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 .
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 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.
DETAILED ACTION
Response to Arguments
In response to the rejections, applicant submitted a declaration under 37 CFR 1.132 to overcome the rejections under 35 USC 112(a) and (b).
The examiner has reviewed the declaration and does not find the declaration persuasive for several reasons. First, in paragraph 5, the declarant sets out the credentials that they feel represents one of ordinary skill in the art. However, the declarant does not set forth any facts indicating that the declarant has said credentials. Therefore, it is unclear if the declarant is qualified to evaluate what one of ordinary skill in the art would understand.
Second, although the declarant has cited to two references purporting to show that one of ordinary skill in the art would understand that the specified level is measured from black, that is black represents 0% and white represents 100%. However, the Gonzalez reference does not discuss whether the specified level is measured from black or white. The relevant passage merely discusses the intensity or grey level, but does not discuss from which it is measured. The Li reference, on the other hand, discloses that a pixel value of 0 designates black and a value of 255 represents white. However, Li is devoid of any context as to the whether that applies to the software at discussed in Li or that it is how one of ordinary skill in the art would consider how greyscale is always measured. Neither reference, therefore, demonstrates how one of ordinary skill in the art would inherently understand that measuring greyscale is from black to white.
Third, the Xu reference does not provide any evidence that a grey scale value on the imaging screen exceeding 70% would be understood by one of ordinary skill in the art to be that the average of all pixels on the imaging screen exceeds 70% white. In fact, the highlighted portion of Xu does not even address grey scale value on the imaging screen or how it is determined. It merely provides a definition as to how Xu defined variables in their research.
Fourth, it appears that applicant would have the examiner interpret the disclosure as the average of all the pixels on the imaging screen exceed 70% white value. However, the specification merely states “based on a grey scale value on the imaging screen exceeding 70%.” To insert applicant’s interpretation into the specification would amount to adding new matter. Moreover, that does not address the claim language that claims an arbitrary threshold or how that threshold is determined. As the examiner noted, the “70%” language is the only disclosure made by applicant.
Lastly, even if the examiner were to accept applicant’s declarations as sufficient, that still fails to demonstrate possession of the full scope of the invention or demonstrate that the inventor had such an understanding at the time of invention. The declarant does not appear to be the applicant and does not attest as to what the inventor understood at the time of invention.
Therefore the declaration is determined to be insufficient to overcome the rejections and those rejections are maintained.
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.
Claim 1-10 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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. In particular, independent claim 1 recites “based on a value of a grey scale on the imaging screen exceeding a specified level, determine that examination is over and transmit a signal to the ultrasound device to request that the imaging be terminated.” The specification describes in paragraphs 58 that “the processor may determine that the examination is over based on a grey scale value on the imaging screen exceeding 70%.” Paragraph 75 of the specification reorders the phrasing, but the meaning is not changed.
This fails to demonstrate that applicant had possession of the invention as the disclosure does not describe how to determine a grey scale value on the imaging screen exceeds 70%. As an initial matter, does the 70% measure from white or black (e.g. 0% is black or 0% is white)? Next, does one pixel of the screen have to exceed 70%, the average of all the pixels, 70% of the pixels exceed some other arbitrary value? The specification does not provide any details as to how this 70% threshold is achieved. Further, to the extent that applicant is claiming some other threshold as in the claim, applicant does not provide any details as to how that threshold would be determined. Therefore, it is not clear that applicant has possession of the invention as claimed.
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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, independent claim 1 recites “based on a value of a grey scale on the imaging screen exceeding a specified level, determine that examination is over and transmit a signal to the ultrasound device to request that the imaging be terminated.” This claim is not enabled based upon the disclosure as analyzed by the following factors:
(A) The breadth of the claims. The claims are broad and mere recite exceeding a specified level.
(B) The nature of the invention. The invention is computer based, but does not have much bearing on the analysis.
(C) The state of the prior art. The prior art does not appear to recognize a value of the imaging screen exceeding a specified level to determine that an examination is over.
(D) The level of one of ordinary skill. The level of one of ordinary skill is likely one with computer science or engineering experience, without specialized knowledge in interpretation of ultrasound images.
(E) The level of predictability in the art. It is assumed that the art is reasonably predictable.
(F) The amount of direction provided by the inventor. The only direction provided by the inventor is a statement that “the processor may determine that the examination is over based on a grey scale value on the imaging screen exceeding 70%.” As explained in the 112a rejection with respect to possession, the disclosure is insufficient to provide direction.
(G) The existence of working examples. There do not appear to be working examples.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Given the large amount of possibilities as to the threshold and how to properly determine the threshold, one of ordinary skill would require significant experimentation in order to make or use the invention.
Thus, based on the factors above, the examiner has determined that the claims include subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
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 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.
Claim 1 recites “based on a value of a grey scale on the imaging screen exceeding a specified level, determine that examination is over and transmit a signal to the ultrasound device to request that the imaging be terminated.” The specification describes in paragraphs 58 that “the processor may determine that the examination is over based on a grey scale value on the imaging screen exceeding 70%.” Paragraph 75 of the specification reorders the phrasing, but the meaning is not changed.
The disclosure does not describe how to determine a grey scale value on the imaging screen exceeds 70%. As an initial matter, does the 70% measure from white or black (e.g. 0% is black or 0% is white)? Next, does one pixel of the screen have to exceed 70%, the average of all the pixels, 70% of the pixels exceed some other arbitrary value? The specification does not provide any details as to how this 70% threshold is achieved. Further, to the extent that applicant is claiming some other threshold as in the claim, applicant does not provide any details as to how that threshold would be determined. Therefore, the language is indefinite.
Conclusion
THIS ACTION IS MADE FINAL. 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 Ming Shui whose telephone number is (303)297-4247. The examiner can normally be reached on 7-5 Pacific Time, M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Morse can be reached on 571-272-38383838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ming Shui/
Primary Examiner, Art Unit 2663
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