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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/06/2026 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 1-4, 6-14, 18-21 and 95-99 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. Claim 1 is rejected because the specification, as originally filed, fails to support the open ended MxM matrix size (e.g. where M is any number greater than 3) as now claimed.
Claim Rejections - 35 USC § 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 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) 1-4 and 6-14, 18-21 and 95 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB 2528283 to Kimpe in view of NPL “Image Based Transfer Functions Design for Data Exploration in Volume Visualization” to Fang et al. “Fang” and U.S. Publication No. 2015/0105283 to Weiss et al. “Weiss”.
With respect to Claims 1-4 and 13, Kimpe discloses a method of visualizing and characterizing a feature in an image (e.g. CT, PET, ultrasound, MRI image) comprising steps of receiving an image, applying a non-linear discontinuous transfer function to the first image to produce a second image that is separate and distinct from the first image (Abstract; Page 2, Lines 1-33; Page 9, Lines 25-33, Page 10, Lines 1-30, Page 13, Lines 19-30). Examiner notes that the color look up table applied to the image based on the non-linear discontinuous trajectory though the color space would read on one or more non-linear discontinuous transfer functions as claimed and that by applying the non-linear, discontinuous transfer function as described above, Kimpe is considered to read on applying a “local micro-contrast convergence algorithm” in its broadest reasonable interpretation. Examiner notes that by applying the non-linear, discontinuous transfer function as described above, Kimpe is considered to read on applying a “local micro-contrast convergence algorithm” in its broadest reasonable interpretation. Furthermore, the use of the aforementioned transformation would result in neighboring pixels aggregating into predefined color and luminosity patterns in its broadest reasonable interpretation.
However, it is not clear if Kimpe repeats this process to create additional images (e.g. sequential set of intermediate images) as claimed. Kimpe also does not appear to apply an MxM filter (where M is 3 or more) as part of an iterative sequence.
Fang teaches from within a similar field of endeavor with respect to image processing where transfer functions are applied iteratively to provide better and more meaningful visualization results (Abstract; Fig.1 and corresponding descriptions) and makes the search and navigation of the transfer function space more user friendly and initiative (Page 2, Left Column).
Accordingly, one skilled in the art would have been motivated to have repeated Kimpe’s transformations any number of times to create a sequence of intermediate images in order to provide better and more meaningful visualization results according to the user’s preference as described by Fang. Such a modification merely involves combining prior art elements according to known techniques to yield predictable result (MPEP 2143).
Regarding the filter, Weiss teaches from within a similar field of endeavor with respect to biological imaging diagnosis systems and methods (Abstract) and particularly with respect to transforming images into different color spaces (Paragraph [0216]) where a convolution filter (e.g. 3x3 matrix) is used to sharpen the image (Paragraph [0213]).
Accordingly, one skilled in the art would have been motivated to have further modified the iterative color transform algorithm described by Kimpe and Fang to use a convolution filter as described by Weiss in order to give output images a crisper appearance with sharper edges and more visible fine details (Weiss-Paragraph [0213]). Such a modification merely involves combining prior art elements according to known techniques to yield predictable result (MPEP 2143).
As for Claims 6-12, Kimpe discloses where the transformation may include a grey scale or color scale (Pages 27-28).
Regarding Claims 14, Kimpe explains that the color transformations may be used to quantify a concentration of a molecule, tracer, substance, target molecule, molecular activity, stiffness of a material, strength of a material, characteristics of a material, biomarker value, etc. (Page 6).
With respect to Claims 18-21, Examiner notes that the claim limitations fail to impose any additional steps on the method and thus, the aforementioned transfer functions would appear to result in the claimed false positive/negative rates in its broadest reasonable interpretation.
As for Claim 95, Kimpe discloses a method of visualizing and characterizing at least one feature in an image by applying color lookup tables to at least one image and where the color look up tables may include only points of a primary color (Page 6).
Claim(s) 14, 18-21 and 95-99 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimpe, Fang and Weiss as applied to claim 1 above, and further in view of NPL “APVS Research Indicates that BCDxTM Breast Cancer Detection Technology Routinely Diagnoses Ductal Carcinoma in Situ” to Ramsay.
As for Claims 14 and 95-99, while Kimpe, Fang and Weiss disclose for visualizing and characterizing a features in an image as described above. Kimpe discloses visualizing and characterizing at least one feature in an image by applying color lookup tables to at least one image and where the color look up tables may include only points of a primary color (Page 6). While Kimpe explains that the image processing steps described above can aid in detect cancer, Kimpe and Fang does not specify the type of cancer.
Ramsay teaches from within a similar field of endeavor where image transformations are applied to a mammogram image generate enhanced observations of the underlying breast tissue such that subtle changes at the cellular level are exposed thereby rendering conditions such as Atypical Hyperplasia and DCIS visible to the human eye (Page 2). Ramsay explains that the color mapping algorithm results in displaying areas appearing as islands outlined in green showing the structure and growth pattern of cancer (Pages 3-4). Accordingly, one skilled in the art would have been motivated to have utilized the image transformations described by Kimpe, Fang and Weiss on mammograms as described by Ramsay in order to enhance the visualization of features in anatomical images.
With respect to Claims 18-21, Examiner notes that the claim limitations fail to impose any additional steps on the method and thus, the aforementioned transfer functions would appear to result in the claimed false positive/negative rates in its broadest reasonable interpretation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-14, 18-21 and 95-99 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,734,911. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a method of visualizing and characterizing features in images including a step of applying a first local micro-contrast convergence algorithm to produce multiple images. The presently pending claims represent an obvious broadening of the patented method(s).
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but are moot in view of the updated grounds of rejection necessitated by amendment. New 35 U.S.C. 112 rejections necessitated by amendment. Double Patenting Rejections have been maintained because the terminal disclaimer has not been reviewed at the time of mailing this office action. Examiner will address Applicant’s arguments which may still pertain to the current rejection. For example, Applicant argues “repeating a pointwise function does not transform it into a neighborhood based spatial algorithm” (REMARKS, Page 2). Examiner notes the argument is not commensurate with the scope of the claim as the claim fails to disclose a neighborhood based spatial algorithm. The functional language of “to cause relationships among neighboring pixel groups to aggregate into predefined color and luminosity patterns” is the result of iteratively applying a micro-contrast conversion algorithm and an MxM filter which is taught by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 7,574,335 to Estrada which teaches iteratively applying transfer functions to an image to adjust color information in the image (Column 4, Lines 25-45; Claims 1 and 16 for example).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER L COOK whose telephone number is (571)270-7373. The examiner can normally be reached M-F approximately 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Kozak can be reached on 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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/CHRISTOPHER L COOK/Primary Examiner, Art Unit 3797
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