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 .
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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Such claim limitations are:
“optical detecting means” in claims 30, 37, 40, 45, 48.
The following interpretation applies: “an optical detector or an electro-optical sensor” (Page 14, lines 30-31).
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 30-49 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 30 recites a series of steps for creating a simulation of a structure. Thus, these claims are to a process, which is one of the statutory categories of invention.
Claim 30 recites: “processing the detected electromagnetic radiation, wherein the processing: accounts for a determination of an external surface geometry of the gemstone and for refraction and reflection effects due to the external surface geometry of the gemstone; and obtains information indicative of the one or more features associated with the internal structure of the gemstone.”
spec pg. 23-24 for the determination of the external surface geometry is a known mathematical algorithm (see step 404 on pg 23 and 24), the refraction and reflection effects due to the external surface geometry of the gemstone (see steps 406, 408, 410 and ray tracing pg. 28-33 calculations and model are both math), and obtaining information on the internal structure (see step 412, pg 36, modeling is math).
The claim recites the judicial exception of an abstract idea of “determination of the external surface geometry” (mathematical algorithm, see Specification pg. 23-24) and “the refraction and reflection effects due to the external surface geometry of the gemstone” (see steps 406, 408, 410 and ray tracing pg. 28-33 calculations and model are both math), and obtaining information on the internal structure (see step 412, pg 36, modeling is math). These fall within the category of “mathematical concepts” ( See MPEP 2106.04(a)(2)). The “mathematical concepts” abstract idea grouping is defined as mathematical relationships, mathematical formulas or equations, mathematical calculations.
This judicial exception is not integrated into a practical application because the claim only includes a source of incident electromagnetic radiation and an optical detecting means, all recited at a high level of generality, and does not tie the abstract idea to a practical application.
The claim recites “directing electromagnetic radiation towards the gemstone using a source of incident electromagnetic radiation; in response to directing electromagnetic radiation, detecting electromagnetic radiation using an optical detecting means, including detecting electromagnetic radiation following an interaction between the gemstone and the incident electromagnetic radiation”, which is routine data gathering (See Specification pg. 2-3).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because these are well-understood, conventional activities previously known to the industry, recited at a high level of generality. The “source of incident electromagnetic radiation” and “optical detecting means” are recited at a high level of generality and as such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself.
Therefore, claim 30 is ineligible.
Similarly, claims 31-44 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Regarding claims 45-49, the claimed invention is directed to a system for determining one or more features associated with a structure of a gemstone. Thus, these claims are to a machine, which is one of the statutory categories of invention.
As discussed above, claim 45 also does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In addition to what is discussed in regards to claim 30, claim 45 includes a processor, however, while a processing unit is generally claimed, it is noted that Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle’. Further, the claims only generally link the use of the judicial exception into the particular technological environment of generating a simulation of a gemstone. The high generality of this technological environment amounts to merely indicating a field of use or technological environment in which to apply a judicial exception and does not amount to significantly more than the exception itself, and thus does not integrate the judicial exception into a practical application.
Therefore, claim 45 is ineligible.
Similarly, claims 46-49 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 30-36, 42-47, 49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20140107986A1 (Sivovolenko).
As to claim 30, Sivovolenko teaches a method for determining [0001] one or more features associated with an internal structure of a gemstone [0001], the method comprising:
directing electromagnetic radiation towards the gemstone (104, Fig. 1) using a source (light source 108) of incident electromagnetic radiation [0048];
in response to directing electromagnetic radiation [0048], detecting electromagnetic radiation using an optical detecting means (imaging device 110)[0059], including detecting electromagnetic radiation following an interaction between the gemstone and the incident electromagnetic radiation [0059](Fig. 1); and
processing the detected electromagnetic radiation [0059], wherein the processing:
accounts for a determination of an external surface geometry of the gemstone [0060] and for refraction and reflection effects due to the external surface geometry of the gemstone ([0067] teaches accounting for reflection and refraction); and obtains information indicative of the one or more features associated with the internal structure of the gemstone ([0061] teaches identifying inclusions within the diamond 104).
As to claim 31, Sivovolenko teaches the method of claim 30, further comprising determining the external surface geometry of the gemstone (Fig. 2, Step 202)[0059-60].
As to claim 32, Sivovolenko teaches the method of claim 30, wherein processing the detected electromagnetic radiation comprises determining the external surface geometry of the gemstone using the detected electromagnetic radiation (Fig. 2, Step 202)[0059-60].
As to claim 33, Sivovolenko teaches the method of claim 30 wherein directing electromagnetic radiation towards the gemstone comprises directing electromagnetic radiation towards the gemstone from a plurality of different incident directions relative to the external surface geometry of the gemstone ([0048] teaches illuminating gemstone from a variety of different angles).
As to claim 34, Sivovolenko teaches the method of claim 33, wherein detecting electromagnetic radiation comprises detecting electromagnetic radiation for each incident direction [0048].
As to claim 35, Sivovolenko teaches the method of claim 30, wherein processing the detected electromagnetic radiation comprises generating an output associated with a three-dimensional distribution of an optical property within the gemstone ([0081] teaches constructing 3D model of inclusions, Step 214 Fig. 2), the three-dimensional distribution of the optical property being indicative of a three-dimensional distribution of the one or more features associated with the internal structure of the gemstone [0081](Fig. 2, step 214).
As to claim 36, Sivovolenko teaches the method of claim 35, wherein the method further comprises using the output to generate a three-dimensional graphical representation (Step 214, Fig. 2) of the three-dimensional distribution of the one or more features associated with the internal structure of the gemstone (Step 214, Fig. 2)[0081].
As to claim 42, Sivovolenko teaches the method of claim 30, wherein the one or more features include at least one or more of the following: a defect; an inclusion; an impurity; a chromatic property; a polarisation property ([0092] teaches inclusions shown in Fig. 3).
As to claim 44, Sivovolenko teaches the method of claim 30, wherein detecting electromagnetic radiation comprises detecting electromagnetic radiation scattered and/or reflected, and/or caused by fluorescence, from within the gemstone ([0074] teaches scattering, reflection/refraction, [0076] teaches captured image is used for characterization).
As to claim 45, Sivovolenko teaches a system (100, Fig. 1) for determining one or more features associated with an internal structure of a gemstone [0046], the system comprising:
a source of incident electromagnetic radiation (108, light source) configured to emit electromagnetic radiation towards the gemstone [0048];
an optical detecting means (110, imaging device) configured to detect electromagnetic radiation including electromagnetic radiation following an interaction between the gemstone and the incident electromagnetic radiation [0048]; and
a processor configured to (computer 112 with central processor 114): receive a first input associated with the detected electromagnetic radiation ([0061] teaches images of illuminated diamond are captured and processed);
receive a second input associated with an external surface geometry of the gemstone ([0060] teaches images of different rotational orientations for identifying an outline or silhouette of the diamond); and
generate an output indicative of a three-dimensional distribution (Step 214, Fig. 2, [0081]) of an optical property within the internal structure of the gemstone (Step 212, Fig. 2, [0074]), the optical property being associated with an interaction between the gemstone and the incident electromagnetic radiation [0074], the three- dimensional distribution of the optical property being indicative of a three-dimensional distribution of the one or more features within the internal structure of the gemstone [0074-81]; wherein the output is generated based on the first input, the second input, and accounting for refraction and reflection ([0067] teaches accounting for reflection and refraction)effects due to the external surface geometry of the gemstone.
As to claim 46, Sivovolenko teaches the system of claim 45, wherein the system is configured such that the source of electromagnetic radiation (light source 108, Fig. 1) emits electromagnetic radiation towards the gemstone (104) from a plurality of different incident directions relative to the external surface geometry of the gemstone ([0048] teaches illuminating the gemstone 104 from a variety of different angles by including additional light sources in the scanning apparatus 102, Fig. 1).
As to claim 47, Sivovolenko teaches the system of claim 45, wherein the processor (computer 112 with processor 114, Fig. 1) is further configured to generate, using the output, a three-dimensional graphical representation (Fig. 3) of the one or more features associated with the internal structure of the gemstone [0081](Fig. 3 shows 3D model with inclusions, Fig. 2, Step 214).
As to claim 49, Sivovolenko teaches a computer program comprising executable code configured to cause the process of the system of claim 45 to execute the steps of ([0053] teaches memory 118 contains program instructions 120 for execution by processor 114, Fig. 2):
receiving the first input ([0059] Step 202, from scanning apparatus to computer for processing); receiving the second input ([0059] teaches images of the diamond 104); and
generate the output wherein the output is generated based on for the first input, the second input, and accounting for refraction and reflection effects due to the external surface geometry of the gemstone ([0009] teaches taking into account reflection and refraction).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over US20140107986A1 (Sivovolenko) in light of (Wang) “On the Development of a Vision System for Diamond Quality Evaluation Based on the Analysis of Diamond Optical Properties” Thesis for Honkg Kong University of Science and Technology(https://lbezone.hkust.edu.hk/pdfviewer/web/viewer.php?file=aHR0cHM6Ly9sYmV6b25lLmhrdXN0LmVkdS5oay9vYmovMS9vLzk5MTAxMjc2NDA2OTMwMzQxMi85OTEwMTI3NjQwNjkzMDM0MTIucGRm#page=1).
As to claim 37, Sivovolenko teaches the method of claim 30.
Sivovolenko is silent to: wherein processing the detected electromagnetic radiation comprises generating, based on the determined external surface geometry, a model of a simulated propagation of simulated electromagnetic radiation between the source of incident electromagnetic radiation and the optical detecting means and via a simulated homogeneous sample, wherein interaction between the simulated electromagnetic radiation and the simulated homogeneous sample is accounted for, the simulated homogenous sample comprising a simulated external surface having the determined external surface geometry of the gemstone and wherein the simulated homogeneous sample has a homogeneous refractive index.
However, Wang teaches a vision system for diamond quality evaluation based on the analysis of optical properties.
Wang teaches: processing the detected electromagnetic radiation comprises generating, based on the determined external surface geometry (Section 3.4.2 and 3.4.3 teach simulation of a flawless diamond with an ideal cut and non-ideal cut), a model of a simulated propagation of simulated electromagnetic radiation (Section 3.4.1 teaches ray tracing) between the source of incident electromagnetic radiation and the optical detecting means and via a simulated homogeneous sample (Section 3.4.2 and 3.4.3 teach simulation of a flawless diamond with an ideal cut and non-ideal cut, Fig. 3.22 (page 60) shows ray tracing procedure),
wherein interaction between the simulated electromagnetic radiation and the simulated homogeneous sample is accounted for (Fig. 3.22 (page 60) shows ray tracing procedure), the simulated homogenous sample comprising a simulated external surface having the determined external surface geometry of the gemstone (Section 3.4.2 and 3.4.3 teach simulation of a flawless diamond with an ideal cut and non-ideal cut), and wherein the simulated homogeneous sample has a homogeneous refractive index (flawless diamonds).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the prior art of Sivovolenko to include the simulation of Wang in order to compare the “flawed” diamond with all the previously identified inclusions to a “flawless” version of itself in order to allow for better evaluation of the diamond quality and value.
As to claim 38, the combination teaches the method of claim 37.
Sivovolenko teaches: wherein directing electromagnetic radiation towards the gemstone comprises directing electromagnetic radiation towards the gemstone from a plurality of different incident directions relative to the external surface geometry of the gemstone ([0048] teaches illuminating gemstone from a variety of different angles),
wherein detecting electromagnetic radiation comprises detecting electromagnetic radiation for each incident direction ([0048] teaches capturing with imaging device 110, Fig. 1).
The combination is silent to: wherein the model of simulated propagation of the simulated electromagnetic radiation is generated for each incident direction.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to model the simulated propagation of the simulated electromagnetic radiation generated for each incident direction, in order to be able to compare it to the physical model of Sivovolenko.
As to claim 39, the combination teaches the method of claim 37.
Sivovolenko is silent to: wherein the method comprises modelling simulated refraction and attenuation of the simulated electromagnetic radiation at a plurality of virtual surface boundaries of the simulated homogenous sample.
However, Wang teaches modelling simulated refraction and attenuation (see pg. 58-60) of the simulated electromagnetic radiation at a plurality of virtual surface boundaries of the simulated homogenous sample (pg. 58-60).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include the refraction and attenuation modeling in the simulation as suggested by Wang in order to obtain the most accurate model of a flawless version of the gemstone.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over US20140107986A1 (Sivovolenko) in light of US5615005A (Valente).
As to claim 43, Sivovolenko teaches the method of claim 30.
Sivovolenko is silent to: wherein the method comprises directing electromagnetic radiation towards the gemstone at a minimum of two different wavelengths, wherein detecting electromagnetic radiation comprises detecting electromagnetic radiation for each wavelength, and wherein processing the detected electromagnetic radiation comprises processing the detected electromagnetic radiation for at least two wavelengths, wherein information indicative of one or more chromatic properties associated with the internal structure of the gemstone can be obtained.
However, Valente teaches a device and method for grading gemstones, with color analysis wherein the method comprises directing electromagnetic radiation towards the gemstone at a minimum of two different wavelengths (Col. 4 lines 10-15 teach sequential selection of individual wavelengths), wherein detecting electromagnetic radiation comprises detecting electromagnetic radiation for each wavelength (lines 19-20 teach detection), and wherein processing the detected electromagnetic radiation comprises processing (lines 20-21 teach converting to digital data which is processed by a computer) the detected electromagnetic radiation for at least two wavelengths, wherein information indicative of one or more chromatic properties associated with the internal structure of the gemstone can be obtained (lines 20-40 teach obtaining color values).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the prior art of Sivovolenko to include the color analysis step of Valente in order to provide a quicker and more reliable method of accurate gemstone grading (Col. 3 lines 1-13 of Valente).
Allowable Subject Matter
Claims 40-41 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 40 the prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, specifically, the prior art of record does not teach “modelling, based on the model of the simulated propagation, a simulated polarisation state of the simulated electromagnetic radiation propagating between the source of incident electromagnetic radiation and the optical detecting means and via the simulated homogeneous sample, wherein modelling the simulated polarisation state accounts for an interaction between the simulated electromagnetic radiation and respective virtual surface boundaries at the simulated external surface of the simulated homogeneous sample”.
Regarding claim 41 the prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, specifically, the prior art of record does not teach “modelling a shape and an intensity of a simulated beam of incident electromagnetic radiation, and wherein the method comprises using the modelled shape and intensity of the simulated beam of incident electromagnetic radiation to determine a size of a region of interaction of the simulated beam of incident electromagnetic radiation with virtual external surface boundaries of the simulated homogeneous sample”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Maya Hendija whose telephone number is (571)272-0269. The examiner can normally be reached M-F 08:00-16:00 (MST).
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/MAYA HENDIJA/ Examiner, Art Unit 2877
/Hwa Andrew Lee/ Primary Examiner, Art Unit 2877