and entered, the Claims/Remarks/etc.. as filed with the amendment filed on 08/17/2026 are examined in the following office action. The amendment filed on 08/18/2026 is non-compliant and therefore is NOT entered.
The amendments to claims 1, 6, 11, and 20, in the claims filed on 08/17/2026, are accepted and entered.
Claims 1-20 are pending regarding this application.
Response to Arguments
Applicant’s arguments, see Remarks, filed 08/17/2026, with respect to the 112(b) rejection regarding the “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” have been fully considered and are persuasive. The 112(b) rejection applied to the “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” within claim 1 has been withdrawn.
Applicant’s arguments, see Remarks, filed 08/17/2026, with respect to the 112(b) rejection regarding the “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 wherein, from the claim language, it is unclear how these statistics can be calculated and/or determined for a single pixel. have been fully considered and are persuasive. The 112(b) rejection applied to the “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” within claim 1 has been withdrawn.
Applicant’s arguments, see Remarks, filed 08/17/2026, with respect to the Claim Objections of claims 1, 11, and 20 have been fully considered and are persuasive. Applicant has sufficiently amended claims 1, 11, and 20 to overcome the claim objections as recited in the Non-Final Rejection mailed on 05/20/2026. The Claim Objections applied to claims 1, 11, and 20 have been withdrawn.
Applicant's arguments filed 08/17/2026 have been fully considered but they are not persuasive. Applicant has traversed the 112(a) rejection (written description) regarding the “boundary shape pixels metadata”. Applicant argues that “metadata regarding shape, colour and the like is self-explanatory—the meaning of a shape of a boundary segment and of pixel colour gray level or brightness statistics would be readily understood by a person of ordinary skill in the art”. However, the examiner disagrees with this assertion. First, it is not clear that metadata regarding shape, colour and the like is self-explanatory. The merriam-webster definition of “metadata” is “data that provides information about data”. As such, while it may be conceptually clear as to what a boundary or color of a plurality of pixels may be, it remains ambiguous as to what the “metadata” of a boundary (such as a shape or color) may be. Said differently, even if the term “boundary shape pixels” is interpreted as equivalent to a shape of the object, it remains unclear how that shape is represented through metadata, wherein the metadata is a second data that provides information regarding a first data, wherein the first data here would be equivalent to the boundary/color. Nowhere in any of the cited paragraphs of the specification as referenced by the applicant in the 112(a) arguments does the applicant provide any clear definition of what type of value the metadata represents within the “boundary shape pixels metadata”. 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. As such, the 112(a) rejection (written description) rejection of claims 1-20 is maintained in the following rejection. Please see the 112(a) (written description) section below regarding this matter.
Applicant's arguments filed 08/17/2026 have been fully considered but they are not persuasive. Applicant has traversed the 112(a) rejection (enablement) regarding the “boundary shape pixels metadata”. Applicant argues that “metadata regarding shape, colour and the like is self-explanatory—the meaning of a shape of a boundary segment and of pixel colour gray level or brightness statistics would be readily understood by a person of ordinary skill in the art”. However, the examiner disagrees with this assertion. First, it is not clear that metadata regarding shape, colour and the like is self-explanatory. The merriam-webster definition of “metadata” is “data that provides information about data”. As such, while it may be conceptually clear as to what a boundary or color of a plurality of pixels may be, it remains ambiguous as to what the “metadata” of a boundary (such as a shape or color) may be. Said differently, even if the term “boundary shape pixels” is interpreted as equivalent to a shape of the object, it remains unclear how that shape is represented through metadata, wherein the metadata is a second data that provides information regarding a first data, wherein the first data here would be equivalent to the boundary shape. Nowhere in any of the cited paragraphs of the specification as referenced by the applicant in the 112(a) arguments does the applicant provide any clear definition of what type of value the metadata represents within the “boundary shape pixels metadata”. Therefore, the specification fails to teach how to make and use the claimed invention without undue experimentation. As such, the 112(a) rejection (enablement) rejection of claims 1-20 is maintained in the following rejection. Please see the 112(a) (enablement) section below regarding this matter.
Applicant's arguments filed 08/17/2026 have been fully considered but they are not persuasive. Applicant has traversed the 112(b) rejection regarding the “boundary shape pixels metadata”. Applicant argues that the “metadata regarding shape, colour and the like is self-explanatory—the meaning of a shape of a boundary segment and of pixel colour gray level or brightness statistics would be readily understood by a person of ordinary skill in the art”. However, the examiner disagrees with this assertion. First, it is not clear that metadata regarding shape, colour and the like is self-explanatory. The merriam-webster definition of “metadata” is “data that provides information about data”. As such, while it may be conceptually clear as to what a boundary or color of a plurality of pixels may be, it remains ambiguous as to what the “metadata” of a boundary (such as a shape or color) may be. Said differently, even if the term “boundary shape pixels” is interpreted as equivalent to a shape of the object, it remains unclear how that shape is represented through metadata, wherein the metadata is a second data that provides information regarding a first data, wherein the first data here would be equivalent to the boundary/color. Nowhere in any of the cited paragraphs of the specification as referenced by the applicant in the 112(b) arguments does the applicant provide any clear definition of what type of value the metadata represents within the “boundary shape pixels metadata”. Therefore, the claim fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. As such, the 112(b) rejection of claims 1-20 is maintained in the following rejection. Please see the 112(b) section below regarding this matter.
Please note that similar responses to the 112(a) and 112(b) rejections are recited above, as applicant has used identical language within their arguments regarding each of the above rejections.
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]-[0026] 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. 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). The merriam-webster definition of “metadata” is “data that provides information about data”. As such, while it may be conceptually clear as to what a boundary of a plurality of pixels may be, it remains ambiguous as to what the “metadata” of a boundary (such as a shape) may be. Said differently, even if the term “boundary shape pixels” is interpreted as equivalent to a shape of the object, it remains unclear how that shape is represented through metadata, wherein the metadata is a second data that provides information regarding a first data, wherein the first data here would be equivalent to the boundary/colour. 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, wherein the definition of “metadata” is unknown.
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”. Determining metadata of boundary shape pixels is not commonly done such that there is a specific definition of what “metadata” entails, in the context of the art of image analysis, or even object detection. 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]-[0026] 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 pixels to convey a shape of boundary segments of an object, wherein the metadata is separate and distinct from the boundary shape—as per the definition of “metadata”. 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]-[0026] 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 “boundary shape pixels metadata that is indicative of shapes of boundary segments of the object” in lines 8-10. 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. The merriam-webster definition of “metadata” is “data that provides information about data”. As such, while it may be conceptually clear as to what a boundary or color of a plurality of pixels may be, it remains ambiguous as to what the “metadata” of a boundary (such as a shape or color) may be. Said differently, even if the term “boundary shape pixels” is interpreted as equivalent to a shape of the object, it remains unclear how that shape is represented through metadata, wherein the metadata is a second data that provides information regarding a first data, wherein the first data here would be equivalent to the boundary. Applicant discusses this limitation in para. [0022]-[0026] 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.
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
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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John Villecco can be reached on (571) 272-7319. The fax phone number for the organization where this
application or proceeding is assigned is 571-273-8300.
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/Kyla Guan-Ping Tiao Allen/
Examiner, Art Unit 2661
/AARON W CARTER/Primary Examiner, Art Unit 2661
Prosecution Insights