Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 9-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. Claims 9 as a whole define(s) a program, and this is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” (In re Nuijten, 84 USPQ2d 1495 (Fed. Cir. 2007)). It is recommended that the claim recite a “non-transitory computer readable medium . . ..”
The specification does not provide an explicit definition or limitation that would clarify the scope of “computer-readable instructions” to exclude transitory signals. While the specification describes processors, memory, and storage devices (e.g., RAM, ROM, HDD, DVD, CD, flash memory), it does not state that the claimed computer-readable medium is non-transitory or limited to physical storage media. Absent such clarification, the claim language remains broad enough to encompass non-statutory transitory forms.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12026947. Although the claims at issue are not identical, they are not patentably distinct from each other because there are just slight changes in the claim language but they are still read on by the claims of the patent.
Regarding claim 1, see claim 1 of the patent. The image signatures is read on by the pixel histograms.
Regarding claim 2, see claim 2 of the patent.
Regarding claim 3, see claim 3 of the patent. Signature representing is read on by signature corresponding.
Regarding claim 4, see claim 4 of the patent.
Regarding claim 5, see claims 3 and 8 of the patent. The process uses multiple frames.
Regarding claim 6, see claim 6 of the patent.
Regarding claim 7, see claim 7 of the patent.
Regarding claim 8, see claim 8 of the patent.
Regarding claim 9, see claim 9 of the patent.
Regarding claim 10, see claim 2 of the patent.
Regarding claim 11, see 11 of the patent.
Regarding claim 12, see claim 12 of the patent.
Regarding claim 13, see claim 13 of the patent.
Regarding claim 14, see claim 14 of the patent.
Regarding claim 15, see claim 15 of the patent.
Regarding claim 16, see claim 16 of the patent.
Regarding claim 17, see claim 17 of the patent.
Regarding claim 18, see claim 18 of the patent.
Regarding claim 19, see claim 19 of the patent.
Regarding claim 20, see claim 20 of the patent.
Allowable Subject Matter
There is not prior art rejection. The closest prior art is Hay (20020056124) but it does not disclose the specifics of the independent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI AKHAVANNIK whose telephone number is (571)272-8622. The examiner can normally be reached 9 AM - 5 PM Monday to Friday.
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/HADI AKHAVANNIK/Primary Examiner, Art Unit 2676
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