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 .
Response to Amendments
The amendments to the claims filed on 01/13/2026 have been acknowledged accepted and entered. Previously claims 1 – 20 were pending, claims 4 – 7, 11, and 12 have been withdrawn and now claims 1 – 3, 8 – 10, and 13 – 20 are still currently pending.
Response to Arguments
Claims 4 – 7, 11, and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/13/2026.
Applicant's election with traverse of 18/549,173 in the reply filed on 01/13/2026 is acknowledged. The traversal is on the ground(s) of U.S. restriction practice and the need for presentation of a serious burden on the Examiner in order to require a restriction. Furthermore, The applicant states that no clear distinction between the groups of claims is established This is not found persuasive because the applicant fails to address their arguments towards the correct statues being lack of unity as presented in the previous correspondence; and because as stated in the previous correspondence the first group of claims represented by claims 1 – 3, 8 – 10, and 13 – 20, is drawn to an image similarity method performing image normalization, wherein the normalization of an image is performed before rating similarity, whereas the second group of claims represented by claims 4 – 7, 11, and 12 is drawn to a pixel based image similarity method based on pixels’ color code value set, wherein these two groups do not share a general inventive concept as they have differing technical features.
The requirement is still deemed proper and is therefore made FINAL.
Please see MPEP sections 1893.03(d) and 1875 for further guidance on lack of unity.
Claim Interpretation
Claim 1 is a method claim that includes the contingent step, “if image width is less than image height rotate the image 90 degrees to obtain a horizontal orientated digital image”. A contingent step, when present in a method claim only, (the following does not apply to product claims, such as machines and manufactures), creates two or more process pathways within the claim based on the claimed conditions, and when the conditions of one contingent path/step is satisfied by the prior art, the other path/step is no longer required of the prior art.
Quoting Ex parte RANDAL C. SCHULHAUSER, UNITED STATES PATENT AND TRADEMARK OFFICE, BEFORE THE PATENT TRIAL AND APPEAL BOARD, Precedential decision of 04/28/2016, “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed” at decision page 10, “the broadest reasonable interpretation of claim 1 includes an instance in which the step of "determining the current activity level of the subject" and the remaining steps based thereon do not take place. Thus, under the broadest reasonable interpretation, the step of "comparing the respiration data with a threshold respiration criteria for indicating a strong likelihood of a cardiac event if the current activity level is below a threshold activity level" recited in claim 8 is not necessarily performed” at decision page 11.
In the case of claim 1, the prior art Liu et al. teaches “check whether image width is less than image height” and provides a result wherein the image width is greater than the image height. It is interpreted by the Examiner that this first “if” statement only applies to a process step of rotating the image 90 degrees and performing the processing (i.e. the 1st two claim limitations). The rest of the claim limitations are not contingent on the comparison of the width to height, as these steps occur whether or not the width is larger/smaller than the height. See MPEP section 2111.04 for further guidance.
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 19 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because signals per se and computer programs do not fall into one of the four categories of statutory invention (machine, process, manufacture, composition). More specifically, claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. 208 (2014).
Regarding claim 19, the claim is drawn towards a “computer program”. As described in MPEP § 2106, computer programs do not fall into one of the four statutory categories. Therefore, since claim 19 is drawn towards a computer program, the claim is not eligible for patent protection.
Regarding claim 20, the claim is drawn towards a “computer-readable medium”. The examiner notes that the specification fails to describe what can and cannot be considered the “computer-readable medium”, and therefore the “computer-readable medium” could be signals per se which does not fall into one of the four statutory categories as described in MPEP § 2106. Therefore, since claim 20 is drawn towards signals per se, the claim is not eligible for patent protection.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1 – 3, 8 – 10, and 13 – 20 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.
7. Regarding claim 1, the claim states “resize the horizontal oriented digital image …”, in line 5 of the claim, and then recites in the following limitation in line 7, “pixelate the digital image…”. It is unclear if this “digital image”, in line 7, is referring to the “horizontal oriented digital image” from the previous limitation in line 5, or to the original digital image referenced in line 2. As the language for the claim introduces uncertainty as to which digital image is being pixelated, the claim is therefore rejected for failing to particularly point out and distinctly claim the subject matter of the claimed invention.
8. Regarding claim 15 the claim recites “an image with addition or elimination of one or more elements such as text or signs” in lines 2 and 3 of the claim. The use of “such as” introduces exemplary language making it unclear as to what the boundaries of the word “elements” are in the claim. Therefore, as the claim limitation is ambiguous due to the use of “such as”, the claim fails to particularly point out and distinctly claim the subject matter of the claimed invention.
9. Regarding claim 16 the claim recites “for the verification of the uniqueness of an image, such as a digital image” in line 2 of the claim. The use of “such as” introduces exemplary language making it unclear as to what the boundaries of the word “image” are in the claim. Therefore, as the claim limitation is ambiguous due to the use of “such as” the claim fails to particularly point out and distinctly claim the subject matter of the claimed invention.
10. Regarding claim 19, the claim uses the term “the computer” in the claim. There is insufficient antecedent basis for this limitation in the claim as it is the first time the term is used and has no previous explanation or structure associated with it. Therefore, the claim is rejected for lack of antecedent basis and for failing to particularly point out and distinctly claim the subject matter of the claimed invention.
11. Regarding claim 20, the claim uses the term “the computer” in the claim. There is insufficient antecedent basis for this limitation in the claim as it is the first time the term is used and has no previous explanation or structure associated with it. Therefore, the claim is rejected for lack of antecedent basis and for failing to particularly point out and distinctly claim the subject matter of the claimed invention.
Claims 2, 3, 8 – 10, and 13, 14, 17, and 18 are rejected based on their dependency to claim 1.
Allowable Subject Matter
26. Claim 1 would be allowable if rewritten to overcome the rejection under 35 U.S.C. § 112(b) regarding the unclear language present in the claim.
27. The following is a statement of reasons for the indications of allowable subject matter:
Regarding claim 1, the reason for the indication of allowable subject matter is that the claim fails to teach or reasonably suggest: A method for quantitatively rating the degree of similarity between two digital images, comprising the following steps for each of the digital images: - check whether image width is less than image height, if image width is less than image height rotate image 90 degrees to obtain a horizontal orientated digital image, - resize the horizontal orientated digital image to a resized digital image having a certain fixed size and number of pixels, - pixelate the digital image to pixels of a fixed size to obtain a pixilated image with an average color of each pixelated area, - calculate total pixel values of the pixelated image top row and calculate total pixel values of the pixelated image bottom row, - compare the total pixel value of the top row with the total pixel value of the pixilated image bottom row, if the total pixel value of pixilated image the top row is less than the total pixel value of the pixilated image bottom row, then rotate the pixilated image 180 degrees; If the total pixel value of the pixilated image top row is equal to total pixel value of the pixilated image bottom row, then proceed calculating the next row from top row and compare to next row from bottom row, if the total pixel value of the next row from top are equal to the total pixel value of the next row from bottom proceed with next rows until the centre row is reached, - calculate total pixel values of the pixelated image first column and calculate total pixel values of the pixelated image last column and compare the total pixel values; if the total pixel value of the pixilated image first-column is less than the total pixel value of the pixilated image last column value, then flip the pixilated image over its vertical axis; if the total pixel value of the pixilated image first-column value is equal to the total pixel value of the pixilated image last column value, then proceed calculating the total pixel value of the pixilated image next column from first column and compare to the total pixel value of the pixilated image next column from last column; if the total pixel value of the pixilated image next column from first column are equal to total pixel value of the pixilated image of the next column from last column proceed with next columns until centre column is reached, - read a pixel from each of the pixelated area in the pixilated image and calculate closest predefined color of each of the pixels read to obtain a pixel RGB, - convert each pixel RGB color to HEX value, - add each pixel HEX value to an image string representing the image pixel value, and - then calculate a hit-score as a percentage identity or homology between the image strings of the two digital images, said hit-score being the rating of the similarity between the two digital images.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEJANDRO HERNANDEZ whose telephone number is (703)756-1876. The examiner can normally be reached M-F 8 am - 5 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John M Villecco can be reached at (571) 272-7319. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEJANDRO HERNANDEZ/Examiner, Art Unit 2661
/JOHN VILLECCO/Supervisory Patent Examiner, Art Unit 2661