DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on/after Mar. 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Response to Arguments
Applicant's arguments, regarding the “failing to comply with the written description requirement” rejection under 35 USC § 112(a), filed 30 June 2026, have been fully considered but they are not persuasive.
From pp. 7-9 of Applicant’s representative’s remarks the Examiner’s previous remarks are reiterated. Applicant’s representative, on p. 9, continues to emphasize the (inverse) proportionality of the depth bias to a frustum height/vertical screen resolution. Applicant’s representative, on pp. 9-10, then echoes ¶ [0074] and asserts that support for the instant amendments at instant ¶ [0073].
At the center of p. 10, Applicant’s representative asserts that a person having ordinary skill in the art “(PHOSITA) would inherently understand that the depth bias associated with a pixel is proportional to the height of a frustum and inversely proportional to (i.e., divided by) the screen resolution on the basis of simple mathematics.” The Examiner respectfully invites the Applicant to demonstrate through published evidence, available at/before the time of the filing of the instant application, that a PHOSITA INHERENTLY understands the above assertion. MPEP 2163.07(a) states “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill [PHOSITA]. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” The Applicant has failed to demonstrate, even with the evidence presented, that the claim limitation “determining whether a pixel in the graphical representation is gap-fillable based on a depth bias that is proportional to a frustum height, inversely proportional to a vertical screen resolution and associated with the pixel” is necessarily present in the disclosed language “… the depth bias is based at least in part on a frustum height and a vertical screen resolution” (¶ [0012] and ¶ [0020]) which is the only mention of these claim terms in the written specification.
Throughout pp. 10-12, Applicant’s representative expounds upon various mathematical equations, statements, and principles that are mostly absent from the instant specification. Subsequently, Applicant’s representative lists three websites which purportedly demonstrate that these ‘mathematical relations’ are known to a PHOSITA. Even assuming, arguendo, that these websites contain said ‘mathematical relations’, the Examiner is unable to determine whether this knowledge was published at the time of the filing of the instant application or if this knowledge is well known to a PHOSITA.
Finally, on p. 13, Applicant’s representative asserts that the instant claims and the instant specification “satisfy the written description requirement”. The Examiner respectfully disagrees, as the extensive knowledge and/or ‘mathematical relations’ are seemingly only disclosed within Applicant’s representative’s remarks.
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 1-3, 7-11, and 15-17 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 claims contain 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.
Regarding independent claims 1 and 9, the Examiner asserts that the amended claim language “determining whether a pixel in the graphical representation is gap-fillable based on a depth bias that is proportional to a frustum height, inversely proportional to a vertical screen resolution and associated with the pixel” fails to comply with the written description requirement, as it constitutes new matter. ¶ [0012] and ¶ [0020] disclose that “… embodiments of the method/system may include that the depth bias is based at least in part on a frustrum height and a vertical screen resolution.” The Examiner notes that these two paragraphs are the only two mentions of these two claim terms in the written specification. Based solely on the written specification, the Examiner asserts that the amended claim language constitutes new matter.
Allowable Subject Matter
Claims 1-3, 7-11, and 15-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claims 1 and 9, the prior art of record does not teach, suggest, or disclose the claim limitation “determining whether a pixel in the graphical representation is gap-fillable based on a depth bias that is proportional to a frustum height, inversely proportional to a vertical screen resolution and associated with the pixel” in combination with the other recited claim limitations.
Conclusion
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 JONATHAN M COFINO whose telephone number is (303) 297-4268. The examiner can normally be reached Monday-Friday 10A-4P MT.
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, Kent Chang can be reached at 571-272-7667. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M COFINO/ Examiner, Art Unit 2614
/KENT W CHANG/ Supervisory Patent Examiner, Art Unit 2614
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