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 statements (IDS) filed on 5/7/2024, 11/29/2024, 3/3/2026, and 3/5/2026 were considered and placed on the file of record by the examiner.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
In Alice Corporation Pty. Ltd. v. CLS Bank International, et al. {“Alice Corp.’’), the Supreme Court made clear that it applies the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S._(2012) {Mayo), to analyze claims directed towards laws of nature and abstract idea. Alice Corp. also establishes that the same analysis applies for all categories of claims (e.g., product and process claims). The basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(1). First, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Next, determine if the claim is directed towards a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). The two-part test provided in Alice Corp. to determine whether a claim directed towards an abstract idea is statutory under § 101 requires an evaluation to determined 1) whether the claims is directed to an abstract idea and 2) if an abstract idea is present in the claim, whether the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas reference in Alice Corp. include:
- Fundamental economic principles
- Certain methods of organizing human activities
- An idea of itself
- Mathematical relationships/formulas
In accordance with judicial precedent, the 2019 Revised Patent Subject Matter Eligibility Guidance sets forth a procedure to determine whether a claim is ‘‘directed to’’ a judicial exception. Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not ‘‘directed to’’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Step 1 - Statutory Category
The claims 1-22 recite a process of receiving images of a structure’s part, assigning part identification information, and determining damage of the structure, therefore it recites at least one of the enumerated categories, a process, eligible subject matter in 35 USC 101. Accordingly, claims 1-22 satisfy Step 1.
Step 2A(i) -Focus of the Claim
As a result, the claims 1-22 will be reviewed under Step 2A(i) to determine whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citations omitted). The claims recite determining damage information of a structure by viewing images, and associating information in the images, thus the organization of human activity such as surveillance of human behavior.
The court have ruled that receiving and authenticating identity data to permit access was abstract since the functions were claimed generically rather than offering a "'concrete, specific solution" See Prisnz Technologies LLC v. T-Afobile USA, 696 F. App'x 1014 (Fed. Cir.2017). Abstract ideas include the concepts of collecting data, recognizing certain data within the collected data set, storing the data in memory, and notifying the user of the results. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea"). Moreover, the reviewing court has concluded that acts of parsing, comparing, storing, and editing data are abstract ideas. Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018). In addition, the collection of information and analysis of information ( e.g., recognizing certain data within the dataset, such as rules) are also abstract ideas. Elec. Power Grp., LLC v. Alstom SA., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Similarly, "collecting, displaying, and manipulating data" is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[M]erely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis").
The process of receiving images of a part in a structure, determining a correspondence between images, and providing a damage assessment result is a method of organizing human activity, as considered under MPEP § 2106.04(a)(2)(II), Certain Methods of Organizing Human Activity. Therefore, claims 1-22 recite an abstract idea.
Step 2A(ii) -Practical Application
Limitations that are indicative of integration into a practical application when recited in a claim with a judicial exception include:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying or using a judicial exception to affect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
Limitations that are not indicative of integration into a practical application when recited in a claim with a judicial exception include:
Adding the words “apply it” (or an equivalent) with 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, 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 the judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h).
In this instance, this judicial exception is not integrated into a practical application because the claims merely detect a part in a structure in images, determine a correspondence between images, and provide damage information of the structure. The claims do not provide an improvement to the functionality of a computer or image analysis technical field; the claims are not implemented with or used with a particular machine; the claims do not transform an article to a different state or thing when viewing objects in images; and the claims do not provide a meaningful way of analyzing image regions in the image analysis technical environment.
Step 2B - Inventive Concept
As set forth under MPEP § 2106.05( d), only if a claim: (1) recites a judicial exception; and (2) does not integrate that exception into a practical application, do we then look under Step 2B to determine; (3) whether the claim adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional activity" (WURC) in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Having determined claims 1-22 are directed to an abstract idea that is not integrated into a practical application, we now evaluate whether the additional elements, whether examined alone or as an ordered combination, add a specific limitation that is not well-understood, routine, or conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea. See generally Revised Guidance.
It is possible that a claim that does not ‘‘integrate’’ a recited judicial exception is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element. Along these lines, the Federal Circuit has held claims eligible at the second step of the Alice/Mayo test because the additional elements recited in the claims provided ‘‘significantly more’’ than the recited judicial exception (e.g., because the additional elements were unconventional in combination).
Limitations reference in Alice Corp. that may be enough to quality as “significantly more” when recited in a claim with an abstract idea include, as nonexclusive examples:
- Improvements to another technology or technical field
- Improvements to the functioning of the computer itself
- Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment
Examples that are not enough to quality as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive example:
- Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer
- Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry
The additional elements recited in claims 1-22 are well-understood, routine, and conventional steps in image analysis. The claims 1-22 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed to viewing an image and determining a status of a structure.
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have previously recognized that using computer processors and memories to collect data and keep records, perform repetitive calculations, and/or receive/send data are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP § 2106.05(d)(II)(i)-(iv)). See also Berkheimer, 881 F.3d at 1366 (acts of parsing, comparing, storing, and editing data are abstract ideas); SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("[M]erely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis"); Intellectual Ventures I, 850 F .3d at 1340 ("[C]ollecting, displaying, and manipulating data" is an abstract idea); Smart Sys. Innovations, 873 F .3d at 1372 (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea.").
The claims state receiving images by a processing apparatus or computer. However, the claims merely implement the judicial exception using generic computer elements to perform well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality. See FairWarning, 839 F.3d at 1096 ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter."); see also OIP Techs., 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite "'well-understood, routine conventional activit[ies],' either by requiring conventional computer activities or routine data-gathering steps").
In claims 1-22, an AI system is trained for determination of a structure’s member. According to the MPEP Section 2106, simply mentioning "AI" in a patent claim is generally not enough to guarantee patentable subject matter; the claims must clearly define a specific, practical application of machine learning that goes beyond a generic or abstract idea, often requiring detailed description of the training process, data inputs, and specific outputs to avoid rejection under Section 101 for being too abstract. The AI language in the claims does not go beyond the abstract idea of identifying objects in images.
In claims 1-22, the steps of receiving images of a structure’s part, assigning part identification information, and determining damage of the structure is not an improvement to a fundamental practice and/or method of organizing human activity. In claims 20-22 the steps are tied to a computer; however, combining the steps with a generic computer is not significant. The claims do not include additional elements that are sufficient to amount to significantly more than generalized steps well-known and routine in the art such as object detection in images. Therefore, claims 1-22 are directed to patent-ineligible abstract idea that is not integrated into a practical application, with steps that do not add significantly more to the abstract idea. Claims 1-22 are ineligible.
Claim Rejections - 35 USC § 112
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
In claims 1-16 limitations “member determination unit,” “identification information assignment unit,” “imaging unit,” “position measurement unit,” “control unit,” “damage information assignment unit,” “assignment information editing unit,” and “structure image search unit” have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use a generic placeholder “unit” coupled with functional language “acquires,” “determines,” “assigns,” “imaging,” “measures,” “control,” “detects,” “editing,” and “search” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The phrases with “unit” does not specify the structure.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-16 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: The specification in paragraph 0024 states the corresponding structure may be performed by a program.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation 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 1-16 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.
Claims 1-16 use the word “unit” or a generic placeholder as a substitute for “means” and is preceded by the word(s) ““member determination,” “identification information assignment,” “imaging,” “position measurement,” “control,” “damage information assignment,” “assignment information editing,” and “structure image search””. It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding “unit,” it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Karube (US 2018/0292328).
Regarding claim 1, Karube teaches an image processing apparatus comprising:
a member determination unit that determines a member appearing in a structure image to be determined, which is obtained by imaging a structure (see figure 3, figure 7, figure 9, para. 0084, 0142-0143, 0146, Karube discusses inspection of the bridge, the inspector images, for example, the deck on the lower surface of the bridge and acquires a deck image as a captured image of the structure, measure classification is performed on at least one of for each structural member classification, for each location (or member), or for each damage type on the basis of the damaged state of each member of the structure); and
an identification information assignment unit that assigns member identification information indicating the member determined by the member determination unit to the structure image to be determined (see figure 3, figure 7, figure 9, para. 0146, Karube discusses structural member classification).
Regarding claim 2, Karube teaches wherein the member determination unit performs image recognition of the structure image to be determined, and determines the member appearing in the structure image to be determined based on a result of the image recognition (see figure 3, figure 7, figure 9, para. 0146, Karube discusses image recognition for structural member classification).
Regarding claim 4, Karube teaches wherein the member determination unit detects a member identifier assigned to each member constituting the structure from the structure image to be determined, and determines the member appearing in the structure image to be determined using the member identifier (see para. 0233, Karube discusses identification information (ID) and image data of the captured image).
Regarding claim 5, Karube teaches wherein the member determination unit performs image recognition of an assignment-completed structure image to which the member identification information has already been assigned and the structure image to be determined, and determines the member appearing in the structure image to be determined based on a result of the image recognition (see para. 0233, Karube discusses identification information (ID) and image data of the captured image).
Regarding claim 6, Karube teaches wherein the member determination unit searches for a reference structure image in which the same member as the member appearing in the structure image to be determined appears, and determines the member appearing in the structure image to be determined based on the searched reference structure image (see para. 0106-0107, 0109, Karube discusses searching the database for similar damage information which is another damage information similar to the damage information of the inspection target structure).
Regarding claim 7, Karube teaches wherein the member determination unit acquires a structure model that includes information indicating a structure of the structure and that is associated with the member identification information of the structure and a reference structure image that is associated with the structure model, performs image recognition of the reference structure image and the structure image to be determined and searches for the reference structure image in which the same member as the member appearing in the structure image to be determined appears based on a result of the image recognition, and determines the member appearing in the structure image to be determined from a correspondence relationship between the reference structure image in which the same member as the member appearing in the structure image to be determined appears and the structure model (see para. 0034, 0037, Karube discusses progress model indicating a correspondence relationship between a damaged state of a model structure and a degree of damage that is an evaluation classification of a degree of damage progress).
Regarding claim 8, Karube teaches wherein the member determination unit acquires reference information for determining the member appearing in the structure image to be determined, and determines the member appearing in the structure image to be determined based on the reference information (see para. 0105, 0106-0107, Karube discusses database control unit stores the damage progress speed in the database in association with other inspection result information).
Regarding claim 9, Karube teaches wherein the member determination unit acquires reference information which is used for determining a member appearing in the structure image to be determined and includes a structure model including information indicating a structure of the structure, and determines the member appearing in the structure image to be determined based on the reference information (see para. 0091, Karube discusses database control unit that stores a captured image, damage information, and a degree of damage of the inspection target structure in the database in association with each other; see para. 0105, 0106-0107, Karube discusses searching a database for the inspection result information associated with similar damage information).
Regarding claim 10, Karube teaches wherein the reference information includes a structure model including information indicating a structure of the structure, and information relating to an imaging situation including information on an imaging position and an imaging direction in a case of imaging of the structure image to be determined, and the member determination unit determines the member appearing in the structure image to be determined based on a correspondence relationship between the structure model and the information relating to the imaging situation (see para. 0106, Karube discusses searching a database for inspection result information of another structure inspection result information of another structure of which the damage progress parameter is the same as or similar to that of an inspection target structure).
Regarding claim 11, Karube teaches wherein the reference information includes information relating to an imaging plan of the structure including information indicating a correspondence relationship between an imaging order of the structure image to be determined and a member constituting the structure, and the member determination unit determines the member appearing in the structure image to be determined based on a correspondence relationship between the information relating to the imaging plan and the structure image to be determined (see para. 0021, Karube discusses acquires a damage progress speed of the inspection target structure by comparing a plurality of degrees of damage respectively acquired on the basis of a plurality of images with different inspection times of the inspection target structure).
Regarding claim 12, Karube teaches wherein the information relating to the imaging plan includes information indicating an imaging position and an imaging direction in a case of imaging the structure, and the image processing apparatus further comprises: an imaging unit for imaging the structure; a position measurement unit that measures an imaging position and an imaging direction of the imaging unit; and a control unit that performs control such that the imaging position and the imaging direction of the imaging unit match the information indicating the imaging position and the imaging direction included in the information relating to the imaging plan (see para. 0031, Karube discusses performing association between coordinate positions and directions of the vectors respectively generated from the plurality of images by performing correction on at least one of a plurality of images having different inspection times and the vectors generated from the plurality of images. Therefore, accurately acquires the damage progress speed even in a case where an imaging position and an imaging direction of an imaging device are different between images with different inspection times).
Regarding claim 13, Karube teaches wherein in a case where a plurality of members appear in the structure image to be determined, the identification information assignment unit assigns member identification information relating to the plurality of members to the structure image to be determined (see para. 0233, Karube discusses identification information (ID) of objects).
Regarding claim 14, Karube teaches further comprising a damage information assignment unit that detects damage from the structure image and that assigns information relating to the damage to the structure image (see para. 0022, 0239, Karube discusses damage extracted from the image of the inspection target structure is vectorized, the vector included in the damage information is analyzed on the basis of the progress model indicating the correspondence relationship between the damaged state and the degree of damage which is an evaluation classification of the degree of damage progress).
Regarding claim 15, Karube teaches further comprising an assignment information editing unit for editing assignment information assigned to the structure image (see para. 0242, Karube discusses date edited by an instruction input from the user via the operation unit).
Regarding claim 16, Karube teaches further comprising a structure image search unit that searches for the structure image based on assignment information assigned to the structure image (see para. 0026, Karube discusses searches a database for similar damage information which is another damage information similar to the damage information of the inspection target structure; see para. 0106, Karube discusses searching for a part of structure).
Claim 17 is rejected as applied to claim 1 as pertaining to a corresponding method.
Claim 18 is rejected as applied to claim 6 as pertaining to a corresponding method.
Claim 19 is rejected as applied to claim 9 as pertaining to a corresponding method.
Claim 20 is rejected as applied to claim 1 as pertaining to a corresponding non-transitory, computer-readable tangible recording medium.
Claim 21 is rejected as applied to claim 6 as pertaining to a corresponding non-transitory, computer-readable tangible recording medium.
Claim 22 is rejected as applied to claim 9 as pertaining to a corresponding non-transitory, computer-readable tangible recording medium.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Karube (US 2018/0292328) in view of Sarkisian et al. (US 2020/0279364).
Regarding claim 3, Karube does not expressly disclose wherein the member determination unit includes member determination AI that has been trained for determination of a member constituting the structure, and determines the member appearing in the structure image to be determined using the member determination AI.
However, Sarkisian teaches wherein the member determination unit includes member determination AI that has been trained for determination of a member constituting the structure, and determines the member appearing in the structure image to be determined using the member determination AI (see para. 0014, Sarkisian discusses machine learning models are pre-trained to process the data in the database to evaluate a design of a structure, identify components of a structure, and assess damage in a structure).
Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Karube with Sarkisian to derive at the invention of claim 3. The result would have been expected, routine, and predictable in order to perform object inspection and damage assessment.
The determination of obviousness is predicated upon the following: One skilled in the art would have been motivated to modify Karube in this manner in order to improve object damage assessment by incorporating a trained artificial intelligence model to improve image analysis by interpreting visual information faster, consistent, and scalable. Furthermore, the prior art collectively includes each element claimed (though not all in the same reference), and one of ordinary skill in the art could have combined the elements in this manner explained using known engineering design, interface and/or programming techniques, without changing a fundamental operating principle of Karube, while the teaching of Sarkisian continues to perform the same function as originally taught prior to being combined, in order to produce the repeatable and predictable result of implementing an AI model trained to identify and analyze structures in image data more accurately than human analysis. The Karube and Sarkisian systems perform structural assessment, therefore a person having ordinary skill in the art would have reasonable expectation of success in the combination yielding predictable results. It is for at least the aforementioned reasons that the examiner has reached a conclusion of obviousness with respect to the claim in question.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shloosh et al. (US 10,902,671) discusses a system for 3D modeling of a structure and evaluating severity of a defect in a structure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNY A CESE whose telephone number is (571) 270-1896. The examiner can normally be reached on Monday – Friday, 9am – 4pm.
If attempts to reach the primary examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached on (571) 272-3838. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Kenny A Cese/
Primary Examiner, Art Unit 2663
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