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 .
This Office Action is made in response to applicant’s amendment filed on 07/31/2024. Claims 1-15, 17, 20-22 and 25 are currently pending in the application. An action follows below:
Response to Arguments
Regarding to the issue 1 in the amendment, the “Notice to Applicants” section in the previous Office action dated 04/02/2025 is a mere suggestion. Although the Examiner has completely disagreed with the Applicant’s response, this Notice is not present in this Office action.
Regarding to the issue 2 in the amendment, the claim objections in the previous Office action have been withdrawn in light of the amendment to the claims.
Regarding to the issue 3 “Claim interpretation” in the amendment, Applicant’s arguments on pages 14-15 of the amendment have been fully considered but they are not persuasive because the Applicant has merely replied on the person skilled in the art without explicitly pointed out in the original disclosure the support for the physical structures of the limitations, "an image processing unit," "a neural network," "an input layer," "an output layer," "one or more hidden layers," and "heterodyne detection" that perform the claimed functions. For an instant, a review of the disclosure indicated on pages 14-15 of the amendment did not reveal any corresponding structures of "an image processing unit," "a neural network," "an input layer," "an output layer," "one or more hidden layers," and "heterodyne detection" that perform the claimed functions, specifically there is no where in the original disclosure explicitly disclosing (i) the image processing unit comprising or being a physical image processing system or a computer system; (ii) a neutral network/ input layer/ output layer/ hidden layers comprising a convention computer/ microprocessor, or the processing unit including transistors/switches/ and various other electronic components; and (iii) heterodyne detection comprising any physical element capable of performing the claimed function(s). Further, Applicant has relied on the person skilled in the art to assert heterodyne detection being a technique (see pages 13 and 15 of the amendment,) but has not pointed out where the original disclosure explicitly discloses the heterodyne detection or a technique comprising or being any physical element capable of performing the claimed function(s).
Regarding to the issue 4 “Rejections under 35 USC 112(b)” in the amendment, the rejections regarding to the terms lacking physical structures for performing the claimed function(s) are maintained for the same reasons in the above issue 3. The additional rejections based on insufficient antecedent basis of the limitations have been withdrawn in light of the amendment to the claims.
Regarding to the issue 5 “Rejections under 35 USC 112(a)” in the amendment, Applicant has amended claims and requested the withdrawal of the rejections on pages 16-18 of the amendment. The rejections in the previous Office action have been withdrawn in light of the amendment to claims. However, see the new ground of rejections made below.
Regarding to the issue 6 “Rejections of claims 1-15, 17, 20-22 and 25 under 35 USC 101” in the amendment, Applicant has amended claims and provided arguments which have been fully considered but they are not persuasive because these claims are rejected under 35 U.S.C. 101 as the claimed invention is directed to non-statutory subject matter, as not falling within one of the four statutory categories of invention (see the below rejection,) but not to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea,) specifically an abstract idea as argued by the Applicant. See the rejection in the previous Office action or the below rejection. Further, note that there is no response to the additional rejection of claim 25 in the previous Office action.
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 are "an image processing unit" of at least claims 1, 3-6, 20 and 22, "a neural network," "an input layer," "an output layer," and "one or more hidden layers" of at least claim 6, and "heterodyne detection" in at least claim 21.
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.
A review of the specification did not reveal any corresponding structures of "an image processing unit," "a neural network," "an input layer," "an output layer," "one or more hidden layers," and "heterodyne detection" that perform the claimed functions. The original disclosure, specifically the specification, simply recites the aforementioned features in a same way as the claims do.
If applicant wishes to provide an explanation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
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 1-15, 17, 20-22 and 25 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 pre-AIA the applicant regards as the invention.
As per claims 1-15, 17, 20-22 and 25, Applicant’s claims have been interpreted as invoking 35 USC 112 6th paragraph as per above discussion under section 35 USC 112(f). Claims 1-15, 17, 20-22 and 25 are indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, because the disclosure does not clearly specify the necessary corresponding structures of "an image processing unit" of at least claims 1, 3-6, 20 and 22, "a neural network," "an input layer," "an output layer," and "one or more hidden layers" of at least claim 6, and "heterodyne detection" in at least claim 21, that can be used to achieve the claimed functions.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-15, 17, 20-22 and 25 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Note that, in order to satisfy its burden under the written description requirement, a patent application must disclose the full scope of the claim. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.”.)
As per claim 1, this claim recites “a method of generating a label for use as a ground truth when training an image processing unit for use in optical imaging, the method comprising simulating an output of the image processing unit when imaging a training object by: for each spatial mode … the image processing unit” from the first line to the last line, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original disclosure does not explicitly disclose in detail “a method of generating a label for use as a ground truth when training an image processing unit for use in optical imaging.” Further, the original disclosure, specifically Fig. 4A and the corresponding specification, specifically ¶¶ 49, 135-148 of the corresponding US 2024/0212095 A1, discloses a method for generating labels for training data to train the neural network comprising steps 102-106, but this method does not comprise one or more steps/operations in the method of this claim. Moreover, see the above bolded note.
Accordingly, the original disclosure does not contain such description and details regarding to the above underlined limitations of this claim, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 2, 7-15, 17 and 25, these claims are therefore rejected for at least the reason set forth in claim 1.
In addition to claims 2, 7-15, 17 and 25, these claims further recite operations/functions of the method of generating a label for use as a ground truth when training an image processing unit for use in optical imaging, which were 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original disclosure, specifically Fig. 4A and the corresponding specification, specifically ¶¶ 49, 135-148 of the corresponding US 2024/0212095 A1, discloses a method for generating labels for training data to train the neural network comprising steps 102-106, but this method does not comprise one or more steps/operations in the method of these claims. Moreover, see the above bolded note.
Accordingly, the original disclosure does not contain such description and details regarding to the above underlined limitations of these claims, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claim 3, this claim recites “a method of training an image processing unit for use in optical imaging, the method comprising: … to the label” from the first line to the last line, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original disclosure does not explicitly disclose in detail “a method for training an image processing unit for use in optical imaging.” Further, the original disclosure, specifically Fig. 4A and the corresponding specification, specifically ¶¶ 49, 135-148 of the corresponding US 2024/0212095 A1, discloses a method for generating labels for training data to train the neural network comprising steps 102-106 and, specifically Fig. 4B and the corresponding specification, specifically ¶¶ 50, 149-155 of the corresponding US 2024/0212095 A1, discloses a method for generating the output from the neural network comprising steps 110-118, but both these methods do not comprise one or more steps/operations/functions in the method of this claim. Moreover, see the above bolded note.
Accordingly, the original disclosure does not contain such description and details regarding to the above underlined limitations of this claim, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 4-6 and 20-22, these claims are therefore rejected for at least the reason set forth in claim 3.
In addition to claims 4-6 and 20-22, these claims further recite operations/functions of the method for training an image processing unit for use in optical imaging, which were 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original disclosure does not explicitly disclose in detail “a method for training an image processing unit for use in optical imaging.” Further, the original disclosure, specifically Fig. 4A and the corresponding specification, specifically ¶¶ 49, 135-148 of the corresponding US 2024/0212095 A1, discloses a method for generating labels for training data to train the neural network comprising steps 102-106 and, specifically Fig. 4B and the corresponding specification, specifically ¶¶ 50, 149-155 of the corresponding US 2024/0212095 A1, discloses a method for generating the output from the neural network comprising steps 110-118, but both these methods do not comprise steps/operations/functions in the method of these claims. Moreover, see the above bolded note.
Accordingly, the original disclosure does not contain such description and details regarding to the above underlined limitations of these claims, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 1-15, 17, 20-22 and 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-15, 17, 20-22 and 25 are rejected under 35 U.S.C. 101 as not falling within one of the four statutory categories of invention. Supreme Court precedent1 and recent Federal Circuit decisions2 indicate that a statutory “process” under 35 U.S.C. 101 must (1) be tied to another statutory category (such as a particular apparatus), or (2) transform underlying subject matter (such as an article or material) to a different state or thing. While the instant claim(s) recite a series of steps or acts to be performed, the claim(s) neither transform underlying subject matter nor positively tie to another statutory category that accomplishes the claimed method steps, and therefore do not qualify as a statutory process. For example, the method of training an image processing unit for use in optical imaging, comprising steps of providing a training object; computing a plurality of theoretically expected signals generated by detecting the component of the electromagnetic field arriving from the object in each of a plurality of different spatial modes of light; and generating a reconstructed image based on the theoretically expected signals, wherein the reconstructed image is provided as a label for the training object for use in training the image processing unit, of claim 1, is of sufficient breadth that it would be reasonably interpreted as a series of steps completely performed mentally, verbally or without a machine. See In re Bilski.
The instant claims neither transform underlying subject matter nor positively tie to another statutory category that accomplishes the claimed method steps, and therefore do not qualify as a statutory process. In order for a process to be "tied" to another statutory category, the structure of another statutory category should be positively recited in a step or steps significant to the basic inventive concept, and NOT just in association with statements of intended use or purpose, insignificant pre or post solution activity, or implicitly.
In addition to claim 25, this claim is additionally rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. This claim defines “a machine-readable computer medium.” The broadest reasonable interpretation of the “claimed” machine-readable computer medium typically covers forms of transitory propagating signals per se in view of the ordinary and customary meaning of computer-readable media. See MPEP 2111.01. In other words, the claimed invention is directed to non-statutory subject matter, since it appears to recite a form of energy (signal(s) comprising machine-readable instructions,) per se, which is not currently deemed to fall into one of the four statutory classes of invention and would not enable the functionality of the program to be realized without further hardware, e.g., a transmitter, receiver, or transceiver circuit.
The examiner suggests amending the claim(s) to cover only statutory subject matter to avoid a rejection under 35 U.S.C. 101 by replacing "A machine-readable computer medium containing instructions which when read by a machine cause that machine" with -- A non-transitory machine-readable computer medium containing instructions, when executed by a machine, cause the machine -- so as to overcome this rejection and to be in compliance with the 35 U.S.C. 112 issue because reading the instructions does not cause the machine to perform the method or operation(s). Any amendment to the claim would be commensurate with its corresponding disclosure.
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 Jimmy H Nguyen whose telephone number is (571) 272-7675. The examiner can normally be reached on Monday-Friday 8:30AM-6PM.
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, Temesghen Ghebretinsae, can be reached at (571) 272-3017. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jimmy H Nguyen/
Primary Examiner, Art Unit 2626
1 Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S. 780, 787-88 (1876).
2 In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008).