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 .
Response to Arguments
Applicant’s arguments and amendment have persuasively overcome some of the 112 rejections.
The remaining issues are addressed below.
Objections
Applicant argues:
The title has been amended to more clearly describe the invention.
Examiner responds:
Applicant’s changes are not substantive. If Applicant provides more detail on how they see the crux of this invention, the examiner will suggest a title.
Applicant argues:
The Abstract has been amended to address this objection.
Examiner responds:
Applicant only changed the words “processing system” to “encoding apparatus.”
101
Applicant argues:
This control is a technical solution that specifically improves the functioning of the computer system itself
Examiner responds:
No, the proposed solution is specific to the claimed encoding – it is not applicable to other efforts.
As to the prior art arguments, see the updated claim mapping.
Examiner Note
Applicant has directed the claims to the first embodiment (as labeled in the specification). Thus, shifting the claims to instead be directed to the second embodiment may constitute an impermissible shift as Applicant has elected by original presentation.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The abstract of the disclosure is objected to because it does not “enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.” 37 CFR 1.72(b). Specifically, the abstract is not specific enough, see, e.g., the below 112 rejections.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 9, and 10 are objected to because “process” is singular, but should be plural.
Appropriate correction is required.
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 (all claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As an overview, US practice prohibits claiming results rather than the steps used to accomplish these results. See, e.g., “Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. … Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.” MPEP 2173.05(g). One way to overcome this rejection is to limit the claim to specifically disclosed technologies.
In claims 1, 9, and 10, most of the limitations are unlimited functional claiming. The exceptions are: the processor and memory of claim 1, and the “set … as the compression rate” step.
Further to the point, “artificial intelligence” is unlimited functional claiming, as per the non-final. For similar reasons, these claims cannot recite simply “encode” or “decode” without specifying the type.
Claims 1-10 (all claims) are directed to images, but the specification only supports video, not still images, and thus the claims are broader than what is disclosed.
Claims 1, 9, and 10 recite monitoring the accuracy, but the specification does not disclose how this is accomplished. The examiner’s review has not identified discussion of either ground truth (e.g., labeled data) or heuristics (e.g., tracking whether an object disappears) to determine the accuracy.
Dependent claims are likewise 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 1-10 (all claims) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 9, and 10 recite “different,” but the specification provides insufficient guidance on this relative term. MPEP 2173.05(b). Does “different” encompass separate instances of the same model? What if each instance has different input? Is there a threshold for changes in weights or hyperparameters to be significant enough to be “different?”
Claims 1, 9, and 10 recite “in response to” but it is not clear if this is intended as a conditional, or if this is a required step. Here, the plain meaning is that it is a required step, but the context of the claim suggests that it is conditional because one would expect that they do not both usually occur.
Claims 1, 9, and 10 recite “minimum accuracy,” but the claim does not specify how the minimum is determined (e.g., is there an acceptable error rate)?
Claims 1, 9, and 10 recite “minimum accuracy,” first and second thresholds, and claims 3, 4, 7, and 8 recite “allowable accuracy.” Reference to the specification suggests that “allowable accuracy” and “minimum accuracy” are intended to have different meanings, but the plain meaning in English of these terms is the same. Thus, there are not clear boundaries between the various thresholds and accuracies.
Claims 1, 9, and 10 recite “set the determined first or second new compression rate as the compression rate,” but the conditions for the first and second compression rates are not mutually exclusive, nor is it guaranteed that one will be chosen. Is the intent that the first or second compression rate is set regardless? The examiner notes that the claims do not specify, for instance, that the second threshold is higher than the first.
Claim 2 recites “the result,” but this lacks sufficient antecedent basis because the earlier recitation in claim 1 was to each, but this is for the plurality. MPEP 2173.05(e). Additionally, it is unclear if result refers to the AI or each of the plurality of processes.
Claims 3, 5, and 7 also recite “the result,” and the antecedent basis is similarly unclear. MPEP 2173.05(e).
Claims 3, 4, 7, and 8 recite “allowable,” but this is subjective. MPEP 2173.05(b)(IV). One option to overcome this rejection is to specify an objective standard.
Claims 3 and 7 recite both “equal to or less” and “equal to or more,” but it is unclear what happens when the value is “equal,” such that both conditions are met.
Claims 4 and 8 recite “approaches,” but this is a relative term without sufficient guidance in the specification. MPEP 2173.05(b).
Claim 5 recites “is to be,” but it is unclear if this is an intended use, or who determines this. MPEP 2173.05(b)(IV).
Claim 5 recites “corresponds,” but this is subjective. MPEP 2173.05(b)(IV). One option to overcome this rejection is to specify an objective standard, such as “is.”
Claim 6 recites “switching rate,” but it is not clear if this is intended to mean the rate at which switching occurs (i.e., the plain meaning), or switching between compression rates (i.e., how it is used in the specification).
Claim 6 recites “each region,” but does not specify each region of what (i.e., how does one know what the complete list is?)
Dependent claims are likewise 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 1-10 (all claims) are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process) without significantly more.
Step 1:
Claim 1 (and its dependents) recite a system, and machines are eligible subject matter.
Claim 9 recites a method, and processes are eligible subject matter.
Claim 10 recites a non-transitory computer readable recoding medium, and manufactures are eligible subject matter.
Step 2A, prong one: All of the elements of claims 1-10 are a mental process as per RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract”). MPEP 2106. Further, the various models are also mental processes, see example 47, claim 2, element (d) (from the July 2024 AI subject matter eligibility examples). MPEP 2106.04(a)(2)(III)(C) explains that use of a generic computer or in a computer environment is still a mental process. In particular, this section begins by citing Gottschalk v. Benson, 409 US 63 (1972). “The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.” In Benson the Supreme Court did not separately analyze the computer hardware at issue; the specifics of what hardware was claimed is only included in an appendix to the decision.
Because there are no additional elements, no further analysis is required for Step 2A, prong two or Step 2B.
Claim Rejections - 35 USC § 102 and/or § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-10 (all claims) as best understood are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kubota, Tomonori, Takanori Nakao, and Eiji Yoshida. "A high-compression video coding method for video analysis using Deep Learning." IEICE Technical Report; IEICE Tech. Rep. 119.456 (2020): 121-126 (“Kubota”). Applicant has identified this document with a date of February 27, 2020 in the Information Disclosure statement, more than one year prior to the presently asserted priority date of September 24, 2021. Citations are to the translated copy in the file as of April 7, 2026.
While Kubota reads on the below claims, in the interest of compact prosecution, the examiner notes that the last step of each of the independent claims is “the compression rate to be used for subsequent encoding of the image data.” Here, the subsequent encoding is not a required step, and is thus understood as an intended use. Because all of the steps build toward an intended use, the purpose of each the steps is limited to an intended use, i.e., the claims do not build to an actual result. Because the steps do not result in a required action, the scope of equivalent actions is quite large. Specifically, MPEP 2144.07’s “Art Recognized Suitability for an Intended Purpose” combined with an unrequired purpose results in a being obvious over many references, including Kubota, because, without a purpose, the scope of equivalents is quite large. In other words, because the claims do not claim the result, rather they only imply a result, the required steps are effectively arbitrary, and thus any other arbitrary step is equivalent.
1. An image encoding system comprising:
a memory; and (Kubota, section 5, “Experiment” That Kubota states that this was actually performed teaches the claimed computer hardware)
a processor coupled to the memory and configured to; (Kubota, section 5, “Experiment” That Kubota states that this was actually performed teaches the claimed computer hardware)
encode, image data using a compression rate to generate encoded data; (Kubota, abstract, “high-compression video coding method”)
decode the encoded data to generate decoded data (Kubota, abstract, “The method analyzes the effects on accuracy of an inference caused by image degradation from video coding.” Kubota’s measuring the effects teaches the claimed encoding. Note that the prior art can teach steps performed in a different order than listed in the claims. MPEP 2111.01(II) “the language of the method claims did not impose a specific order on the performance of the method steps”)
perform a plurality of different Artificial Intelligence (AI) process in parallel on the decoded data; (Kubota, section 4, “1. Determining the compression rate (quantization value) of each coding block according to the tolerance of the recognition target's features to image degradation (Section 4.1) (Section 4.4: optional).”)
monitor an accuracy of a result of each of the plurality of different AI processes; (Kubota, section 4, “The feature of this method is that it analyzes how much the features of the recognition target are affected by image degradation due to encoding”)
in response to determining that at least one of the monitored accuracies is below a predetermined first threshold, determine a first new compression rate that is lower than a current compression rate; (Kubota, section 4.1, “Note that when measuring the change in the aggregated saliency map value, the decision threshold for the change can be adjusted by the magnitude of the classification probability of the detection target (e.g., making the decision threshold stricter for blocks corresponding to a target with high classification probability and looser for blocks corresponding to a target with low classification probability)”)
in response to determining that all of the monitored accuracies are above a predetermined second threshold and that a minimum accuracy among the monitored accuracies exceeds the second threshold by at least a predetermined margin, determine a second new compression rate that is higher than the current compression rate; and (Kubota, section 4.1, “Note that when measuring the change in the aggregated saliency map value, the decision threshold for the change can be adjusted by the magnitude of the classification probability of the detection target (e.g., making the decision threshold stricter for blocks corresponding to a target with high classification probability and looser for blocks corresponding to a target with low classification probability)”)
set the determined first or second new compression rate as the compression rate to be used for subsequent encoding of the image data. (Kubota, abstract, “Image parts which are important for the accuracy are encoded with a compression rate that does not affect the accuracy, and image parts which are unnecessary for the accuracy are encoded with a high compression rate.”)
2. The image encoding system according to claim 1, wherein the processor is further configured to monitor the result of the plurality of processes by the AI. (Kubota, abstract, “The method analyzes effects”)
3. The image encoding system according to claim 2, wherein, when the plurality of processes by the AI are performed in parallel and the result of one process of the plurality of processes performed by the AI is equal to or less than an allowable accuracy, (Kubota, abstract, “image parts which are important for the accuracy are encoded with compression rate which does not affect the accuracy” Kubota’s important for accuracy teaches the claimed result that is less than an allowable accuracy because Kubota employs less compression to maintain the accuracy.)
the processor is configured to determine a new compression rate such that the result of the one process is equal to or more than the allowable accuracy. (Kubota, abstract, “image parts which are unnecessary for the accuracy are encoded with a high compression rate”)
4. The image encoding system according to claim 3, wherein, when the plurality of processes by the AI are performed in parallel and a minimum accuracy among accuracies of results of the plurality of processes performed by the AI is equal to or higher than the allowable accuracy, (Kubota, abstract, “image parts which are unnecessary for the accuracy are encoded with a high compression rate”)
the processor is configured to determine a new compression rate such that the minimum accuracy approaches the allowable accuracy. (Kubota, abstract, “image parts which are unnecessary for the accuracy are encoded with a high compression rate”)
5. The image encoding system according to claim 2, wherein the processor is configured to switch, when the plurality of processes are sequentially performed by the AI and image quality for performing the (x+1)-th process is to be higher than image quality for performing the x-th process, switches the compression rate of a region corresponding to the result of the x-th process to a compression rate lower than the compression rate at the time of performing the x-th process. (Kubota, abstract, “image parts which are important for the accuracy are encoded with compression rate which does not affect the accuracy and image parts which are unnecessary for the accuracy are encoded with a high compression rate.” The image parts are chosen such that they meet the claimed sequence. Additionally, choosing such a sequence is obvious. MPEP 2144.04(IV)(C). Alternatively, if the processes are not performed sequentially, this is not invoked.)
6. The image encoding system according to claim 5, wherein rule information in which each switching rate which provides the image quality for each of the plurality of processes by the AI, a condition for switching to each switching rate, and each region to be switched to each switching rate are defined, and (Kubota, abstract, “image parts which are important for the accuracy are encoded with compression rate which does not affect the accuracy and image parts which are unnecessary for the accuracy are encoded with a high compression rate.”)
the processor is configured to switch the compression rate of each region based on results of the plurality of processes by the AI and the rule information. (Kubota, abstract, “The method analyzes effects for an accuracy of an inference caused by degradation of image by video coding”)
7. The image encoding system according to claim 6, wherein, when the result of one of the plurality of processes by the AI is equal to or less than the allowable accuracy, the processor is configured to determine a new compression rate for the region in which the process is performed so that the result of the process is equal to or more than the allowable accuracy. (Kubota, abstract, “image parts which are important for the accuracy are encoded with compression rate which does not affect the accuracy”)
8. The image encoding system according to claim 6, wherein, when a minimum accuracy among accuracies of results of the plurality of processes performed by the AI is equal to or higher than the allowable accuracy, the processor is configured to determine a new compression rate for the region such that the minimum accuracy approaches the allowable accuracy. (Kubota, abstract, “image parts which are unnecessary for the accuracy are encoded with a high compression rate”)
Claims 9 and 10 are rejected as per claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US10085032B2 – abstract, “second compression scheme”
US11221990B2 – title, “Ultra-high compression of images based on deep learning”
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 DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
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, Gregory Morse can be reached at 571-272-3838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID ORANGE/Primary Examiner, Art Unit 2663
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