DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim Interpretation
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.
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: module in claims 1 and 11.
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.
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 limitation “module” 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. 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.
Claim 1 and 11 recite, in part, a machine learning module for performing infringement prediction operations.
Claims 2-10 and 12-20 are rejected based on their dependencies
We examine whether these limitations are means-plus function terms “subject to the strictures of § 112, para. 6,” now § 112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). Federal Circuit caselaw has “emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim re understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. at 1348.
Module is a well-known nonce word that can operate as a substitute for ‘means’ in the
context of § 112, para. 6.” Id. at 1350. Here, the term “module” is used to recite “a machine learning module ” that itself is described in only functional terms, i.e., “for performing machine learning operations”; “ Therefore, we determine that these claim elements
invoke the strictures of § 112(f).
Means-plus-function claiming involves a quid pro quo. Med. Instrumentation [and Diagnostics Corp. v. Elekta AB], 344 F.3d [1205, 1211 (Fed. Cir. 2003)] (“The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.”
The disclosed corresponding structures are, at best, generically recited programming language options and a generically recited hardware processor of a computer. “To avoid purely functional claiming in cases involving computer implemented inventions, we have ‘consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) (quoting Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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.
In the clams “disabled” is indefinite in scope. That standard for indefiniteness can be found in MPEP 2173.02.
“Disabled” on its own can take on several dictionary constructions. Accordingly, the Specification is looked to for guidance.
It reads as follows: “take-down can cause the listing item and/or any associated information (e.g., thumbnails, hyperlinks, etc.) to be temporarily or permanently disabled or hidden from being transmitted to, displayed on, and/or searched by any consumer devices (e.g., user device(s) 330).
This statement on its own leaves disabled with two or more constructions with inconsistent scopes. One reading suggests that disabled can be a synonymous to hidden. Another reading suggests that it is synonymous to transmitted.
Clarification is needed.
Claim Rejections - 35 USC § 101
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application and do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the reasons that follow;
PNG
media_image1.png
714
746
media_image1.png
Greyscale
Step 1
The claims are directed to method and product. Claim 11 the method is the representative claim. The abstract idea is identifying products posted online that are infringing intellectual property rights.
Step 2A
Eligibility Analysis, Step 1
Regarding claims 1-20 the claims are each directed to one a statutory categories of invention, a system and a method. As such, the analysis proceeds to Step 2. The 2019 Patent Subject Matter Eligibility Guidance (“2019 PEG”) sets forth a revised Step 2A analysis which includes a two-prong inquiry.
Eligibility Analysis, Step 2A Prong One
Prong one consists of determining if the claims recite a judicial exception, which includes abstract ideas, laws of nature, and natural phenomenon. Groupings of abstract ideas may include mathematical concepts, mental processes, and certain methods of organizing human activity. Here, representative independent claim 1 recites limitations relating to disabling the presentation of a brand on a website and the steps comprise the following:
A) training a machine learning module to detect intellectual property infringement of a genuine item by a listing item, a training dataset for training the machine learning module comprising a union of instances of a brand training dataset and instances of an intellectual property-infringed brand across a set of intellectual property-infringed brands;
generating a feature-embedding vector for [[a]]the listing item based on one or more textual embeddings representative of textual feature data from the listing item and one or more imagery embeddings representative of imagery feature data [[for]]from the listing item;
generating, via a machine learning module, an intellectual property infringement prediction associated with [[a]]the genuine item based on a feature-embedding vector for the genuine item and the feature-embedding vector for the listing item;
and upon determining that the intellectual property infringement prediction is positive, executing a function of the system to present the listing item in a disabled state on a consumer device display
Steps A) – D) above describe a fundamental economic practice, commercial interactions, and managing interactions between people, and therefore a certain method of organizing human activity. Further, the limitations, as drafted, describe a process that, under its broadest reasonable interpretation, covers performance of the limitation by a human analog but for the recitation of generic computer components.
That is, other than the recitation of the high level technology, nothing in the claims precludes the steps from practically being performed by a human analog. For example, but the claimed ML model and creating a disabled state, performing the above features via generic computer technology; there is no recited specific technological solution. Here, the mere nominal recitation of the generic computer components does not take the claim limitation out of the “certain methods of organizing human activity” grouping. As such, the claims recite an abstract idea under prong one. The analysis proceeds to Step 2A Prong Two.
Eligibility Analysis, Step 2A Prong Two
Prong two consists of determining whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim recites the following additional elements:
A system comprising one or more processors and one or more non-transitory computer-readable media storing computing instructions
Machine learning Modules
The additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. They do not integrate the judicial exception into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As such, the claims are directed to the abstract idea. The analysis proceeds to Step 2B.
Eligibility Analysis, Step 2B
Step 2B consists of determining whether the claim provides an inventive concept by considering whether the additional elements go beyond what is well-understood, routine, and conventional activity.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP 2106; see also USPTO: July 2015 Update: Subject Matter Eligibility):
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”);
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
In the case of the instant claims, the generic application of the computing devices similarly does not make the invention patent-eligible. Note that the disclosure recites general computer products which are suitable to perform the claimed method (see eg. para. 0023-0028). Moreover, the specification does not contribute any technically-specific computer algorithm or code, but rather merely states that the claimed steps may be performed by the generic modules with the expectation that one of ordinary skill in the art would be capable of implementation without further instruction. The use of computing devices in this manner is merely what computers do, ie. training algorithms, performing repetitive calculations, receiving, processing, and storing data, and automating mental tasks, and does not change the analysis. Whilst the implementation of such a solution may include the use of generic technical features, these merely serve their well-understood functions as would be recognized by one of ordinary skill in the art in the technical field under consideration. As such, the claims' invocation of the computer merely amounts to the limiting of the use of the abstract idea to a particular technological environment.
Here, the involvement of the generic computer products does not amount to significantly more than the abstract idea because the mere recitation of a generic computer cannot transform a patent-eligible abstract idea into a patent-eligible invention. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The computer components are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components in this manner does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. The additional elements are recited at a high level of generality, as discussed above. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Independent claim 11 recites substantially similar limitations as independent claim 1 and is rejected accordingly. Dependent claims 2-10 and 12-20 do not remedy the deficiencies of the independent claims and are rejected accordingly. In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bedi et al. US Patent Publication NO. 20230132941 in view of Chaloux et al. US Pub 20190354744
training a machine learning module to detect intellectual property infringement of a genuine item by a listing item, a training dataset for training the machine learning module comprising a union of instances of a brand training dataset and instances of an intellectual property-infringed brand across a set of intellectual property-infringed brands; Bedi p[0022]p[0028]
generating a feature-embedding vector for [[a]]the listing item based on one or more textual embeddings representative of textual feature data from the listing item and one or more imagery embeddings representative of imagery feature data [[for]]from the listing item; Bedi -p[0037] As used herein, the term “authentic text features” refers to distinctive text properties of an authentic graphic element. [0035] As used here, the term “authentic shape features” refers to properties relating to the shape of an authentic graphic element.
generating, via a machine learning module, an intellectual property infringement prediction associated with [[a]]the genuine item based on a feature-embedding vector for the genuine item and the feature-embedding vector for the listing item; Bedi [0051] At this point, the user client device 108 is able to utilize the counterfeit identification system 106 to replace to detect digital images of counterfeit goods independently from the server device(s) 102.
The reference fails to teach “and upon determining that the intellectual property infringement prediction is positive, executing a function of the system
Chaloux provides this feature.
If the user confirms that these potential counterfeit items are in fact counterfeit 724, the system may generate a takedown notice, via the report generator 722 or a notice takedown generator 726. This takedown notice may be generated using the translated user language. It may also be sent to the web source that was identified as hosting the sale of the counterfeit item. In some examples, the takedown notice may be automatically generated in the event counterfeit items are identified based on the analysis system. In this way, the user 701 may be able to efficiently request cease and desist of such counterfeit actions by infringing parties. P[0072]
It would be obvious for one skilled in the art at the time to have combines the references as both inventions are directed to a common end, minimizing online sales of counterfeit goods, a finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (method, or product) and the results would have been predictable to one of ordinary skill in the art.
2. The system in claim 1, wherein the operations further comprise:
training the machine learning module based on a single training dataset comprising
respective training items of each intellectual-property-infringed brand of multiple
brands. p[0022]
3. The system in claim 1, wherein:
determining the feature-embedding vector for the listing item further comprises:
extracting one or more textual embeddings from the textual feature data for the
listing item; p[0030]
extracting one or more imagery embeddings from the imagery feature data for the
listing item; p[0030] and
generating the feature-embedding vector for the listing item based on the one or
more textual embeddings and the one or more imagery embeddings. Fig 4
4. The system in claim 1, wherein the operations further comprise:
training the machine learning module based on a training dataset comprising genuine items,
positive training items associated with the genuine items, and unlabeled training items. Fig 8B
5. The system in claim 4, wherein:
the unlabeled training items comprise unlabeled intellectual-property-infringing items and
unlabeled intellectual-property-noninfringing items. Fig 8B
6. The system in claim 1, wherein the operations further comprise:
sampling, from unlabeled items, unlabeled brand training items of a brand training dataset
for an intellectual-property-infringed brand, wherein:
the brand training dataset further comprises genuine brand items for the intellectual property-
infringed brand and positive brand training items associated with the
genuine brand items; and
after sampling the unlabeled brand training items, training the machine learning module
based at least in part on the brand training dataset. P[0114]
The reference fails to expressly teach 7. The system in claim 6, wherein:
a quantity of the unlabeled brand training items is proportional to a quantity of the positive
brand training items.
One skilled in the art the time the quantity of unlabeled and positive trained items are merely a matter of design choice based on the well known variables such as cost of compute and cost of a false positive/negative. Situations where a claimed invention, when considered in light of the prior art, are obvious to a person of ordinary skill in the art when the claimed invention involves a simple or predictable variation of known technology are obvious. This can include applying known techniques to known devices, using known methods to combine elements, or making modifications based on existing knowledge, all within a context where the results would be predictably achieved.
The reference fail to expressly teach claim 8.
The system in claim 6, wherein:
the unlabeled brand training items for the intellectual-property-infringed brand comprise
respective type items sampled based at least in part on a respective type of each of the
respective type items and major item types for the intellectual-property-infringed
brand.
It is the examiner’s position that to one skilled in the art the time the type of unlabeled and positive trained items are merely a matter of design choice based on the well known variables such as cost of compute and cost of a false positive/negative. Situations where a claimed invention, when considered in light of the prior art, are obvious to a person of ordinary skill in the art when the claimed invention involves a simple or predictable variation of known technology are obvious. This can include applying known techniques to known devices, using known methods to combine elements, or making modifications based on existing knowledge, all within a context where the results would be predictably achieved.
The reference fail to expressly teach claim 9.
The system in claim 8, wherein:
the respective type items of the unlabeled brand training items are further sampled based
It is the examiner’s position that to one skilled in the art the time the quantity of unlabeled and positive trained items are merely a matter of design choice based on the well known variables such as cost of compute and cost of a false positive/negative. Situations where a claimed invention, when considered in light of the prior art, are obvious to a person of ordinary skill in the art when the claimed invention involves a simple or predictable variation of known technology are obvious. This can include applying known techniques to known devices, using known methods to combine elements, or making modifications based on existing knowledge, all within a context where the results would be predictably achieved.
The reference fails to expressly teach claim 10.
The system in claim 9, wherein:
the respective type items of the unlabeled brand training items for the intellectual-property infringed
brand are sampled uniformly from each brand of multiple brands for the
unlabeled items; and
the multiple brands comprise the intellectual-property-infringed brand.
the respective type items of the unlabeled brand training items for the intellectual-property infringed
brand are sampled uniformly from each brand of multiple brands for the
unlabeled items; and the multiple brands comprise the intellectual-property-infringed brand.
It is the examiner’s position that to one skilled in the art the time the type of unlabeled and positive trained items are merely a matter of design choice based on the well known variables such as cost of compute and cost of a false positive/negative. Situations where a claimed invention, when considered in light of the prior art, are obvious to a person of ordinary skill in the art when the claimed invention involves a simple or predictable variation of known technology are obvious. This can include applying known techniques to known devices, using known methods to combine elements, or making modifications based on existing knowledge, all within a context where the results would be predictably achieved.
Claims 11-20 are the method equivalents of the claims 1-10 and are rejected using the same support
Response to Arguments
The Applicant argues that Determining IP infringement is not a fundamental economic principle or practice that is associated with mitigating risk and that the claimed operations are directed to "back-end" operations that are unrelated to actual commercial or legal interactions, and indeed, there are no commercial or legal interactions recited by independent claims 1 or 11.
The Examiner is not persuaded by this argument as the claims are an example of commercial or legal interaction and as such are a certain method of organizing human activity because managing commercial listing to be in compliance with trademark law is an interaction between those parties in commerce.
Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, displaying, and analyzing data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind.
The Applicant argues that the amended limitations of independent claim 1 (and independent claim 11, which recites similar limitations) require training a machine learning module. The Deputy Commissioner for Patents issued a "reminder" memorandum on August 4, 2025, reminding practitioners that examples of claims that do not recite an abstract idea include claims directed to the training of a neural network.
The Examiner determines that the additional elements of claim 1, which include training an image recognition model and processing input media using the image recognition model, merely link the use of the abstract idea to a particular technological environment or field of use, that is, machine learning. The Examiner further determines that claim 1 does “not recite improvements to machine learning, but instead merely recites the application of a generically described model used in its ordinary capacity to make inferences.
The Applicant argues that the claims are directed to an practical application under 2A2.
The Examiner disagrees for as there is nothing claimed that is directed to "an improvement to other technology or technical field." See MPEP§ 2106.04(d)(l).
See for example the applicant’s Specification stating the following:
System 310 can extract and encode the textual feature data into the one or more textual embeddings by any suitable embedding techniques (e.g., SiameseNet, sBERT, BM25, TF-IDF, word2vec, GloVe, etc.). System 310 further can extract and encode the imagery feature data into the one or more imagery embeddings by any suitable embedding techniques (e.g., CLIP, VGG-16, ResNet50, Inceptionv3, EfficientNet, ViT, etc.). Moreover, the feature-embedding vector can be generated by combining the one or more textual embeddings and the one or more imagery embeddings into a single vector.
The Applicant next argues that under 2B that the elements in combination amount to significantly more. The Examiner disagrees as the Applicant does not show that the additional limitations of claim 1, read as an ordered combination, similarly improve an existing technological process or otherwise provide an inventive concept that transforms the abstract idea into a patent-eligible invention.
The Applicant argues that 112(f) should not apply to the claimed modules. The Examiner disagrees as the rejection is consistent with MPEP A claim limitation using the word "module" is generally treated as a "means-plus-function" limitation under patent law, which invokes a specific legal interpretation under 35 U.S.C. 112(f). The term "module" is considered a generic placeholder or "nonce word" that does not, by itself, provide sufficient structural meaning to a person of ordinary skill in the art.
Under 103, the Applicant argues that there is no reason to combine the image-based/logo detection of Bedi with the translation of textual data per Chaloux. The examiner is not persuaded by this argument as a finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (method, or product) and the results would have been predictable to one of ordinary skill in the art.
As to the arguments directed to the amended language of generating see Bedi p[0035]-[0037].
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 RICHARD C WEISBERGER whose telephone number is (571)272-6753. The examiner can normally be reached Monday - Thursday 10AM-8PM PCT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached at 571-270-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
RICHARD C. WEISBERGER
Examiner
Art Unit 3693
/RICHARD C WEISBERGER/Primary Examiner, Art Unit 3693