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 .
Status of the Claims
Claims 1-9 and 11-15 are currently pending in the application.
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 limitations are:
processing module in claims 1-16; and
network transmission module in claim 3.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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 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.
Claim limitations “a processing module and a network transmission module” invoke 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. For computer-implemented means-plus-function claim limitations, a corresponding algorithm associated with a computer or microprocessor is required. See MPEP 2181 (II)(B). The disclosure is devoid of any sufficient structure that is associated with a computer or microprocessor to perform the functions of the claim limitations listed above. Mere references to a general purpose computer or microprocessor with appropriate programming without providing an explanation of the appropriate programming, or simply reciting "software" without providing detail about the means to accomplish a specific software function, is not an adequate disclosure of the corresponding structure. Therefore, the claims are indefinite and are 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 claims, 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.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-9 and 11-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see pages 7-8 of the remarks, filed 01/02/2026, with respect to the means-plus function interpretation of claims 1-16 under 35 U.S.C. § 112(f) have been fully considered, but they are not persuasive.
Applicant alleges
The Office interpreted claims 1-16 under 35 U.S.C. §112(f), 6th Paragraph, with regard to the phrases "processing module" (in claims 1-16) and "a network transmission module" (in claim 3). Applicant respectfully submits that means-plus-function interpretation is not intended.
On the outset, Applicant notes that these limitations do not contain the language "a means for" or "a step for", and thus are presumed to not be treated in accordance with 35 U.S.C. § 112, 6th paragraph. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). By intentionally avoiding the phrase "a means for" in describing the limitations mentioned above by the Office, Applicant is claiming a scope that would be understood by one of ordinary skill in that art to include all structural and functional equivalents of these phrases.
Because the Applicant specifically avoided using the phrases "a means for" or "a step for", Applicant respectfully submits that any uncertainty should be resolved in favor of upholding the presumption, and respectfully requests that the Office withdraw its assertion that the pending claims should be interpreted as means-plus-function.
This is not persuasive. Applicant is correct in asserting that the claim limitations under scrutiny do not contain the language "a means for" or "a step for", and thus are presumed to not be treated in accordance with 35 U.S.C. § 112 (f), however, the presumption is overcome because the limitations fail to recite sufficiently definite structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term “module” does not provide any indication of structure and the modifiers “processing” and “network transmission” do not impart structure. Under the 3-prong analysis, the limitations should be interpreted under 35 U.S.C. § 112(f) because the word “module” acts as a generic placeholder for the term “means”, the generic placeholder “module” is modified by functional language “receiving”, and the generic placeholder “module” is not modified by sufficient structure.
Applicant’s arguments, see pages 8-10 of the remarks, filed 01/02/2026, with respect to the rejection of claims 1-16 under 35 U.S.C. § 112(b) have been fully considered, but they are not persuasive.
Applicant alleges
Applicant respectfully disagrees for at least the following reasons… In accordance with the originally filed specification, including FIG. 1, the processing module 13 is depicted and described as "in communication with the camera and light source module 12 and the network transmission module 14... [and] receives, processes, and analyzes a food photography result from the camera and light source module 12," while the network transmission module 14 "...generates the corresponding food status information and transmits the corresponding food status information through the network transmission module 14" (inter alia, Paragraph [0017]).
Given that in context of the originally filed specification and the knowledge of one skilled in the art at the time of invention, an artisan would have routinely known how to provide electronic/circuitry/computing functionality that meets the generalized operation of these elements given the described operation of the components detailed in the specification as originally filed.
Minimally, the processing module 13 can be a generic-type computing device, such as central processing unit (parallel and similar to the CPU of user device 20 in Paragraph [0018]) configured to perform expected functions as known in the art and detailed in the specification as originally filed. Further, specifics of the operation of the processing unit 13 are detailed in the originally filed specification, inter alia, Paragraphs [0020]-[0024], providing a number of ways that the generic function of "receiving [] food photography results [] and analyzes the food photography results through an image recognition process," as claimed is achieved. Given the details and specifics of the described operation of generic computing hardware that is specifically configured to perform these explicit operations, Applicant respectfully submits that this is fully enabled and realizable as described in the originally filed specification, and further, it is clear and well-understood what these limitations explicitly describe, being fully compliant with 35 U.S.C. §112, First and Second Paragraphs. Further, specific image processing methods and configurations are explicitly detailed in the originally filed specification, inter alia, Paragraph [0029]-[0030], providing better understanding of what the processing module 13 performs and how the generically described functionality is achieved.
In regard to the network transmission module 14, wherein "at least one food status information is transmitted from the network transmission module to the user device in a wired transmission manner or a wireless transmission manner" (claim 3),
Applicant respectfully submits that this broadly described routine operation is well- known to a skilled artisan in the art, is fully enabled, and the metes and bounds are completely understood by a skilled artisan at the time of invention, particularly in light of interpretation of Paragraphs [0017]-[0018] as originally filed.
Applicant therefore respectfully requests that the Office withdraw its rejections predicated upon 35 U.S.C. §112 and issue favorable reconsideration.
Therefore, for at least the reasons discussed above, Applicant respectfully submits that the claimed invention is definite and particularly points out the subject matter which Applicant regards as the invention as required under 35 U.S.C. §112; hence, Applicant respectfully requests the Office to withdraw the rejection over claims 1-9 and 11-15 accordingly, and to issue favorable re-consideration.
This is not persuasive. Regarding the “processing module”, the broadest reasonable interpretation (BRI) the claim limitation that is being interpreted under 35 U.S.C. § 112(f) is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act. If a claim limitation is being interpreted under § 112(f), the specification must be consulted to determine the corresponding structure, material, or act for performing the claimed function. The “processing module” is a computer-implemented § 112(f) claim limitation. For a computer-implemented § 112(f) claim limitation that performs a specific computer function, the specification must disclose an algorithm for performing the claimed specific computer function. An algorithm is defined, e.g., as a finite sequence of steps for solving a logical or mathematical problem or performing a task. MPEP § 2181(II)(B). 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. MPEP § 2181(II)(B). The corresponding structure is not simply a general purpose computer by itself but a computer specially programmed to perform the disclosed algorithm. In this case, the specification fails to disclose any algorithm to perform the claimed function and/or discloses an algorithm but the algorithm is not sufficient to perform the entire claimed function(s). The sufficiency of the algorithm is determined in view of what one of ordinary skill in the art would understand as sufficient to define the structure and make the boundaries of the claim understandable. Disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software to perform the claimed function.
Regarding the “network transmission module”, the broadest reasonable interpretation (BRI) the claim limitation that is being interpreted under 35 U.S.C. § 112(f) is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act. If a claim limitation is being interpreted under § 112(f), the specification must be consulted to determine the corresponding structure, material, or act for performing the claimed function. In this case, there is no disclosure of structure, material or acts for performing the recited function, and the claim fails to satisfy the requirements of 35 U.S.C. § 112(b). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means (or step) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
Applicant’s arguments, see pages 10-14 of the remarks, filed 01/02/2026, with respect to the rejections of claims 1-6, 8, 10, 12, and 15-16 under 35 U.S.C. § 101 have been fully considered and are persuasive. The rejections are withdrawn.
Applicant’s amendment to include the allowable subject matter limitations of claim 10 into independent claim 1 has been fully considered and the rejections of claims 1-9 and 11-15 under 35 U.S.C. § 103 have been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M ANDERSON II whose telephone number is (571)270-1444. The examiner can normally be reached Monday - Friday 10AM-6PM.
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/James M Anderson II/Primary Examiner, Art Unit 2425