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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 23, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The Examiner cannot find any apparatus support for “a processor” from the original specification.
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 1-3, 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Statutory Category: YES - The claim recites a bladder volume measuring device and, therefore, is a device.
Step 2A, Prong 1, Judicial Exception: YES - The claim recites the limitation of “providing …images … determine a first shape … provide a corresponding shaping coefficient … calculate a bladder volume … wherein the shape information is rectangular parallelepiped, triangular prism or sphere.” This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “processor” language, the claim encompasses a user simply looking at an image of a bladder and determine the shape and measure the volume with certain shape weighted calculation in his/her mind. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.
Step 2A, Prong 2, Integrated into Practical Application: No - The claim recites additional elements: claim 2: getting second image, claim 3: determine the shape based on first and second image and calculate volume again; claim 9, basic measurement parameter such as width, height and length for necessary volume calculation; claim 10, thresholding. These steps are recited at a high level of generality (i.e., as a general means of getting additional data, shape viewing, scoring), and amounts to mere data gathering and conventional data calculation (i.e. volume = width x height x length), which is a form of insignificant extra-solution activity. The processing circuitry that performs these steps is also recited at a high level of generality, and merely automates these steps. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component (the processing circuitry).
The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component (the processor). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Step 2B, Inventive Concept: No - As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the initial value collecting step and comparing steps were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The background of the example does not provide any indication that the processing circuitry and storage is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the collecting data, and shape determination, and basic volume calculation step is well-understood, routine, conventional activity is supported under Berkheimer Option 2. For these reasons, there is no inventive concept in the claim, and thus it is ineligible.
Response to Arguments
Applicant's arguments filed March 23, 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that:
The term "processor" is generally recognized as sufficient structure to avoid means-plus-function interpretation. Courts and the USPTO have acknowledged that a "processor" is a well-known structural component. The previous amendment was made to recite specific structure (a processor) in place of a generic placeholder ("unit"). "Processor" is not a coined term unique to the application-it is a universally understood hardware component in the relevant art. The specification's description of the "unit" and its functions inherently discloses a processor, as one of ordinary skill would understand that the described functionality requires processor-based hardware.
See Arg. Page,
The Examiner disagrees. Applicant has failed to provide any factual evidence to support that a Court and the USPTO would recognize that Applicant’s Spec. describes a processor. Even processor is universally recognized, it does not mean Applicant possesses such processor to do certain methods. Applicant has failed to show with factual evidence such processor is universally understood with Applicant’s Specs. And claimed limitation. Even considering Applicant’s citation of para 0005 and Fig. 1, these citations still fail to show any processor. These “units” are not defined as processor. They could just be a software programming coding, or a pen with paper drawing and calculations. They do not support a structure apparatus, “processor.” They are black box with just a label. This does not support any apparatus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
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, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3797
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