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 .
Election/Restrictions
Applicant's election with traverse of Invention I, drawn to a product of Claims 1-11 in the reply filed on 11/05/2025 is acknowledged. The traversal is on the ground(s) that Invention II cannot be practiced by hand, Inventions I and II overlap in scope and are capable of use together, Inventions II and III overlap in scope and are capable of use together, Inventions I and III overlap in scope and are capable of use together, and that the examiner could examine all of the claims of Inventions I, II, and III without serious burden.
This is not found persuasive because although Inventions II and I have similar limitations, Inventions II and I are related as method and product for its practice. The inventions are distinct if it can be shown that either: (1) the method as claimed can be practiced by another and materially different product or by hand, or (2) the product as claimed can be used to practice another and materially different method. (MPEP § 806.05(e)). In the instant case, the product as claimed can be used in a materially different method, such as one with skin images for an area of concern for a user. The method as claimed can be practiced by another and materially different product, such as one with determining that one or more receivers of the analysis output comprise a skin care specialist, or by hand. (Examiner's Note: The additional search burden is as indicated above) (Examiner's Note: The applicant specifically points out that Invention II cannot be practiced by hand. However, Invention II does not recite the existence of a device, as transmitting and receiving of information does not require a device.)
This is not found persuasive because although Inventions II and III have similar limitations, Inventions II and III are related as method and product for its practice. The inventions are distinct if it can be shown that either: (1) the method as claimed can be practiced by another and materially different product or by hand, or (2) the product as claimed can be used to practice another and materially different method. (MPEP § 806.05(e)). In the instant case, the product as claimed can be used in a materially different method, such as one with a smartphone. The method as claimed can be practiced by another and materially different product, such as one with determining that one or more receivers of the analysis output comprise a skin care specialist, or by hand. (Examiner's Note: The additional search burden is as indicated above)(Examiner's Note: The applicant specifically points out that Invention II cannot be practiced by hand. However, Invention II does not recite the existence of a device, as transmitting and receiving of information does not require a device.)
This is not found persuasive because although Inventions I and III have similar limitations, Inventions I and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function or effect as evidenced by “the smartphone” in claim 15 and as evidenced by “wherein the first skin image and the second skin image are associated with a user” and “wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics” in claim 1. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. (Examiner's Note: The additional search burden is as indicated above) (Examiner's Note: As indicated above, Claim 15 recites the existence of a smartphone.) (Examiner's Note: As indicated above, Claim 1 recites a differing type of synoptic representation and different image types).
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/05/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claims 1-11 are currently under examination.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1: The claim limitation “a processor configured to…” “…determine a plurality of skin characteristics from the first skin image and the second skin image” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “processor” coupled with functional language “configured to…” “…determine a plurality of skin characteristics from the first skin image and the second skin image” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “processor”.
Claim 10: The claim limitation “processor is further configured to block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “processor” coupled with functional language “configured to block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “processor”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
“Image processing algorithms that may be used to identify acne may include thresholding, blob detection, Hough transform, template matching…” or equivalents thereof, as described on Par. 23-24 of the disclosure filed on 09/26/2023,
A computational structure, algorithm, or equivalents thereof, which lacks sufficient detail within the applicant’s specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1-11 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.
Claim 1 recites the limitation “generate an analysis output, based on an analysis configuration…”, which lacks sufficient detail within the applicant’s specification as to the structure of the “analysis configuration”. The applicant’s specification states “The contents of the analysis output 510 may be based on an analysis configuration. The analysis configuration may be a default analysis configuration. The analysis configuration may depend on setting(s) selected by the user… ” (Par. 42 of applicant’s spec.), “The selected analysis configuration may be selected from a plurality of analysis configurations based on the user input. The user input may include an area of concern to the user (e.g., a desire to reduce acne). The application may be configured to identify an appropriate analysis configuration and/or skin care specialist based on the area of concern. In some examples, the selected analysis configuration may be based on preferences of the skin care specialist or user.” (Par. 44 of applicant’s spec.). However, simply reciting that the analysis configuration depends on settings or a user input does not provide sufficient detail within the specification as to what the analysis configuration is. The specification further states “Accordingly, the first analysis configuration may filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne, while the second analysis configuration may filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.). However, while this does appear to indicate that the analysis configuration may be a filter, there is not sufficient detail as to the manner in which the analysis configuration is able to “filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne” (Par. 70 of applicant’s spec.). As such, the claim is rejected.
Claim 2 recites the limitation “generate a second analysis output, based on a second analysis configuration…”, which lacks sufficient detail within the applicant’s specification as to the structure of the “second analysis configuration”. The applicant’s specification states “The contents of the analysis output 510 may be based on an analysis configuration. The analysis configuration may be a default analysis configuration. The analysis configuration may depend on setting(s) selected by the user… ” (Par. 42 of applicant’s spec.), “The selected analysis configuration may be selected from a plurality of analysis configurations based on the user input. The user input may include an area of concern to the user (e.g., a desire to reduce acne). The application may be configured to identify an appropriate analysis configuration and/or skin care specialist based on the area of concern. In some examples, the selected analysis configuration may be based on preferences of the skin care specialist or user.” (Par. 44 of applicant’s spec.). However, simply reciting that the analysis configuration depends on settings or a user input does not provide sufficient detail within the specification as to what the analysis configuration is. The specification further states “Accordingly, the first analysis configuration may filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne, while the second analysis configuration may filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.). However, while this does appear to indicate that the analysis configuration may be a filter, there is not sufficient detail as to the manner in which the second analysis configuration is able to “filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.). As such, the claim is rejected.
Claim 10 recites the limitation “the processor is further configured to block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image.”, which lacks sufficient detail within the specification in regards to the structure of the algorithm in the processor that is able to perform the function “block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image”. There is no indication within the specification of any specific manner in which the user is blocked, prevented, or inhibited from capturing the second skin image based on an amount of time passing. As such, the claim is rejected.
Claims 2-11 are dependent on claim 1, and as such are also rejected.
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 1-11 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.
Claim 1 recites the limitation “transmit the analysis output to one or more receivers comprising a skin care specialist”, which fails to effectively define the metes and bounds of the claim as it is unclear as to where the information is being transmitted. When the claim states “output to one or more receivers comprising a skin care specialist”, the claim appears to indicate that the skin care specialist itself is the person receiving the output. The applicant’s specification states “At 608, the application may be configured to transmit the analysis output to one or more receivers. For example, the application may be configured to transmit the analysis output to a skin care specialist or other receiver(s) (e.g., a health care provider, such as a primary care physician).” (Par. 49 of applicant’s spec.). However, this creates ambiguity as to what definition of receiver the applicant is currently using. For example, the applicant indicates the receiver within the specification as “a skin care specialist or other receiver(s) (e.g., a health care provider, such as a primary care physician).” (Par. 49 of applicant’s spec.), which appears to follow the definition of receiver that states “one that receives” (Merriam-Webster Dictionary). However, “receiver” also has an additional definition of “a device for converting signals (such as electromagnetic waves) into audio or visual form” (Merriam-Webster Dictionary). Is the receiver a person? Is the receiver an electronic device? Is the transmission to a display of the same device that a skin specialist can look at? As such, the claim is indefinite as the applicant has failed to effectively define the metes and bounds of the claim. For examination purposes, this will be interpreted as -transmit the analysis output to one or more receivers comprising a skin care specialist-, where the receiver is an electronic device (Examiner's Note: The transmission step is performed by the processor, which appears to indicate that the receiver would also include need to have some sort of electronic device to receive the transmitted information).
Claim 1 recites the limitation “generate an analysis output, based on an analysis configuration…”, which fails to effectively define the metes and bounds of the claim as it is unclear as to what the applicant is referring to with the phrase “analysis configuration”. The applicant’s specification states “The contents of the analysis output 510 may be based on an analysis configuration. The analysis configuration may be a default analysis configuration. The analysis configuration may depend on setting(s) selected by the user… ” (Par. 42 of applicant’s spec.), “The selected analysis configuration may be selected from a plurality of analysis configurations based on the user input. The user input may include an area of concern to the user (e.g., a desire to reduce acne). The application may be configured to identify an appropriate analysis configuration and/or skin care specialist based on the area of concern. In some examples, the selected analysis configuration may be based on preferences of the skin care specialist or user.” (Par. 44 of applicant’s spec.). However, simply reciting that the analysis configuration depends on settings or a user input does not provide sufficient detail within the specification as to what the analysis configuration is. How does the analysis configuration itself work? The specification further states “Accordingly, the first analysis configuration may filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne, while the second analysis configuration may filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.). Is the analysis configuration just a filter? If it is a filter, then does how the analysis configuration “filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne” (Par. 70 of applicant’s spec.)? How does it filter the raw data in such a manner? As such, the claim is indefinite as the applicant has failed to effectively define the metes and bounds of the claim. For examination purposes, the “analysis configuration” will be interpreted as any computational structure, algorithmic structure, filter.
Claim 1 recites the limitation “wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics in a form suitable to the skin care specialist”, which fails to effectively define the metes and bounds of the claim as it is unclear as to what form is “suitable to the skin care specialist”. The specification does state “The synoptic representation may be in a form that is suitable to a skin care specialist. For example, the synoptic representation may be in a form that will allow the skin care specialist to quickly determine an appropriate treatment for the user.” (Par. 17 of applicant’s spec.). However, this does not make an indication as to the type of form the applicant considers to be “suitable” to the skin care specialist. As such, the claim is indefinite as the applicant has failed to effectively define the metes and bounds of the claim. For examination purposes, this will be interpreted as - wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics-.
Claim 6 recites the limitation “generate a second analysis output, based on a second analysis configuration…”, which fails to effectively define the metes and bounds of the claim as it is unclear as to what the applicant is referring to with the phrase “second analysis configuration”. The applicant’s specification states “The contents of the analysis output 510 may be based on an analysis configuration. The analysis configuration may be a default analysis configuration. The analysis configuration may depend on setting(s) selected by the user… ” (Par. 42 of applicant’s spec.), “The selected analysis configuration may be selected from a plurality of analysis configurations based on the user input. The user input may include an area of concern to the user (e.g., a desire to reduce acne). The application may be configured to identify an appropriate analysis configuration and/or skin care specialist based on the area of concern. In some examples, the selected analysis configuration may be based on preferences of the skin care specialist or user.” (Par. 44 of applicant’s spec.). However, simply reciting that the analysis configuration depends on settings or a user input does not provide sufficient detail within the specification as to what the analysis configuration is. How does the analysis configuration itself work? The specification further states “Accordingly, the first analysis configuration may filter the raw data so that the information sent to the first skin care specialist only includes information that is relevant to treating acne, while the second analysis configuration may filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.). Is the second analysis configuration just a filter? If it is a filter, then does how the second analysis configuration “filter the raw data so that the information sent to the second skin care specialist only includes information that is relevant to treating wrinkles and fine lines” (Par. 70 of applicant’s spec.)? How does it filter the raw data in such a manner? As such, the claim is indefinite as the applicant has failed to effectively define the metes and bounds of the claim. For examination purposes, the “second analysis configuration” will be interpreted as any computational structure, algorithmic structure, filter.
Claim 10 limitation “the processor is further configured to block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image” 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. It is unclear as to the manner in which the user is blocked, and there is no corresponding structure within the specification that performs the indicated function of “block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image”. As such, the claim is indefinite as the applicant has failed to effectively define the metes and bounds of the claim. For examination purposes, this will be interpreted as any type of computational structure or algorithm capable of the indicated functionality. 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.
Claims 2-11 are dependent on claim 1, and as such are also rejected.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards a judicial exception without significantly more. These claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception or that are sufficient to amount to significantly more than the judicial exception.
Step 1 of the subject matter eligibility test
Claim 1 is directed towards a device, which describes one of the four statutory categories of patentable subject matter.
Step 2A of the subject matter eligibility test
Prong 1: Claim 1 recites the abstract idea of a mental process as follows:
“receive a first skin image at a first time and a second skin image at a second time, wherein the first skin image and the second skin image are associated with a user, and wherein the first and second time are separated by a duration associated with a skin event”, “determine a plurality of skin characteristics from the first skin image and the second skin image”, “generate an analysis output, based on an analysis configuration and on the plurality of skin characteristics, comprising a synoptic representation of one or more of the plurality of skin characteristics associated with an area of concern of the user”, and “transmit the analysis output…” “… wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics in a form suitable to the skin care specialist”.
The receiving a first skin image at a first time and a second skin image at a second time, wherein the first skin image and the second skin image are associated with a user, and wherein the first and second time are separated by a duration associated with a skin event, determining a plurality of skin characteristics from the first skin image and the second skin image, generating an analysis output, based on an analysis configuration and on the plurality of skin characteristics, comprising a synoptic representation of one or more of the plurality of skin characteristics associated with an area of concern of the user, transmitting the analysis output, wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics in a form suitable to the skin care specialist can be practically performed by the human mind, with the aid of a pen and paper, but for performance on a generic processor, in a computer environment, or merely using the computer as a tool to perform the steps.
A person of ordinary skill in the art could reasonably receive first and second skin images with a generic computer or by being handed piece of paper with the skin images at separate times. A person of ordinary skill in the art could reasonably mentally make a determination regarding skin characteristics based on being handed a piece of paper with two skin images. A person of ordinary skill in the art could reasonably generate an summary analysis output of skin characteristics with a generic computer based on being handed a piece of paper with skin images. A person of ordinary skill in the art could reasonably transmit an analysis output with a generic computer based on having a piece of paper with summary information.
There is currently nothing to suggest an undue level of complexity in the determining, receiving, generating, or transmitting. Therefore, a person would be able to practically be able to perform the determining and generating steps mentally or with the aid of pen and paper.
Prong Two: Claim 1 does not recite additional elements that integrate the mental process into a practical application. Therefore, the claims are “directed to” the mental process. The additional elements merely:
Recite the words “apply it” or an equivalent with the judicial exception, or include instructions to implement the abstract idea on a computer, or merely use the computer as a tool to perform the abstract idea (e.g., a processor, receiver).
For claim 1. The additional elements merely serve to gather data to be used by the abstract idea. The processor and receiver are merely used as a pre-solution step of necessary data gathering to be used by the abstract idea. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. The processing that is performed remains in the abstract realm, i.e. the gathered data is not used for a treatment or meaningful purpose. Additionally, there is no overall improvement to existing technology present. The mental process merely functions on generic computer elements that do not change the functionality of the device itself. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test for Claims 1.
Per the Berkheimer requirement, the additional elements are well-understood, routine, and conventional. For example,
A processor as disclosed by Myers (US Pub. No. 20040254816) hereinafter Myers “The wireless device 161 includes, inter alia, an antenna 171, a transceiver 173, a processor 175, a user interface 177, and a display 179. All of these elements 171-179 are well known to one of ordinary skill in the art. For example, the transceiver 173 comprises a transmitter and a receiver…” (Par. 109) and as disclosed by the applicant “The processor 118 may be a general-purpose processor, a special-purpose processor, a conventional processor, a digital signal processor (DSP), a plurality of microprocessors…” (Par. 79 of applicant’s spec.),
A receiver as disclosed by Myers “The wireless device 161 includes, inter alia, an antenna 171, a transceiver 173, a processor 175, a user interface 177, and a display 179. All of these elements 171-179 are well known to one of ordinary skill in the art. For example, the transceiver 173 comprises a transmitter and a receiver…” (Par. 109) and as disclosed by Cohen (US Pub. No. 20140188398) hereinafter Cohen “where the sensor 10 is a DexCom G4 Platinum sensor, the sensor electronics module 12 is a DexCom G4 Platinum transmitter, and the receiver is the DexCom G4 Platinum receiver; the receiver 102 is docked in the docking station 103 as illustrated and discussed with reference to FIG. 7B; the host communication device 105 comprises an Apple iPhone available from Apple, Inc.; and each remote monitor 114A-114M comprises an Apple iPhone or other mobile phone having an iOS.RTM. (commercially manufactured by Apple, Inc.), Android.RTM. (commercially manufactured by Google, Inc.) or Windows.RTM. (manufactured by Microsoft, Inc.) based mobile operating system.” (Par. 187),
are all well-understood, routine, and conventional.
Claims 2-11 do not include additional elements, alone or in combination that are sufficient to amount to significantly more than the judicial exception (i.e., an inventive concept) as all of the elements are directed to the further describing of the abstract idea, pre-solution activities, and computer implementation.
The dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons: they merely further describe the abstract idea:
receive user input that identifies the skin care specialist (Claim 2),
wherein the analysis configuration is selected from a plurality of analysis configurations based on the user input (Claim 2) (Examiner's Note: A person of ordinary skill in the art could reasonably change a configuration with a generic computer),
a skin characteristic of the plurality of skin characteristics represents at least a skin element and a score associated with the skin element (Claim 3),
wherein the analysis output comprises a historical summary, over the duration, of the plurality of skin characteristics, wherein the historical summary represents a difference between a first skin characteristic associated with first time and a second skin characteristic associated with second time (Claim 4),
wherein the first skin characteristic and the second skin characteristic correspond in region of interest and skin element (Claim 5),
generate a second analysis output, based on a second analysis configuration and on the plurality of skin characteristics, comprising a second synoptic representation, different from the first synoptic representation, of one or more of the plurality of skin characteristics (Claim 6),
transmit, based on input from the user, the second analysis output to one or more other receivers (Claim 6),
wherein the first synoptic representation comprises a synoptic representation of a first subset of the plurality of skin characteristics, and wherein the second synoptic representation comprises a synoptic representation of a second subset of the plurality of skin characteristics different from the first subset (Claim 7),
save the analysis output as an image file (Claim 8) ((Examiner's Note: A person of ordinary skill in the art could reasonably save an output with a generic computer),
upload the image file to a patient portal associated with the skin care specialist (Claim 8) (Examiner's Note: A person of ordinary skill in the art could reasonably upload an image file with a generic computer),
wherein the synoptic representation comprises at least one of the first skin image and the second skin image with an overlay of markings illustrating one or more of the plurality of skin characteristics (Claim 9),
wherein the duration associated with the skin event is greater than or equal to a minimum amount of time between images (Claim 10),
block the user from capturing the second skin image if the minimum amount of time between images has not passed since receipt of the first skin image (Claim 10) (Examiner's Note: A person of ordinary skill in the art could reasonably block a user verbally or with a generic computer based on a time duration),
the analysis output comprises information regarding a subset of the plurality of skin characteristics, the subset being associated with one or more skin characteristics indicated by the user (Claim 11).
Further describe the pre-solution activity (or structure used for such activity):
A processor (Claim 2, 6, 8, 10),
A receiver (Claim 6).
Per the Berkheimer requirement, the additional elements are well-understood, routine, and conventional. For example,
A processor as disclosed by the applicant and Myers above,
A receiver as disclosed by Myers and Cohen above
are all well-understood, routine, and conventional.
Taken alone or in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. The additional elements do not add anything significantly more than the abstract idea. The collective functions of the additional elements merely provide computer/electronic implementation and processing, data gathering, and no additional elements beyond those of the abstract idea. There is no indication that the combination of elements improves the functioning of a processor, receiver, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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.
The claims are generally directed towards a device with a processor. The processor is configured to receive skin images of a user at differing times, determine a plurality of skin characteristics from the images, generate a summary output based on the skin characteristics, and transmit the output result.
Claim(s) 1, 3-5, 8-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker (US Pat. No. 11382558) hereinafter Baker.
Regarding claim 1, Baker discloses A device (Col. 1, lines 22-36 (device)), comprising:
a processor (Col. 1, lines 22-36 (device with a processor)) configured to:
receive a first skin image at a first time and a second skin image at a second time (Col. 11, lines 13-33 (image analysis)) (Col. 11, lines 33-38 (receiving plurality of images )) (Col. 12, lines 43-49 (prior image from the patient)) (Col. 4, lines 23-37 (time-series data)), wherein the first skin image and the second skin image are associated with a user (Col. 11, lines 13-33 (image analysis)) (Col. 11, lines 33-38 (receiving plurality of images of user)) (Col. 12, lines 43-49 (prior image from the patient)) (Col. 13, lines 14-34 (time series images)), and wherein the first and second time are separated by a duration associated with a skin event (Col. 11, lines 13-33 (image analysis)) (Col. 4, lines 23-37 (time-series data)) (Col. 12, lines 43-49 (prior images from the patient)) (Col. 13, lines 14-34 (time series images));
determine a plurality of skin characteristics from the first skin image (Col. 12, lines 4-10 (feature analysis)) (Col. 12, lines 57-64 (previously analyzed skin images and current images have their skin features compared, where the evolution is determined)) (Col. 12, lines 43-49 (prior images from the patient));
generate an analysis output, based on an analysis configuration and on the plurality of skin characteristics, comprising a synoptic representation of one or more of the plurality of skin characteristics associated with an area of concern of the user (Col. 14, lines 5-16 (risk ranking generated for the skin feature)) (Col. 12, lines 4-10 (feature analysis)) (Col. 12, lines 57-64 (previously analyzed skin images and current images have their skin features compared, where the evolution is determined)); and
transmit the analysis output to one or more receivers comprising a skin care specialist (Fig. 4 (step 214)) (Col. 7, lines 17-34 (providing the risk ranked images to the clinician)) (Col. 4, lines 57-63 (monitor displays information)), wherein the synoptic representation presents a historical summary of the one or more of the plurality of skin characteristics in a form suitable to the skin care specialist (Col. 14, lines 5-16) (Fig. 5, Col. 14, lines 36-51 (evolution over time)).
Baker fails to explicitly disclose determine a plurality of skin characteristics from the first skin image and the second skin image (Examiner's Note: Baker fails to explicitly disclose wherein the same determination step is performed on both images).
However, Baker highly suggests determining skin features from images and comparing the skin features to skin features from previously analyzed images (Col. 2, lines 6-18)(Col. 12, lines 4-10 (feature analysis)) (Fig. 5, Col. 12, lines 57-64 (“Next, the skin features are correlated to the previously-captured and analyzed images and compared (operation 311). An embodiment of a determination of evolution is shown in FIG. 5, described in more detail below. During operation 311, the evolution of each skin feature is determined. For instance, changes in symmetry, border, color, and size are evaluated. The extent of each of these changes is used in rating each skin feature.)” (skin features compared)).
Therefore, it would have been obvious to a person of ordinary skill in the art to modify the device of Baker with that of Baker to include explicitly include determine a plurality of skin characteristics from the first skin image and the second skin image, where the skin images receive the same type of analysis as it would have yielded the predictable result of allowing for tracking the evolution of the skin condition (Baker, (Col. 12, 57-64)(Col. 14, lines 22-26)).
Modified Baker fails to explicitly disclose transmit the analysis output to one or more receivers (Examiner's Note: Baker fails to explicitly disclose an electronic receiver).
However, Baker highly suggests transmit the analysis output to one or more receivers (Fig. 4 (step 214)) (Col. 7, lines 17-34 (providing the risk ranked images to the clinician)) (Col. 4, lines 57-63, “Monitor 110 displays the images of the patient's P skin features to the medical professional MP. Monitor 110 is in communication with server 108 either via a wired connection or wirelessly. In embodiments, monitor 110 is a handheld computing device (including cellular phones, tablets and the like), a laptop computing device, and/or a desktop monitor.” (it is highly suggested that the monitor, which is connected to the server, has a computational structure for receiving the output)).
Therefore, it would have been obvious to a person of ordinary skill in the art to modify the device of Baker with that of Baker to explicitly include transmit the analysis output to one or more receivers as it would have yielded the predictable result of directly providing the electronic structure needed to receive the information for the clinician (Baker (Col. 4, lines 57-63)).
Regarding claim 3, modified Baker further discloses wherein a skin characteristic of the plurality of skin characteristics represents at least a skin element and a score associated with the skin element (Col. 14, lines 5-16 (components of the risk ranking for the skin features)).
Regarding claim 4, modified Baker further discloses wherein the analysis output comprises a historical summary, over the duration, of the plurality of skin characteristics, wherein the historical summary represents a difference between a first skin characteristic associated with first time and a second skin characteristic associated with second time (Col. 14, lines 5-16 (evolution)) (Fig. 5, Col. 14, lines 36-51 (evolution over time)) (Col. 13, lines 13-34 (time series)).
Regarding claim 5, modified Baker further discloses wherein the first skin characteristic and the second skin characteristic correspond in region of interest and skin element (Col. 14, lines 5-16 (evolution)) (Fig. 5, Col. 14, lines 36-51 (evolution over time)) (Col. 13, lines 13-34 (time series)).
Regarding claim 8, modified Baker further discloses wherein the processor is further configured to: save the analysis output as an image file (Col. 4, lines 23-43 (image storage)) (Col. 12, lines 50-57 (data stored)); and upload the image file to a patient portal associated with the skin care specialist (Col. 4, lines 23-43 (image storage)) (Col. 12, lines 50-57 (data stored)) (Col. 4, lines