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 .
Specification
Abstract of the invention have been accepted and entered.
Response to Arguments
Applicant's arguments filed on 6/17/2026, with respect to 35 U.S.C 101 rejection have been fully considered, but they are not persuasive. Regarding claims 1 and 29 (and their respective dependent claims), Applicant argues that “Step 2A, Prong One - The Claims Do Not Recite a Judicial Exception The claims are directed to a computer-implemented image correlation method requiring: . implementation of a relational database (R) comprising structured descriptor definitions and similarity functions,
. generation of reference lists (L1...Lk) and a candidate list (Lc) that are explicitly ordered according to the same relational descriptor index, and processing of these lists based on their ordering relationship to identify correlations between images.
These limitations define a specific technological architecture for organizing, comparing, and correlating digital image data, not a mental process or abstract idea. The ordered relational descriptor framework, and the requirement to process lists according to a shared descriptor ordering, cannot be practically performed in the human mind and instead requires computer-implemented data structures and processing. Accordingly, the claims are not directed to a mere abstract idea, but rather to a concrete improvement in image processing systems.” (please see Remarks, page 13).
Examiner respectfully disagrees, First of all, as being argued by the Applicant that the claim limitations define a specific technological architecture for organizing, comparing, and correlating digital image data, not a mental process or abstract idea. However, 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. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’” 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) (“‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’” (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, “[c]ourts 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.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Hence, in view of above the pending claims 1 and 29, recites an abstract idea, and being underlined above as pending claims recites architecture for organizing, comparing, and correlating digital image data which can be performed in the human mind, or by a human using a pen and paper.
With respect to step 2A, Prong Two, Applicant further argues that “Step 2A, Prong Two - Even if a Judicial Exception Were Present, the Claims Integrate It into a Practical Application Even assuming arguendo that aspects of the claims could be characterized as involving data comparison, the claims clearly integrate any such concept into a practical application. Specifically, the claims: . impose a particular technological structure (relational database (R) with ordered descriptors), . require specific data transformations (generation and ordering of lists based on descriptor similarity), and define a particular processing mechanism (order-based list processing across candidate and reference images). This structure yields a functional improvement in image correlation systems, including: improved robustness of image matching through descriptor-level similarity ranking, enhanced consistency across images via database-driven descriptor ordering, and . improved computational efficiency by constraining comparisons to ordered relational structures. Thus, the claims do not merely recite an abstract idea but apply it in a technologically meaningful way, consistent with MPEP §2106.05(a) and (b)” (please see Remarks, pages 13-14).
Examiner respectfully disagrees, as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), further the courts have indicated may not be sufficient to show an improvement in computer-functionality, i.e., Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because “an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality,” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018). Further, Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential). In this case, all pending claims recites an ordered relational repository of descriptors to drive feature extraction and comparison in both candidate and reference images. Hence no improvement to technological processes being shown.
With respect to Step 2B, Applicant argues that “The claims also recite significantly more than any alleged abstract idea. In particular, the ordered relational descriptor framework-requiring:. a shared relational database structure, compatibility across descriptor frameworks, descriptor-by-descriptor similarity computation, and " order-preserving candidate/reference list processing is not conventional or generic.”.
Examiner respectfully disagrees, as made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. In this case the pending claims Generally link the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)). Hence, the pending claims recites an abstract idea and are rejected.
Applicant arguments with respect to claims objections and rejection under 35 U.S.C 112(b) have been fully considered and they are persuasive partially, since not only new issues being raised by the amendments of the claims but also some of the previously raised issues were not resolved by the response. Applicant is encouraged to thoroughly review the claim language to particularly point out distinctly claim the subject matter prior to any response, as the Examiner may not address every single issue.
Applicant arguments with respect to 35 U.S.C 103, have been fully considered and they are persuasive, hence said rejection is withdrawn.
Claim Objections
Claims 1-28, are objected to because of the following informalities: In claim 1, line 20, recites “calculation method for the descriptor”, however should recite “calculation method for a descriptor of the descriptors”, furthermore, In claim 1, line 33, recites “this relational”, however should recite “said relational”. Appropriate correction is required. Claims 2-28, are objected based on their dependency on the objected claim and inherent the same objection.
Claim 4, further objected to because of the following informalities: in claim 4, line 4, recites “suitable for computer” however should recite “. Appropriate correction is required.
Claim 22, further objected to because of the following informalities: in claim 22, line 5, recites “in step b) so that distributions”, however should recite “in step b) . Appropriate correction is required.
Claim 29, further objected to because of the following informalities: In claim 29, line 11, recites “calculation method for the descriptor”, however should recite “calculation method for a descriptor of the descriptors”. Appropriate correction is required. Claim 30 objected based on its dependency on the objected claim and inherent the same objection.
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- 30, are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim 1:
Claim 1 is directed to idea of itself (abstract idea) without significantly more for the following reason(s):
Step 1: Claim 1 recites a method. Thus, the claim is directed to a method, which is one of the statutory categories of the invention.
Step 2A prong 1, the claimed implementing a relational database, implementing for each reference image a reference list, determining candidate image, determining degree of similarity, determining a candidate list and processing the candidate list are directed to abstract idea for the reason that these steps are processes found by the courts to be abstract ideas in that related to “mental processes grouping” more specifically, “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where said steps are recited at a high level of generality such that they could practically be performed in the human mind and/or with a pen and paper, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);. That is, nothing in the claim element precludes the steps from practically being performed in the mind using observation, evaluation, judgement and opinion. Thus, these steps are an abstract idea in the “mental process” grouping. Accordingly, the claim recites an abstract idea.
Step 2A prong 2, The Judicial exception is not integrated into a practical application. Treating claim 1 as a whole, the claim limitations do not show inventive concept in applying the judicial exception. From the claim scope, the claim fail to address any improvement because merely implementing a relational database, implementing for each reference image a reference list, determining candidate image, determining degree of similarity, determining a candidate list and processing the candidate list is not enough to tie the claim towards the technical improvement and can be performed in human mind and/or on a piece of paper. Thus, claim 1 as a whole is not significantly more than the abstract idea itself and is ineligible.
Step 2B, The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Hence, the claim do not integrate the exception into a practical application and do not amount to claiming significantly more than the recited judicial exception. Therefore, the claim is not patent eligible.
Regarding claims 2-28.
Claims 2-28, are rejected under 35 U.S.C 101 because the claimed invention is directed to idea of itself (abstract idea) without significantly more, nothing in the claims element precludes the steps from practically being performed in the mind. The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, said claims are not patent eligible.
Regarding claim 29.
Claim 29, rejected under 35 U.S.C 101 because the claimed invention is directed to idea of itself (abstract idea) without significantly more, nothing in the claims element precludes the steps from practically being performed in the mind and/or with a pen and paper. The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, said claims are not patent eligible as being explained above with respect to claim 1.
Regarding claim 30.
Claim 30, rejected under 35 U.S.C 101 because the claimed invention is directed to idea of itself (abstract idea) without significantly more, nothing in the claims element precludes the steps from practically being performed in the mind. The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, said claims are not patent eligible.
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 4-28, 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The following is merely indicative of the extensive issues present. Applicant is encouraged to thoroughly review the claim language to particularly point out distinctly claim the subject matter prior to any response, as the Examiner may not address every single issue.
Regarding claim 4, in line 4, recites "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Therefore claim 4 and its respective dependent claims are indefinite.
Claim 8, recites the limitation “the groups” in line 2. There is insufficient antecedent basis for this limitations in the claim. Hence rendering claim 8, and its respective dependent claims, indefinite.
Claim 12, recites the limitation “each geometric transformation sought in step f)”, however claimed “step f)” does not recites any geometric transformation”. Hence, from the claim language it is not clear which transformation is being referred to. Rendering claim 12, indefinite.
Claim 13, recites the limitation “the relational repository (R)” in line 8. There is insufficient antecedent basis for this limitations in the claim. Hence rendering claim 13, indefinite. Furthermore, in claim 13, line 8, further recites “the relational repository (R) implemented in step a)”, however step a) does not recites “the relational repository (R)”. Further, acronym (R) is being utilized for claimed “relational database” in claim 1, in which claim 13, depends on, however same acronym (R), is utilized for the claimed “relational repository” in claim 13, From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 13, indefinite.
Claim 17, line 4, recites “relational repository (R”), however same acronym (R), is utilized for the claimed “relational database (R)” in claim 1, in which claim 17, depends on. From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 17 and its respective dependent claims indefinite.
Claim 20, line 3, recites “a relational repository (R”), however same acronym (R), is utilized for the claimed “relational database (R)” in claim 1, in which claim 20, depends on. From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 20 indefinite.
Claim 21, line 3, recites “a relational repository (R”), however same acronym (R), is utilized for the claimed “relational database (R)” in claim 1, in which claim 21, depends on. From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 21 indefinite.
Claim 22, line 3, recites “a relational repository (R”), however same acronym (R), is utilized for the claimed “relational database (R)” in claim 1, in which claim 22, depends on. From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 22 indefinite.
Claim 23, line 3, recites “a relational repository (R”), however same acronym (R), is utilized for the claimed “relational database (R)” in claim 1, in which claim 23, depends on. From the claim language it is not clear whether the claimed “(R)” is same or different. Hence rendering claim 23 indefinite.
Regarding claims 25-28, Claim 25, recites “The use of correlation method”, indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced (MPeP 2173.05(q)). Similar issue exist in claims 26-28, and are rejected based on same grounds of rejection.
Examiner’s Note: Any indication of allowable subject matter is being held in abeyance pending the response to the rejections under 35 U.S.C 101 and 35 U.S.C 112(b).
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 SYED Z HAIDER whose telephone number is (571)270-5169. The examiner can normally be reached MONDAY-FRIDAY 9-5:30 EST.
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/SYED HAIDER/Primary Examiner, Art Unit 2633
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