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 .
Information Disclosure Statement
The Information Disclosure Statement filed on December 7, 2023 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Objections
Claims 1-7 are objected to because of the following informalities: the use of hyphens and claim containing more than one capital letter.
Claims 1 and 6 are objected to because the preambles are lacking an article (i.e. “a”). The Examiner reasonably believes this is a typographical error. For the purpose of examination, the claim will be interrupted as having their respective article. Appropriate correction is required. Claims 2-5 and 7 are also objected to based on their respective dependencies to claim 1 or 6.
Claims 1 and 4-7 are objected to because the limitations contain hyphens which makes the claims difficult to examine. For the purpose of examination, the Examiner will reasonably interpret the claim limitations without the hyphens. Appropriate correction is required. Claims 2-5 and 7 are also objected to based on their respective dependencies to claim 1 or 6.
Claims 2-5 and 7 are objected to because the claims contain more than one capital letter. Per MPEP 608.01(m), each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Appropriate correction is required. Claim 5 is also objected to based on its respective dependency to claim 4.
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 1-7 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “Method for generating a photorealistic rendering of a cosmetic product” (i.e. “a process”), and claim 6 is directed to “Computer program product” (i.e. “a process”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “generating a photorealistic rendering of a cosmetic product,” either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“- obtaining (10, 12) a reference image (Xref) of a real cosmetic product (PC) applied to a first person (P1) and at least one source image (Xsource) of a second person (P2),
- implementing (13) an encoding artificial neural network (E) configured to determine characterizing parameters (E(Xref)) of the cosmetic product (PC) from the reference image (Xref), and then
- implementing (14) a realistic physically based rendering engine (R) configured to generate a transformed image (R(Xsource,E(Xref))) in which a photorealistic rendering of the cosmetic product (PC) is applied to the person (P2) from said at least one source image (Xsource) based on the characterizing parameters (E(Xref)) of the cosmetic product (PC) that are determined by the encoding artificial neural network (E).”
Per claim 6:
“- obtain a reference image (Xref) of a real cosmetic product (PC) applied to a first person (P1) and at least one source image (Xsource) of a second person (P2),
- implement an encoding artificial neural network (E) configured to determine characterizing parameters (E(Xref)) of the cosmetic product (PC) from the reference image (Xref), and then
- implement a realistic physically based rendering engine (R) configured to generate a transformed image (R(Xsource,E(Xref))) in which a photorealistic rendering of the cosmetic product (PC) is applied to the person (P2) from said at least one source image (Xsource) based on the characterizing parameters (E(Xref)) of the cosmetic product (PC) that are determined by the encoding artificial neural network (E).”
These limitations simply describe a process of data gathering and manipulation, which is analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a memory,” “a processing unit,” “a photography device,” and “a screen,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “generating a photorealistic rendering of a cosmetic product,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a memory,” “a processing unit,” “a photography device,” and “a screen,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a memory,” “a processing unit,” “a photography device,” and “a screen,” as described in paras. [0116]-[0119] of the Applicant’s written description as originally filed, provides the following:
“[0116] The system SYS comprises a memory MEM storing a computer program PRG. This computer program PRG comprises instructions that, when the program is executed by a computer, prompt said computer to implement the method for generating a photorealistic rendering of a cosmetic product. A reference image is also stored in the memory MEM. This reference image shows a person to whom a cosmetic product is applied.”
“[0117] The system SYS also comprises a photography device APH configured to acquire at least one source image of a person. This source image may then be stored in the memory MEM.”
“[0118] The system SYS comprises a processing unit UT configured to implement the computer program stored in the memory. The processing unit UT is thereby configured to implement the rendering generation method as described above. The processing unit UT is thus configured to generate a transformed image in which a photorealistic rendering of the cosmetic product is applied to the person from the source image based on the reference image stored in memory MEM.
“[0119] The system furthermore comprises a screen ECR configured to display the transformed image.”
As such, “a memory,” “a processing unit,” “a photography device,” and “a screen,” is reasonably interpreted to be generic, well-known, and conventional data computing elements. Therefore, the Applicant’s own specification discloses ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-5 and 7 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-5 and 7 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1 or 6. Therefore, claims 1-7 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Claims 6 and 7 are further rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter.
In regards to claim 6, the claim only recites a plurality of software program steps. Specifically, claim 6 recites: “Computer program product comprising instructions that, when the program is executed by a computer, prompt said computer to…”
The claim is reasonably interpreted to be drawn to a computer program or software per se and are deemed to be non-statutory subject matter. As such, claim 6 is interpreted and deemed to be non-statutory subject matter. Therefore, claim 6 is further rejected under 35 U.S.C. §101 for failing to recite statutory subject matter. Claim 7 is also further rejected under 35 U.S.C. §101 for its dependency to claim 6.
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.
Claims 1-7 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are replete with indefinite recitations, inconsistent terminology, and generally confusing language that does not apprise the person of ordinary skill in the art what exactly it is that applicant intends to claim as their invention. Specifically, there are multiple instances within the claims wherein limitations are severely lacking uniformity and are repetitively inconsistent as to properly and precisely define the Applicant’s invention. For example, all of the reference numbers and reference characters make the claims difficult to examine. Listed below are further examples of such indefinite language. Due to the number and complexity of such instances, this list is merely representative and is not necessarily comprehensive. The Examiner respectfully requests the Applicant to amend the claims to clarify the language.
Claim 1 recites the limitation “the person.” The limitation “a first person,” and “a second person,” are originally introduced in claim 1. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the first person,” or “the second person”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitations of claim 1. Therefore, claim 1 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-5 are also rejected under 35 U.S.C. § 112(b), based on their respective dependencies to claim 1.
Claims 2-4 recite “Method,” in the preamble. The limitation is originally introduced in claim 1. As such, the subsequent limitations are either (1) not following antecedent basis (i.e. “The method”); or (2) are intended to be new limitations which ambiguously conflict with the previous limitation of claim 1. Therefore, claims 2-4 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 3 recites the limitations “the lips,” “the parameters of the vector,” and “the make-up product.” The limitations are not introduced in claim 1 or 3. As such, the limitations are lacking antecedent basis. Therefore, claim 3 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 recites the limitation “predefined characterizing parameters.” The limitation “characterizing parameters” is originally introduced in claim 1. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the characterizing parameters”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 1. Therefore, claim 4 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 4 recites the limitations “a cosmetic product,” “a source image,” “a person,” “a realistically physically based rendering engine,” “a transformed image.” These limitations are originally introduced in claim 1. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “[[a]] the cosmetic product,” “[[a]] the at least one source image,” either [[a]] the first person,” I or [[a]] the second person” “[[a]] the realistically physically based rendering engine,” “[[a]] the transformed image”); or (2) are intended to be new limitations which ambiguously conflict with the previous limitations of claim 1. Therefore, claim 4 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 4 recites the limitation “implementing (32, 42) a realistic physically based rendering engine (R) according to one of Claims 1 to 3…” Specifically, it is unclear as to which claim is claim 4 depending from. Therefore, claim 4 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 4 recites the limitation “the weights.” The limitation is not introduced in claim 1 or 4. As such, the limitation is lacking antecedent basis. Therefore, claim 4 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 4 recites the limitation “this first comparison.” The limitation is originally introduced in claim 4. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “[[this]] the first comparison”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitations of claim 4. Therefore, claim 4 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 4.
Claim 5 recites “Training method,” in the preamble. The limitation “Method” is originally introduced in claim 1. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “The method”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 1. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitations “the rendering engine,” “the person,” and “the weights.” The limitations are not introduced in claim 1, 4 or 5. As such, the limitations are lacking antecedent basis. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitation “the source image.” The limitation “at least one source image” is originally introduced in claim 1. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the at least one source image”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 1. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitations “a transformed image” and “a photorealistic rendering of the cosmetic product.” The limitations are originally introduced in claim 1. As such, the subsequent limitations are either (1) not following antecedent basis (i.e. “[[a]] the transformed image” and “[[a]] the photorealistic rendering of the cosmetic product”); or (2) are intended to be new limitations which ambiguously conflict with the previous limitations of claim 1. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitation “a comparison.” The limitation “a first comparison” is originally introduced in claim 4. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. [[a]] the first comparison”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 4. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitation “this comparison.” The limitation is not introduced in claim 1, 4 or 5. As such, the limitation is lacking antecedent basis. Therefore, claim 5 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6 recites the limitation “the program.” The limitation “Computer program product,” is originally introduced in claim 6. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the computer program product”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitations of claim 6. Therefore, claim 6 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 7 is also rejected under 35 U.S.C. § 112(b), based on its respective dependencies to claim 6.
Claim 6 recites the limitation “the cosmetic product.” The limitation “a real cosmetic product,” is originally introduced in claim 6. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the real cosmetic product”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitations of claim 6. Therefore, claim 6 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 7 is also rejected under 35 U.S.C. § 112(b), based on its respective dependencies to claim 6.
Claim 6 recites the limitation “the person.” The limitation “a first person,” and “a second person,” are originally introduced in claim 6. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the first person,” or “the second person”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitations of claim 6. Therefore, claim 6 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 7 is also rejected under 35 U.S.C. § 112(b), based on its respective dependencies to claim 6.
Claim 7 recites “System comprising: a memory (MEM) storing the computer program product (PRG) according to Claim 6…”
Per M.P.E.P. § 2173.05(p): A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages...to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement... occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In Applicant’s case, claim 7 is reciting “system” and “computer program product (i.e. referring to claim 6). Because Applicant is claiming two separate statutory classes together in a single claim, claim 7 is deemed indefinite. Therefore, claim 7 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-9 are also rejected under 35 U.S.C. § 112(b), based on their respective dependency to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free).
/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715