DETAILED ACTION
Election/Restrictions
Claims 6-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 7, 2026.
Claims 1-20 are pending, with claims 6-16 withdrawn from consideration and claims 1-5 and 17-20 remaining under consideration.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 7, 2023, and July 14, 2025, are being considered by the examiner.
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 following title is suggested: EVALUATION OF DAMAGE DETERMINATION RESULTS FOR USER REVIEW.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
the image acquisition unit of claim 1,
the degree-of-damage determination unit of claim 1,
the prior information acquisition unit of claim 1,
the result determination unit of claim 1, and
the output generation unit of claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is directed to a “storage medium,” which is a type of machine-readable media whose broadest reasonable interpretation (BRI) “can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se.” MPEP 2106.03, Subsection II. “A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter.” Id.
Examiner suggests amending claim 20 to recite “A non-transitory storage medium …”.
Claims 1-5 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea judicial exception without significantly more.
The patent subject matter eligibility (SME) test includes multiple steps, sub-steps, and prongs and is described in MPEP 2106.
Step 1
Claims 1-5 and 17-18 are to a machine and/or manufacture. Claim 19 is to a process. These claims all pass Step 1 of the SME.
As explained above, the scope of claim 20 encompasses embodiments that are not a process, machine, manufacture or composition of matter, so claim 20 does not pass Step 1 of the SME. Nevertheless, the analysis of claim 20 proceeds through the rest of the SME. See MPEP 2106.03, Subsection II.
Step 2A, Prong One
Claim 1 recites “an image acquisition unit configured to acquire an image of a determination target.” The scope of this limitation encompasses embodiments within the mental processes group of abstract ideas. MPEP 2106.04(a)(2), Subsection III. A human can look at an object (e.g., a determination target) and determine a mental image of it. I.e., a human can see physical objects.
Claim 1 recites “a degree-of-damage determination unit configured to determine a degree of damage of the determination target from the image of the determination target.” The scope of this limitation also encompasses embodiments within the mental processes group of abstract ideas. A human can view an object (i.e., a determination target) and determine a degree of damage. For example, a human could look at a bolt on a bridge and mentally recognize that it is severely damaged due to corrosion. A human could similarly look at another bolt and mentally determine that it is only moderately damaged by corrosion. Note that even if the “unit” is interpreted to be implemented by a computer, this does not preclude the claim from reciting a mental process. Id. at further subsection C.
Claim 1 recites “a prior information acquisition unit configured to acquire at least one of prior information about determination by the degree-of-damage determination unit and prior information about the determination target.” The scope of this limitation also encompasses embodiments within the mental processes group of abstract ideas. For example, a human could remember information such as a threshold or other rule for determining whether a degree of damage requires further review or a degree of damage that they previously determined for a particular target object (e.g., a particular bolt in the example above). In another example, a human could read such information from a piece of paper. Note that a mental process may be performed with the use of a physical aid. Id. at further subsection B.
Claim 1 further recites “a result determination unit configured to determine whether a user of an output device needs to check the determination result by comparing the determination result from the degree-of-damage determination unit with the at least one prior information.” The scope of this limitation also encompasses embodiments within the mental processes group of abstract ideas. For example, a human could mentally compare their current judgement about the degree of damage of a particular target to prior information and make a decision. For example, a mental thought of “I think this bolt has a high degree of damage, but it’s not that rusty so it could also be considered only moderately damaged. The difference in likelihoods for each of these degrees of damage isn’t that great, so I should flag this for further review.”
Claim 1 further recites “an output generation unit configured to generate, in a case where the result determination unit determines that the user needs to check the determination result, auxiliary information to assist the user in checking based on the compared information, and output the auxiliary information to the output device.” The scope of this limitation also encompasses embodiments within the mental processes group of abstract ideas. For example, a human could write a message on a piece of paper indicating that a certain determination result needs to be checked. For example, a note reading “Please check the left bolt on the upper beam because I am unsure whether it should be considered highly or moderately damaged.”
Claims 19 and 20 recite substantially the same limitations.
Claims 2 and 3 recite outputting a likelihood of a plurality of degrees of damage, which can also be performed mentally. For example, a person can mentally determine, using their judgement, a 70% likelihood that a bolt is heavily damaged, a 25% likelihood that the bolt is moderately damaged, and a 5% chance that the bolt is undamaged.
Claims 2 and 3 recite comparing a threshold to the difference in likelihoods of different degrees of damage to a threshold, which can also be performed mentally. For example, following the example discussed above, a person could mentally calculate that the difference in likelihood between the heavy and moderate degrees of damage is 45% and compare that to a threshold, such as by determining that 45% is less than a threshold of 60%.
Claims 4, 5, 17, and 18 recite outputting information that could be performed mentally, such as by writing the information/messages down on a piece of paper.
Claims 17 and 18 recite acquiring and determining degrees of damage for multiple images, which could also be performed mentally for the reasons discussed above with respect to claim 1.
Examiner notes that the claims can be seen as collecting information (i.e., acquiring an image and prior information), analyzing it (i.e., determining a degree of damage and whether it needs to be checked), and displaying certain results of the collection and analysis (i.e., generating and outputting auxiliary information) recited at a high level of generality, which is a type of claim previously recognized as reciting a mental process abstract idea. MPEP 2106.04(a)(2), Subsection III.A, citing to Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016).
Step 2A, Prong Two
The claims do not integrate the abstract idea into a practical application because none of the additional elements in the claims go beyond:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
As shown above, almost all of the claim limitations are directed to an abstract idea – i.e., they are not additional limitations.
Some claims do require computer implementation. For example, claim 1 recites “units” interpreted under 35 U.S.C. 112(f) that have a computer as corresponding structure (see Claim Interpretation above and mapping in the ‘102 rejection of claim 1 below) and claim 20 recites a program and a computer. These limitations amount to a requirement that the abstract idea is implemented on a generic computer, but such a limitation “does not integrate the abstract idea into a practical application in Step 2A Prong Two or add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.” MPEP 2106.05(f).
The claims also describe determining a degree of damage, which can be seen as merely linking the use of a judicial exception to a particular technological environment or field of use – i.e., the field of use of damage evaluation, as opposed to other types of image classification uses. This is similar to “Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid,” which is an example of limitations that the courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception. MPEP 2106.05(h), example vi.
Step 2B
The identification of additional elements and the conclusions from step 2A, Prong Two, are carried over to step 2B. MPEP 2106.05, Subsection III. No additional elements or combinations of elements were considered to be insignificant extra-solution activity. As discussed above, all of the additional elements of the claims amount to merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; or generally linking the use of a judicial exception to a particular technological environment or field of use, none of which is significantly more than an abstract idea.
Conclusion
Claims 1-5 and 17-20 are patent-ineligible under 35 U.S.C. 101 at least because they are directed to an abstract idea and do not recite additional elements that integrate the abstract idea into a judicial exception or amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ‘Asbag’ (US 2019/0095800 A1).
Regarding claim 1, Asbag discloses an information processing apparatus (e.g., Fig. 1) comprising:
an image acquisition unit (Examiner notes that this is one of several “units” recited in the claim, each of which is interpreted under 35 U.S.C. 112(f) – see Claim Interpretation above; The corresponding structure of these units includes a computer configured to perform their functions – see, e.g., [0031] et seq., [0104], and Figs. 1-2 of the published specification; Asbag discloses computer implementation of its various processing unit functions – see, e.g., [0034]; Accordingly, Asbag discloses structure that falls within the scope of the claimed units; This mapping applies to all the units of claim 1, but is not repeated for brevity) configured to acquire an image of a determination target (e.g., [0029], [0039], inspection images of an object are acquired);
a degree-of-damage determination unit configured to determine a degree of damage of the determination target from the image of the determination target (e.g., [0068], object being inspected is classified into one of multiple possible classes/degrees of defects/damage; Note that, in a non-limiting example, each class could be seen as corresponding to a separate binary degree of damage – i.e., a yes or no degree of damage for each of multiple types of damage);
a prior information acquisition unit configured to acquire at least one of prior information about determination by the degree-of-damage determination unit (e.g., [0070], the predetermined difference threshold is acquired for use in selecting defects) and prior information about the determination target;
a result determination unit configured to determine whether a user of an output device needs to check the determination result (e.g., [0069], [0077], certain defect classifications are selected for user review/checking via GUI 120) by comparing the determination result from the degree-of-damage determination unit with the at least one prior information (e.g., [0070], if the difference between highest and second-highest confidence values output by the classifier is less than the predetermined difference threshold, then the defect is considered ambiguous and determined to need a user check); and
an output generation unit configured to generate, in a case where the result determination unit determines that the user needs to check the determination result, auxiliary information to assist the user in checking based on the compared information, and output the auxiliary information to the output device (e.g., [0077] et seq., Fig. 4, various auxiliary information is generated and output via GUI 120 to assist the user in checking, such as information about what class was assigned, examples of other images in that class, etc.).
Regarding claim 2, Asbag discloses the information processing apparatus according to Claim 1,
wherein the degree-of-damage determination units outputs a likelihood of a plurality of degrees of damage as the determination result (e.g., [0068], “Classification can be implemented by examining the association of a defect with each of the classes, thus determining a plurality of confidence levels, each indicating a confidence degree that the defect is indeed associated with that class”; The confidence degree is within the scope of a likelihood; Also see, e.g., [0048]),
wherein the prior information acquisition unit acquires, as the prior information about the determination by the degree-of-damage determination unit, information indicating a threshold for a likelihood difference between two degrees of damage among the plurality of degrees of damage (the “predetermined difference” in [0070]), and
wherein, in a case where one of the two degrees of damage indicates a highest likelihood and the likelihood difference between the two degrees of damage is compared with the threshold and less than or equal to the threshold, the result determination unit determines that the user needs to check the determination result ([0070], the highest and second-highest confidence levels are considered ambiguous and requiring user review if they “differ by at most a predetermined difference” – i.e., if the difference is less than or equal to the predetermined difference threshold, then the classification is ambiguous and needs a user check).
Regarding claim 3, Asbag discloses the information processing apparatus according to Claim 1,
wherein the degree-of-damage determination unit outputs a likelihood of a plurality of degrees of damage as the determination result (e.g., [0068], “Classification can be implemented by examining the association of a defect with each of the classes, thus determining a plurality of confidence levels, each indicating a confidence degree that the defect is indeed associated with that class”; The confidence degree is within the scope of a likelihood; Also see, e.g., [0048]),
wherein the prior information acquisition unit acquires, as the prior information about the determination by the degree-of-damage determination unit, information indicating a predetermined boundary among boundaries of the plurality of degrees of damage ([0070], the boundary between the highest and second-highest is predetermined as the boundary to which the difference threshold test should be applied) and a threshold for a likelihood difference between two degrees of damage adjacent to the predetermined boundary ([0070], the “predetermined difference”), and
wherein in a case where one of the two degrees of damage indicates a highest likelihood and the likelihood difference between the two degrees of damage is compared with the threshold and less than or equal to the threshold, the result determination unit determines that the user needs to check the determination result ([0070], the highest and second-highest confidence levels are considered ambiguous and requiring user review if they “differ by at most a predetermined difference” – i.e., if the difference is less than or equal to the predetermined difference threshold, then the classification is ambiguous and needs a user check).
Regarding claim 4, Asbag discloses the information processing apparatus according to Claim 3, wherein the output generation unit generates information indicating the two degrees of damage adjacent to the boundary and likelihoods of the two degrees of damage, and outputs the generated information (e.g., [0077], [0083], ordered display of classes with highest and second-highest likelihoods of degrees of damage).
Regarding claim 5, Asbag discloses the information processing apparatus according to Claim 2, wherein the output generation unit generates information to present a message indicating that the determination result is unclear, and outputs the generated information (e.g., Fig. 4, [0069], et seq., GUI 120 presents an image and requests review of the classification, which is a message that the classification/determination result is unclear/ambiguous; I.e., the presentation of a given image conveys to the user that the determination result is unclear as this is the reason it is presented in the first place).
Regarding claim 17, Asbag discloses the information processing apparatus according to Claim 1,
wherein the image acquisition unit acquires images of a plurality of determination targets (e.g., [0038], multiple target images are acquired),
wherein the degree-of-damage determination unit determines respective degrees of damage of the plurality of determination targets based on the images of the plurality of determination targets (e.g., [0068], all unclassified items/images are classified),
wherein, for each of the plurality of determination targets, the result determination unit determines whether the user needs to check the determination result (e.g., [0069]-[0070], a subset of classification/determination results is selected for user checking), and
wherein the output generation unit outputs auxiliary information to preferentially present a determination result determined to be required to be checked by the user by the result determination unit (e.g., [0077] et seq., Fig. 4, selected images – i.e., those required to be checked by the user – are preferentially presented for review; also see, e.g., [0080] and Fig. 4, image to be checked 400 is presented larger and at the top of the screen relative to example images 404, and for at least these reasons can be seen as being presented “preferentially”).
Regarding claim 18, Asbag discloses the information processing apparatus according to Claim 1,
wherein the image acquisition unit acquires images of a plurality of determination targets (e.g., [0038], multiple target images are acquired),
wherein the degree-of-damage determination unit determines respective degrees of damage of the plurality of determination targets based on the images of the plurality of determination targets (e.g., [0068], all unclassified items/images are classified),
wherein, for each of the plurality of determination targets, the result determination unit determines whether the user needs to check the determination result (e.g., [0069]-[0070], a subset of classification/determination results is selected for user checking), and
wherein the output generation unit outputs auxiliary information to present the determination result determined to be required to be checked by the user by the result determination unit by highlighting the determination result (e.g., Fig. 4, [0077], “The suggested class may be displayed”; note that the suggested class is the determination result determined to be required to be checked by the user and it is highlighted by displaying it; Fig. 4 shows the class as the number “12” surrounded by a highlighting box; Fig. 3 similarly shows the class as the number “14” surrounded by a highlighting box).
Regarding claim 19, Examiner notes that the claim recites a method that is substantially the same as the method performed by the apparatus of claim 1. Asbag discloses the apparatus of claim 1 (see above). Accordingly, claim 19 is also rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asbag for substantially the same reasons as claim 1.
Regarding claim 20, Examiner notes that the claim recites a storage medium storing a program for causing a computer to execute steps that are substantially the same as steps performed by the apparatus of claim 1. Asbag discloses the apparatus of claim 1 (see above). Asbag also teaches implementing the steps performed by its apparatus as a storage medium storing a program for causing a computer to execute the steps (see mapping for claim 1 and [0034]). Accordingly, claim 20 is also rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asbag for substantially the same reasons as claim 1.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
‘Bukowski’ (“Decision Confidence Assessment in Multi-Class Classification,” 1 June 2021)
Classifies an image of a hole as having been drilled with a bit having low, medium, or high wear (the degree of wear being proportionate to an amount of damage to the drilled hole) – e.g., Figs. 1-2
Calculates a confidence in the classification and applies a threshold, with images having a confidence below the threshold being flagged as uncertain to be further reviewed by human experts – e.g., Sections 2.3 and 3
‘Ci’ (“Assessment of the Degree of Building Damage Caused by Disaster Using Convolutional Neural Networks in Combination with Ordinal Regression,” 2019)
Approaches building damage classification as an ordinal regression problem – e.g., Sec. 3.2
Classifier predicts not only the probability of each class, but also the probability that the class exceeds each of several boundaries – e.g., Fig. 4 and Sec. 4.2
‘Modarres’ (“Convolutional neural networks for automated damage recognition and damage type identification,” 2018)
Example of using a neural network for concrete bridge damage classification
‘Mondal’ (“Deep learning-based multi-class damage detection for autonomous post-disaster reconnaissance,” 2020)
Example of using a neural network for natural disaster building damage classification
‘Popov’ (US 2022/0358753 A1)
Compares a current damage degree determination to a prior one and determines whether a vehicle should be further checked based on the result – Fig. 5
‘Varga’ (US 2021/0142456 A1)
Predicts probability that an element is good/undamaged or bad/damaged
If the probability of good/undamaged is less than 95%, then it is flagged to be checked by a user – e.g., Fig. 6
Note that the sum of good and bad probabilities is 100% ([0091]), so the threshold test applied at step 640 is mathematically equivalent to testing whether the difference between the good and bad damage degree probabilities is less than 90%
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEOFFREY E SUMMERS whose telephone number is (571)272-9915. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM ET.
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/GEOFFREY E SUMMERS/Examiner, Art Unit 2669