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 .
DETAILED ACTION
Status of the Application
The following is a Non-Final Office Action in response to communication received on 6/9/2023. Claims 1-12 are pending in this office action. The two Information Disclosure Statements (IDS) filed on 6/9/2023 and 6/13/2023 have been considered by the Examiner.
Subject Matter Overcoming the Prior Art Of Record
As noted below, the Examiner has not applied a prior art rejection to claim 11 as it currently stands. However the Examiner is not saying the claim is allowable. Specifically the claim has been rejected under other grounds including 101, 112 1st/a, 112 2nd/b, and 112 4th/d.
The prior art of record teaches elements of Applicant’s claims including:
-Rodoni et al. (United States Patent Application Publication Number: US 2019/0005507) teaches wherein if the AI estimates a load type on the basis of a video picture acquired by the camera, the AI estimates the type by grasping an entire outer appearance of the load, (see paragraphs 0028-0029, 0035, 0037, Examiner’s note: using a camera to generate information regarding the amount, location, and condition of the solid waste and then comparing that information to a reported information to generate a verification and audit report).
-Puri et al. (United States Patent Application Publication Number: US 2010/0173269) teaches analyzing images to determine the volume and color of the load, (see abstract and paragraph 0009, Examiner’s note: making a determination of items based on images, which include volume and color).
However, the prior art does not expressly teach and the shape of each loaded item in terms of whether a wire is projecting, angulated, or round when viewed in combination with the other elements from the claim and the claims from which it depends.
Accordingly, the Examiner does not applied a prior art rejection to the claim.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-12 recite a machine as the claims recite a system with elements interpreted under 112 sixth/f.
The claim(s) recite(s) the idea of collecting manifest information, visually inspecting the items being transported, and making a determination based on the comparison of the manifest to the visual inspection, where the specific information being transported in this case happens to be waste information.
The idea of collecting manifest information, visually inspecting the items being transported, and making a determination based on the comparison of the manifest to the visual inspection, where the specific information being transported in this case happens to be waste information, is a fundamental economic practice or principle, which is a certain method of organizing human activities.
Certain methods of organizing human activities are in the groupings of enumerated abstracts ideas, and hence the claims recite an abstract idea.
This judicial exception is not integrated into a practical application because the claims merely recite limitations that are not indicative of integration into a practical application in that the claims merely recite:
(1) Adding the words “apply it” ( or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)) and (2) Generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Specifically as recited in the claims:
As per claim 1, the claims recite limitations a human or humans could perform specifically transporting information in a vehicle to a site and providing information related to a manifest of transported information like weight, type, quantity, shape, transport date, driver’s name, etc. The additional elements that these limitations a human or human could perform are instead recited as the collected by a “controller” and the vehicle includes a computer or specifically as recited a “vehicle mounted unit” merely recites apply it. Specifically here the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more.
Further the limitations of a human or human could perform are instead recited as the collected by a “controller” and the vehicle includes a computer or specifically as recited a “vehicle mounted unit” merely recites generally linking it to the field of computers.
As per claim 2, the claims recite limitations a human or humans could perform specifically a human could look at the load in a vehicle and make a determination of type and weight of the load. Further a human could determine conformity based on comparing visual observation with a manifest. Further a human could provide a manifest or approval note if the conformity is determined. The additional elements that these limitations that could be performed by a human or humans are instead being recited as being performed by the controller which includes a camera to take video pictures and the comparison is being done by AI merely results in apply it.
Specifically here the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. Further here the additional elements provide only a result oriented solution and lack details as to how the computer performs the modifications which is equivalent to the words apply it. Here there are no details about any particular AI or how the AI makes the determination other than it being camera pictures being used. The AI is used to generally apply the abstract idea without placing any limitation on how the AI operates to derive the information other than camera pictures being used. The limitation recites only the idea of determining information via AI and camera pictures without any details on how this is accomplished. The claim omits any details on how the AI solves a technical problem, and instead recites only the idea of a solution or outcome. (additionally see USPTO Example 47-48). Further here applicant recites no improvement to the camera, rather Applicant is merely using the camera to implement the abstract idea at the apply it level.
Further the limitations of a human or human could perform are instead recited as being performed by the controller which includes a camera to take video pictures and the comparison is being done by AI merely recites generally linking it to the field of computers.
As per claim 3, the claims recite limitations a human or humans could perform specifically a human could receive information from a manifest submitted by a driver and make a determination based on the manifest and the visual inspection of the load. Further a human could provide an approval stamp based on the conformity, for example a signature that is printed. The limitations that could be performed by a human, but instead recite the additional elements that the visual inspection is being performed by AI and the information is being determined by a controller merely results in apply it as detailed in the claims above.
Further the additional elements that the information that could be received by being provided from one user to another is received from a scanner or the vehicle mounted unit merely results in apply it. Specifically here the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. Further here the additional elements provide only a result oriented solution and lack details as to how the computer performs the modifications which is equivalent to the words apply it. Here Applicant does not disclosure an improvement in a scanner or an improvement in sending information from a computer (vehicle mounted unit), rather here Applicant is merely using a computer or scanner to implement the abstract, which as recited in the claims as broadly recited merely results in apply it.
Further limitations that could be received by being provided from one user to another is received from a scanner or the vehicle mounted unit merely generally links to the field of computers.
As per claim 4, the claims recite limitations a human or humans could perform specifically a human could double check by comparing the estimated weight by visual inspection and the weight from the weighbridge scale to each other. The additional element that the visual inspection is instead AI merely results in apply it or generally linking it to the field of computers as discussed above.
As per claim 5, the claims recite limitations a human or humans could perform specifically a human could receive a contract number with information from a manifest. There are no additional elements beyond those discussed above.
As per claim 6, the claims recite limitations a human or humans could perform specifically a human could write down information regarding the shape (like muddy, solid, liquid) and type of the waste (loose, container, drum, or bag). There are no additional elements beyond those previously discussed.
As per claim 7, the claims recite limitations a human or humans could perform specifically a human could write down a manifest or a waste material acceptance from. A human can print information by hand. The additional element that this limitation a human or humans could perform is instead being performed by a controller with a printer merely results in apply it. Specifically here the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. Further here the additional elements provide only a result oriented solution and lack details as to how the computer performs the modifications which is equivalent to the words apply it. Here Applicant does not disclose an improvement in a printer, rather here Applicant is merely using a printer to implement the abstract, which as recited in the claims merely results in apply it.
Further limitations that could be done by a human that instead recite it being done by a controller including a printer merely generally links to the field of computers.
As per claim 8, the claims recite limitations a human or humans could perform specifically a human could receive multiple pieces of data at the same time. For example looking at a scale and receiving a manifest from a driver. The additional elements that this limitation that could be performed by a human or humans that instead recite it being performed by a “controller” and a computer like a “vehicle mounted unit” merely result in apply it or generally linking it to the field of computers as discussed in the claims above.
As per claim 9, the claim merely discusses the type of computer the vehicle mounted unit is, specifically a PDA or smartphone. This additional element merely results in apply it. Specifically here the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more.
Further the limitations of a human or human could perform are instead recited as the collected by a PDA or smartphone merely recites generally linking it to the field of computers.
As per claim 10, the claim discusses limitations a human or humans could perform specifically a human could retrieve waste information from a memory like a log and transmit (Send) the information to another user. The additional elements that this receiving is being performed by a vehicle mounted unit and a controller merely results in apply it as discussed above.
Further the additional element that the memory is USB merely results in apply it. Specifically, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. Further here the additional elements provide only a result oriented solution and lack details as to how the computer performs the modifications which is equivalent to the words apply it. Here Applicant does not disclosure an improvement in USB memory, rather here Applicant is merely using USB memory to implement the abstract, which as recited in the claims merely results in apply it.
Further limitations that could be done by a human that merely recite it being done a specific type of memory like USB merely generally links to the field of computers.
As per claim 11, the claim discusses limitations a human or humans could perform specifically a human could estimate a load based on visualization of the load, by grasping the outer appearance of load, the volume, the color of the load, and the shape of each loaded item in terms of whether a wire is projecting, angulated or round. The additional elements that this estimation is instead being done by AI merely results in apply it or generally linking it to the field of computers as discussed above in the claims.
As per claim 12, the claim discusses limitations a human or humans could perform specifically a human could determine if the weight from the scale and the estimated weight are greater than or equal to a threshold, and then accept and approve the waste treatment information. The additional elements that the visualization and estimation is being done by “AI” and that the information is being received from a controller merely result in apply it or generally linking it to the field of computers as discussed above previously in the claims.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims merely recite limitations that are not indicative of an inventive concept (“significantly more”) in that the claims merely recite:
(1) Adding the words “apply it” ( or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)) and (2) Generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), as detailed under the practical application step.
Claim Rejections - 35 USC § 112
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 2-4 and 11-12 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.
As per claims 2 and 3, the claims include limitations interpreted under 112 sixth/f:
-wherein the controller includes: a camera that acquires a video picture of an outer appearance of the transport vehicle; and AI that estimates the type and weight of a load on the transport vehicle on the basis of the video picture acquired by the camera, conformity between the weight of the load estimated by the AI and the load weight on the transport vehicle measured using the weighbridge is determined, and the load weight is printed on a manifest and the manifest is output if the presence of the conformity is determined. (see claim 2)
-wherein the controller determines conformity of the load type on the transport vehicle estimated by the AI with a load type written on the manifest submitted by a driver and read by a scanner or/and with a load type included in the industrial waste treatment related information received from the vehicle-mounted unit, and prints an approval stamp for the load type on the manifest and outputs the manifest if the presence of the conformity is determined. (see claim 3)
See MPEP 2181 (cited herein):
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
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For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). "‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’" EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer." EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." 785 F.3d at 622, 114 USPQ2d at 1714. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id., 114 USPQ2d at 1714
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The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
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A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.
With respect to controller, Applicant discusses the controller is a computer (see paragraph 0063 “cited herein: On an acceptance side, the above-described information acquired from the vehicle-mounted unit 1210 through the communication interface and the measurement data from the weighbridge are analyzed by the controller 1120 such as a computer to compile a database containing the accepted vehicle information and weight of the load. Then, an item to be written on the manifest is extracted from the database and is printed out automatically. Furthermore, an acceptance form to be provided to a driver is printed and issued.
However, this is not sufficient structure with respect to the claim limitations, as Applicant does not disclose the algorithm for performing the specific task. It is noted above that algorithm is defined “for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure."
With respect to “AI” applicant merely discloses various inputs and outputs with respect to the AI, but does not disclose how to get from the inputs to outputs, or more specifically the algorithm or a finite sequence of steps for performing the claimed function, for example how to get from the inputs (like camera or picture data) to outputs (like type and weight). Further it is noted, Applicant discusses no type or specific kind of machine learning (AI) that performs this function. Further even beyond AI implementation, Applicant discusses no sequence of steps for determining the estimation.
See MPEP 2181 (cited herein):
In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function. See, e.g., Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493; Biomedino, 490 F.3d at 952, 83 USPQ2d at 1123; Atmel Corp., 198 F.3d at 1380, 53 USPQ2d at 1229. Such argument was found to be unpersuasive because the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms. Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493 ("A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function."); Atmel Corp., 198 F.3d at 1380, 53 USPQ2d at 1229 ("[C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification."). The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, 574 F.3d at 1384, 91 USPQ2d at 1492 (stating that language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome); Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002; see also Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed. App'x 389, 394-95 (Fed. Cir. 2009) (holding that implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported "one-step" algorithm is not an algorithm at all) (unpublished). EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1716 (Fed. Cir. 2015) (disagreeing "that a microprocessor can serve as sufficient structure for a software function if a person of ordinary skill in the art could implement the software function"); Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1492 (explaining that "[t]he fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement[,]" whereas "[t]he question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure’ to satisfy [pre-AIA ] section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function").
Therefore the claims must be rejected as failing to satisfy the written description requirements of 112 first/a.
Further claims 4 and 11-12 that depend off of claim 2 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.
As per claims 4, 11-12,
Applicant recites making estimations based on AI. It is not just a requirement for claims interpreted under 112 sixth/f to include the algorithm. It is a requirement for all claims.
See MPEP 2161.01 (cited herein):
Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
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When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. For more information regarding the written description requirement, see MPEP § 2162- § 2163.07(b). If the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) or the sixth paragraph of pre-AIA 35 U.S.C. 112, "the applicant has in effect failed to particularly point out and distinctly claim the invention" as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA 35 U.S.C. 112 ]. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). A rejection under 35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 must be made in addition to the written description rejection. See also MPEP § 2181, subsection II.B.2(a).
Applicant does not disclose the algorithm for performing the specific tasks in the above claims. It is noted above that algorithm is defined as for example, “a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002) Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted).
With respect to “AI” estimations, applicant merely discloses various inputs and outputs with respect to the AI, but does not disclose how to get from the inputs to outputs, or more specifically the algorithm or a finite sequence of steps for performing the claimed function, for example
-how to get from the inputs (like camera or picture data) to outputs (like type and weight).
-how to get from the inputs (like camera data) to outputs (determinations like volume, color, shape of whether a wire is projecting, angulated, round, type, etc)
Further it is noted, Applicant discusses no type or specific kind of machine learning (AI) that performs this function. Further even beyond AI implementation, Applicant discusses no sequence of steps for determining the estimation.
See MPEP 2161.01 (cited herein):
("The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus.").
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It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. For more information regarding the written description requirement, see MPEP § 2162- § 2163.07(b). If the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) or the sixth paragraph of pre-AIA 35 U.S.C. 112, "the applicant has in effect failed to particularly point out and distinctly claim the invention" as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA 35 U.S.C. 112 ]. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). A rejection under 35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 must be made in addition to the written description rejection. See also MPEP § 2181, subsection II.B.2(a).
Therefore the claims must be rejected as failing to satisfy the written description requirements of 112 first/a.
Further it is additionally noted, regardless of whether or not the claims are interpreted under 112 sixth/f ( for example if Applicant were to successfully argue or amend the claims 2-3 interpreted under 112 sixth/f so that they were no longer interpreted under 112 sixth/f), the claims would still stand rejected under 112 a/first as detailed above (and corresponding dependent claims 3-4 and 11-12 that depend from claim 2), as the disclosure of the algorithm requirement is not just for claims interpreted under 112 sixth/f. And the claims do not recite the algorithm with respect to the specific estimations using AI. Specifically with “AI” applicant merely discloses various inputs and outputs with respect to the AI, but does not disclose how to get from the inputs to outputs, or more specifically the algorithm or a finite sequence of steps for performing the claimed function, for example how to get from the inputs (like camera or picture data) to outputs (like type and weight). Further it is noted, Applicant discusses no type or specific kind of machine learning (AI) that performs this function.
7. 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.
8. Claims 1-12 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.
9. Claim limitations:
-wherein the controller includes: a camera that acquires a video picture of an outer appearance of the transport vehicle; and AI that estimates the type and weight of a load on the transport vehicle on the basis of the video picture acquired by the camera, conformity between the weight of the load estimated by the AI and the load weight on the transport vehicle measured using the weighbridge is determined, and the load weight is printed on a manifest and the manifest is output if the presence of the conformity is determined. (see claim 2)
-wherein the controller determines conformity of the load type on the transport vehicle estimated by the AI with a load type written on the manifest submitted by a driver and read by a scanner or/and with a load type included in the industrial waste treatment related information received from the vehicle-mounted unit, and prints an approval stamp for the load type on the manifest and outputs the manifest if the presence of the conformity is determined. (see claim 3)
invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
See MPEP 2181 (cited herein):
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
….
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). "‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’" EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer." EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." 785 F.3d at 622, 114 USPQ2d at 1714. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id., 114 USPQ2d at 1714
…..
The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
With respect to controller, Applicant discusses the controller is a computer (see paragraph 0063 “cited herein: On an acceptance side, the above-described information acquired from the vehicle-mounted unit 1210 through the communication interface and the measurement data from the weighbridge are analyzed by the controller 1120 such as a computer to compile a database containing the accepted vehicle information and weight of the load. Then, an item to be written on the manifest is extracted from the database and is printed out automatically. Furthermore, an acceptance form to be provided to a driver is printed and issued.
However, this is not sufficient structure with respect to the AI claim limitations, as Applicant does not disclose the algorithm for performing the specific task. It is noted above that algorithm is defined “for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure."
With respect to “AI” applicant merely discloses various inputs and outputs with respect to the AI, but does not disclose how to get from the inputs to outputs, or more specifically the algorithm or a finite sequence of steps for performing the claimed function, for example how to get from the inputs (like camera or picture data) to outputs (like type and weight). Further it is noted, Applicant discusses no type or specific kind of machine learning (AI) that performs this function. Further even beyond AI implementation, Applicant discusses no sequence of steps for determining the estimation.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Therefore claims 3-4 and 11-12 that depend off of claim 2 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.
As per claim 1, Applicant recites the industrial waste treatment related information includes at least the name of a waste generator, a transport trustee, a transport permission number, the type, quantity, shape, and packing type of the industrial waste to be discharged, a driver’s name, and a transport date.
There is insufficient antecedent basis for the limitation, the name and the type, in the claim as the limitations are not previously recited in the claim or the claim from which they depend. For purposes of this examination, the Examiner will interpret the claim as follows: the industrial waste treatment related information includes at least
Further claims 2-12 that depend off of claim 1 are rejected based on their dependency 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.
As per claim 2, Applicant recites and AI that estimates the type and weight of a load on the transport vehicle. There is insufficient antecedent basis for this limitation in the claim as previously, Applicant recites the type but this relates to the industrial waste related information not the camera information as in claim 2. For purposes of this examination, the Examiner will interpret the claim as follows: and AI that estimates a type and weight of a