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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 January 2026 has been entered.
Formal Matters
Applicant's response, filed 29 January 2026, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Examiner notes that holding a double patenting rejection in abeyance is considered a non-responsive reply – see MPEP § 804(I)(B)(1). A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Status of Claims
Claims 1-10 are currently pending and have been examined.
Claims 1, 2, 4, 9, and 10 have been amended.
Claims 1-10 have been rejected.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2023-056834, filed on 14 May 2024.
The instant application therefore claims the benefit of priority under 35 U.S.C 119(a)-(d). Accordingly, the effective filing date for the instant application is March 31, 2023, claiming benefit to JP2023-056834.
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 1-10 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 Categories of Invention:
Claims 1-10 are drawn to a method, device, or manufacture, which are statutory categories of invention.
Step 2A – Judicial Exception Analysis, Prong 1:
Independent claim 1 recites a method, independent claim 9 recites an apparatus, and independent claim 10 recites a non-transitory computer-readable medium each for an industrial product inspection to identify defects on an industrial product from image data in part performing the steps of generating data of a plurality of individuals in which a plurality of genes for expressing one of a type of an input layer and a filter layer, and a parameter set for the filter layer, are sequenced, wherein a data processing sequence of a plurality of data processing sequences has the input layer, the filter layer, and an output layer, as a plurality of nodes; generating a population of one generation based on the generated data of the plurality of individuals; allocating one of the input layer as a first node of the plurality of nodes, the filter layer as a second node of the plurality of nodes, and the parameter, to each of the plurality of genes forming an individual of the plurality of individuals, with reference to a reference table establishing a correspondence between a gene of the plurality of genes, the plurality of nodes, and the parameter; generating the data processing sequence corresponding to the individual based on the allocation; performing data processing of the image data for each of the plurality of data processing sequences expressed by the population; comparing output data outputted for each of the plurality of data processing sequences, and target data that is associated with the image; calculating an evaluation value of a plurality of evaluation values indicating a degree of similarity between the output data and the target data; and specifying the data processing sequence that satisfies a predetermined criterion, using the plurality of evaluation values corresponding to the plurality of data processing sequences, respectively; and performing image data processing on the image data using the specified data processing sequence to identify defects on the industrial product.
Dependent claim 2 recites, in part, wherein the predetermined criterion is a condition that the degree of similarity having a highest value among a plurality of degrees of similarity indicated respectively by the plurality of evaluation values is equal to or higher than a predetermined end threshold, and the generation of the data of the plurality of individuals includes a next generation generating process of performing at least one of crossover and mutation from the individual whose degree of similarity is high and replacing one or more of a set of individuals whose degree of similarity is low, of the plurality of individuals generated by a previous routine, with the individual that is new, and copying the individual whose degree of similarity is high and generating the population of a next generation used in a routine of a current time, when the predetermined criterion is not satisfied.
Dependent claim 3 recites, in part, wherein the allocation of the input layer as the first node includes a type table generating process of generating a type table where a decoding type for distinguishing a third node, of the plurality of nodes, represented by the gene and the parameter is associated with each of the plurality of genes forming the individual from which the data processing sequence is generated, and the reference table includes the type table.
Dependent claim 4 recites, in part, wherein the decoding type includes a type for distinguishing an unused gene and that is not used for the generation of the data processing sequence, in addition to distinguishing the third node and the parameter, and the type table generating process generates the type table where the decoding type for distinguishing the third node represented by the gene, the parameter, and the unused gene is associated with each of the plurality of genes forming the individual from which the data processing sequence is generated.
Dependent claim 5 recites, in part, wherein the next generation generating process includes a reference individual generating process of determining at least one of a crossover point and the gene to perform the mutation and performing at least one of the crossover and the mutation with reference to the type table.
Dependent claim 6 recites, in part, wherein the reference individual generating process includes a type-referenced mutation process of performing the mutation of the gene associated with the parameter as the decoding type, of the plurality of genes of the individual that is a subject of the mutation, when generating the individual by the mutation.
Dependent claim 7 recites, in part, wherein the next generation generating process further includes a normal individual generating process of performing at least one of the crossover and the mutation without referring to the type table, and generating the individual, and the next generation generating process executes at least one of the reference individual generating process and the normal individual generating process, based on a predetermined generation condition.
Dependent claim 8 recites, in part, wherein the predetermined generation condition is a condition that the type- referenced mutation process is executed for the individual from which the data processing sequence with the degree of similarity at up to an N-th place from the top, N being an integer equal to or greater than 1, is generated, of the set of individuals whose degree of similarity is high among the plurality of individuals generated by the previous routine.
These steps of structurally expressing an image of an industrial product as a tree structure by using a genetic mathematical algorithm amount to a mathematical concept which includes mathematical relationships, mathematical formulas or equations, and mathematical calculations. The mathematical concept need not be expressed in mathematical symbols but not merely limitations that are based on or involve a mathematical concept (MPEP § 2106.04(a)(2)(I)(A) citing the abstract idea grouping for mathematical concepts for mathematical relationships).
Step 2A – Judicial Exception Analysis, Prong 2:
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to instructions to implement the judicial exception using a computer [MPEP 2106.05(f)].
Claims 1, 9, and 10 recite a central processing unit (CPU) for preforming the algorithm steps. Claim 10 recites a non-transitory computer-readable medium storing a computer program. The specification notes that the computer and corresponding hardware can include any electronic computer – such as a personal computer – with standard hardware components (see the instant Detailed Description in ¶ 0035). The use of a computer and corresponding hardware, in this case to generating a data processing sequence, only recites the computer hardware as a tool to perform an existing process and only amounts to an instruction to implement the abstract idea using a computer (MPEP § 2106.05(f)(2) see case requiring the use of software to tailor information and provide it to the user on a generic computer within the “Other examples.. v.”). The use of a non-transitory computer-readable storage medium storing a computer program, in this case to generating a data processing sequence, only recites the non-transitory computer-readable storage medium storing a computer program as a tool to perform an existing process and only amounts to an instruction to implement the abstract idea using a computer (MPEP § 2106.05(f)(2) see case requiring the use of software to tailor information and provide it to the user on a generic computer within the “Other examples.. v.”).
Claims 1, 9, and 10 recite receiving… image data of an industrial product from a sensor device. The limitations are only recited as a tool which only serves to input data for use by the abstract idea (MPEP § 2106.05(g) - insignificant pre/post-solution activity that amounts to mere data gathering to obtain input) and is therefore not a practical application of the recited judicial exception.
The above claims, as a whole, are therefore directed to an abstract idea.
Step 2B – Additional Elements that Amount to Significantly More:
The present claims do not include additional elements that are sufficient to amount to more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of instructions to implement the abstract idea on a computer.
Claims 1, 9, and 10 recite a central processing unit (CPU) for preforming the algorithm steps. Claim 10 recites a non-transitory computer-readable medium storing a computer program.
Each of these elements is only recited as a tool for performing steps of the abstract idea, such as the use of the storage mediums to store data, the computer and data processing devices to apply the algorithm, and the display device to display selected results of the algorithm. These additional elements therefore only amount to mere instructions to perform the abstract idea using a computer and are not sufficient to amount to significantly more than the abstract idea (MPEP 2016.05(f) see for additional guidance on the “mere instructions to apply an exception”).
Each additional element under Step 2A, Prong 2 is analyzed in light of the specification’s explanation of the additional element’s structure. The claimed invention’s additional elements do not have sufficient structure in the specification to be considered a not well-understood, routine, and conventional use of generic computer components. Note that the specification can support the conventionality of generic computer components if “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)” (Berkheimer in III. Impact on Examination Procedure, A. Formulating Rejections, 1. on p. 3).
Claims 1, 9, and 10 recite receiving… image data of an industrial product from a sensor device. The courts have decided that receiving or transmitting data over a network as well-understood, routine, conventional activity when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (MPEP § 2106.05(d)(II) other types of activities example i. receiving or transmitting data over a network, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network).
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Their collective functions merely provide conventional computer implementation.
Claims 1-10 are therefore rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent 12,347,166. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both patents are directed towards the same genetic algorithm for image processing with an input, filter, and output layer relying on a calculated degree of similarity between the output value and a target value and comparing a reference condition to a reference table. Therefore, the instant application is rejected under non-statutory double patenting.
Response to Arguments
Applicant's arguments filed 29 January 2029 with respect to 35 USC § 101 have been fully considered but they are not persuasive. Under Step 2A Prong 1, Applicant asserts that the by including details regarding the hardware processor, here “by the CPU”, or the data transmitting are essentially tied to a machine and do not represent mathematical concepts. Examiner disagrees. The use of electronic means for performing the abstract idea is not enough to overcome Step 2A Prong 1 (2019 Revised Patent Subject Matter Eligibility Guidance, 84 FED. REG. 4 (January 7, 2019) at p. 8 footnote 54 further citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316-18 (Fed. Cir. 2016) where the electronic implementation of human activity was not adequate to overcome Step 2A Prong 1). Examiner agrees that the remaining two limitations the applicant asserts are not a mental process and are instead analyzed under prong 2 as additional elements to the abstract idea.
Under Step 2A Prong 2, Applicant asserts that there is a practical application generally to industrial product inspection from image data picked up by a sensor device therefore integrating the alleged judicial exception into the practical application. Examiner disagrees. Examiner first notes that 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 (see MPEP § 2106.04(d) - Integration of a Judicial Exception Into A Practical Application). The court has provided limitations that are indicative that an additional element (or combination of elements) may have integrated the exception into a practical application and limitations that did not integrate a judicial exception into a practical application (see MPEP § 2106.04(d)(I) – Relevant Considerations for Evaluating Whether Additional Elements integrate a Judicial Exception into a Practical Application) wherein the claims may amount to (1) improvements to the functioning of a computer, (2) improvements to a technological field, (3) applying the judicial exception to a particular machine, (4) transforming or reducing a particular article to a different state or thing, (5) unconventional activity or steps that confine the claim to a particular useful application, or (6) other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Here the instant claims seem more analogous to "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
Here specifically, an improvement to the abstract ideas of identifying, from an image, a device defect utilizing a specific mathematical algorithm without more, does not amount to an improvement to technology or a technical field (see MPEP § 2106.05(a)(III) stating “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”). There is no indication in the instant disclosure that the involvement of a computer assists in improving the technology for the outlined problem statement. Here, the improvement is to mathematical equation for processing the image for defect identification. The instant application and claim language fail to detail how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient.
Applicant's arguments filed 29 January 2029 with respect to the Double Patenting rejection have been fully considered. A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORDAN LYNN JACKSON whose telephone number is (571)272-5389. The examiner can normally be reached Monday-Friday 8:30AM-4:30PM ET.
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/JORDAN L JACKSON/Primary Examiner, Art Unit 2857