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 .
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 April 2026, with respect to 35 U.S.C. § 112(a) have been fully considered and are persuasive. The rejection of claims 1 – 8 under 35 U.S.C. § 112(a) has been withdrawn.
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 April 2026, with respect to 35 U.S.C. § 112(b) have been fully considered and are persuasive, in light of the amendments. The rejection of claims 1 – 8 under 35 U.S.C. § 112(b) has been withdrawn.
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 April 2026, with respect to 35 U.S.C. § 102/103 have been fully considered and are persuasive, in light of the amendments. The rejection of claims 1 – 8 under 35 U.S.C. § 102/103 has been withdrawn.
Applicant's arguments, filed 27 April 2026, with respect to 35 U.S.C. § 101 have been fully considered but they are not persuasive.
Step 2A, Prong One
Applicant argues that the amended claims no longer recite the “broad mental process” as previously identified and that there are analogous examples cited in the MPEP involving training a neural network for facial detection (MPEP 2106.04). Examiner disagrees.
The claims still recite mathematical concepts: calculation of an area ratio of the mandible area to a maxillary area; determination of point distances, ratios of point distances, and an H angle. Recitation of a mathematical concept is still basis for finding a judicial exception. See MPEP 2106.04(a)(2).
Furthermore, the claims recite observation, evaluation, and judgement that can still be performed in the human mind or with pen and paper, aided by a computer as a tool. Identifying facial landmarks, computing areas, and comparing results to a threshold can be performed by a person. Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind. See MPEP 2106.04(a)(2)(iii).
Step 2A, Prong Two
Applicant argues that any recited calculation is integrated into a practical application because the claims recite a specific technological solution. Applicant further argues that the camera and processing unit are integral rather than extra-solution activity. Examiner disagrees. The camera merely performs extra-solution data gathering. Producing a signal or displaying a match on a user interface is extra-solution output. The claims do not improve the functioning of a computer or improve computer-vision technology. They apply conventional image capture, conventional landmark detection, and conventional geometric calculations.
Accordingly the judicial exception is not integrated into a practical application and the claims are still directed to the exception.
Step 2B
Applicant argues that the ordered combination is a non-generic arrangement of known components under BASCOM. Examiner disagrees. The additional elements, taken individually, are well-understood, routine, conventional activities: capturing an image with a camera on a suer terminal; processing the image on a generic processor; using known face-recognition/image rendering algorithms to locate facial landmarks; computing geometric quantities from those landmarks; applying a standard classifier; and outputting a result.
Therefore, the 101 rejections are maintained.
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
Step 1:
Claims 1 – 7 recite a system, and therefore is a product. Therefore, the claims fall within the statutory categories.
Step 2A, Prong 1:
Claim 1 recites limitations of “capture a diagnosis image seen from the side of a face…”, “determine a mandible area and a maxillary area in the diagnosis image…”, “calculate an area ratio…”, and “produce a signal related to skeleton syndromes … in accordance with a deviation of the calculated area ratio from a predetermined threshold.” The limitations, as drafted, describe a process that, under its broadest reasonable interpretation, includes performance of the limitation in the mind except for the recitation of “a camera” and “a processing unit.” The camera is a generic device that is only used to produce an image of the patient’s face. Other than reciting that a processing unit is performing the other tasks, nothing in the claim precludes the steps from practically being performed in the human mind. MPEP 2106.04(a)(2)(III) states that the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. For example, aside from the recitation of “a processing unit” language, the claim encompasses the user determining mathematic areas and ratios of those areas based on an image. These limitations can be considered a mathematical relationship or a mental process.
Step 2A Prong 2:
The claims recite “a processing unit” to perform the abstract steps. These components read on a computer implemented system and are recited at a high level of generality, i.e., as a generic processor, performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional limitation does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial except into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The specification in at least ¶ 28 does not provide any indication that the computer is anything other than a generic, off-the-shelf computer component. Court decisions cited in MPEP 2106.05(d)(II) indicate that computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim, as a whole, amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). Accordingly, a conclusion that the generic computer functions merely being used to implement an abstract idea is well-understood, routine, conventional activity is supported under Berkheimer Option 2.
Independent claim 4, recites the limitations of independent claim 1 described above. It also adds the limitation that the processing unit is also configured to produce the signal by means of a machine learning model trained with side profile images. The specification teaches at least in ¶ 37 that the machine learning model is trained with the side profile views whose area ratio, H angle and point distance are known. This doesn’t explain how the machine learning software operates any more than comparing the image to a known template. Therefore, independent claim 4 does not anything significantly more and is also rejected under 35 U.S.C. § 101.
Dependent claims 2, 3, and 5 – 7 further limit the abstract idea already indicated in independent claims 1 and 4 and they are ineligible for the same reasons provided for claims 1 and 4 above.
For these reasons, there is no inventive concept in the claims and thus they are ineligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSEPH M DIETRICH whose telephone number is (571)270-1895. The examiner can normally be reached Mon - Fri 8:00-5:00.
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/JOSEPH M DIETRICH/Primary Examiner, Art Unit 3796
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