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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 18/482,557 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, this application fails to provide support for the steps of anonymizing recited in claims 71-77 and 80-86. Although this parent application supports a step of anonymizing, the additional limitations of the cited claims are not disclosed in this parent application. Accordingly, claims 71-77 and 80-86 are not entitled to the benefit of prior application No. 18/482,557.
With respect to parent Application No. PCT/CA2022/051330, although this application provide support for the steps of anonymizing recited in claims 71-77 and 80-86, this parent application claims priority through Application No. 17/689,783 which fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, Application No. 17/689,783 fails to provide support for the steps of anonymizing recited in claims 71-77 and 80-86. Although this parent application supports a step of anonymizing, the additional limitations of the cited claims are not disclosed in this parent application. Accordingly, although claims 71-77 and 80-86 are entitled to the benefit of parent Application No. PCT/CA2022/051330, they are not entitled to the benefit of the parent application of Application No. PCT/CA2022/051330; i.e., they are not entitled to the benefit of the parent application No. 17/689,783.
Allowable Subject Matter
Claims 1, 12 and 71-88 are currently subject to non-statutory double patent rejections , but are otherwise not subject to any prior art rejections under either 35 U.S.C. § 102 or 35 U.S.C. § 103. Assuming that the foregoing shortcomings of these claims were rectified by the timely filing of a terminal disclaimer, these claims would be allowable.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims 1 and 12 recite the same patentable features as were found allowable in parent application 18/482,557 which issued as United States Patent No. 12,309,223 on 20 May 2025. These claims are allowable for the same reasons as were provided in the parent application.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 1
U.S. Patent No. 12,309,223
A system for detecting vehicle occupancy, the system comprising:
(Incorporated from parent claim 1)
A system for detecting vehicle occupancy, the system comprising:
a first roadside imaging device;
a first roadside imaging device having a first field of view;
a processor, in communication with a memory, configured to:
a processor, in communication with a memory, configured to:
command the first roadside imaging device to capture one or more images receive the captured images from the first roadside imaging device;
command the first roadside imaging device to capture one or more images according to a second pattern associated with the first pattern, during a second duration associated with the first duration;
anonymize or command anonymization of the captured images;
Claim 8
The system of claim 1, wherein the captured images are anonymized.
compute a vehicle occupancy by, in each of the captured images:
(Incorporated from parent claim 1)
compute a vehicle occupancy by, in each of the captured images:
determining one or more regions of interest in each of the captured images;
determining one or more regions of interest in each of the captured images;
determining the vehicle occupancy based on the one or more regions of interest; and
determining the vehicle occupancy based on the one or more regions of interest; and
determining a most likely number of occupants based on each determined vehicle occupancy; and
determining a most likely number of occupants based on each determined vehicle occupancy; and
transmit the vehicle occupancy to a monitoring system or store the vehicle occupancy in memory.
transmit the vehicle occupancy to a monitoring system or store the vehicle occupancy in memory.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
U.S. Patent No. 12,309,223
Claim 12
A method for detecting vehicle occupancy the method comprising;
(Incorporated from parent claim 12)
A method for detecting vehicle occupancy, the method comprising;
commanding a first roadside imaging device to capture images
commanding the first roadside imaging device to capture images …;
receiving the captured images from the first roadside imaging device;
receiving the captured images from the first roadside imaging device;
anonymize or command anonymization of the captured images;
Claim 19
The method of claim 12, further comprising anonymizing the captured images.
computing a vehicle occupancy by, in each of the captured images:
(Incorporated from parent claim 12)
computing a vehicle occupancy by, in each of the captured images:
determining one or more regions of interest in each of the captured
images;
determining one or more regions of interest in each of the captured images;
determining the vehicle occupancy based on the one or more regions of interest; and
determining the vehicle occupancy in the one or more regions of interest; and
determining a most likely number of occupants based on each determined vehicle occupancy; and
determining a most likely number of occupants based on each determined vehicle occupancy; and
transmitting the most likely number of occupants to a monitoring system of storing the vehicle occupancy
in memory.
transmitting the most likely number of occupants to a monitoring system or storing the vehicle occupancy in memory.
Claim 71 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223 in view of Liu et al (Chinese Pub. No. CN 110598438 A). In particular, Liu discloses anonymizing images carried out using deep convolutional networks at pp. 2-3 and p. 5 of the English translation. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to anonymize images using deep convolutional networks, as taught by Liu, when anonymizing captured images as recited by claim 8 of U.S. Patent No. 12,309,223. The motivation for doing so comes from Liu, which discloses that its system provides, “a cloud-based deep convolutional neural network protection outer packet data privacy protection system, under the premise of no privacy leakage to realize the safe calculation and classification of the data.” (p. 3). Therefore, it would have been obvious to combine Liu with claim 8 of U.S. Patent No. 12,309,223 to obtain the invention specified in this claim.
Claim 72 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 72
U.S. Patent No. 12,309,223
Claim 9
The system of claim 1, wherein anonymizing the captured images uses a non-invertible process that
strips personally identifiable information from the captured images.
The system of claim 8, where anonymizing the captured images comprises blurring detected faces.
Claim 73 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses anonymizing the captured images comprises at least one of obfuscating color or texture of skin (i.e., face) and distorting the aspect ratio at p. 35, l. 26 – p. 37, l. 29. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to anonymize captured images by obfuscating color or texture of skin (i.e., face) and distorting the aspect ratio, as taught by Badalone, when anonymizing captured images as recited by claim 8 of U.S. Patent No. 12,309,223. The motivation for doing so comes from Badalone, which discloses, “It will
be appreciated that this results in the silhouette of the person being removed as a uniquely identifying biometric feature that would otherwise be available for further processing. The distorting of the body region can be carried out by randomly changing the aspect ratio of the body region of the person. This has the effect of changing the visual appearance of the height 149 and width 150 of the person 15 within the distorted the body region. This represents another anonymizing aspect since the visual appearance of the height and width would no longer match the real-world silhouette of the person, thereby preventing identification based on this biometric feature.” (p. 36). Therefore, it would have been obvious to combine Badalone with claim 8 of U.S. Patent No. 12,309,223 to obtain the invention specified in this claim.
Claim 74 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses a degree of anonymization applied to the captured images generates anonymized images that are stripped of personally identifiable information and are suitable for use in supervised learning at p. 37. The motivation for the combination is the same as previously presented. Badalone does not specify the supervised learning is suitable for vehicle occupancy detection. The present limitation is functional; it defines the invention, “by what it does rather than by what it is.” In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). There is nothing intrinsically wrong with functional claiming. Id. Nevertheless, the Court of Appeals for the Federal Circuit has held that where structural similarities between an invention as claimed and the prior art justify an inference that the prior art may be inherently capable of performing the functional limitation, prima facie inherency has been established:
where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.
In re Schrieber, 128 F.3d 1473, 1478 (CAFC 1997), quoting, Swinehart, 439 F.2d at 213. In the present Application, the structure supporting the claimed function comprises a processor configured to anonymize an image by obfuscating color or texture of skin (i.e., face) and distorting the aspect ratio. These same structures are found in the Badalone reference at p. 35, l. 26 – p. 37, l. 29. Given the structural similarities between the process recited by the invention of the present claim and the disclosure in Badalone, the suitability of the supervised learning for vehicle occupancy detection is found to be inherent in the Badalone reference.
Claim 75 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223 in view of Graver (US PG Pub. No. 2022/0358835). As a matter of claim construction, the term “decoupling” has been interpreted according to its plain and ordinary meaning as separating. Graver discloses decoupling (i.e., extracting is separating) non-visual information from the captured images, wherein the non-visual information includes license plate numbers.at ¶ [0030] and ¶ [0086]. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to decouple (i.e., extract) non-visual information from the captured images, wherein the non-visual information includes license plate numbers, as taught by Graver, before transmitting the most likely number of occupants to a monitoring system as recited by claim 8 of U.S. Patent No. 12,309,223. The motivation for doing so comes from the prior art wherein, as a matter of common sense, one of ordinary skill in the art would infer that transmitting the number of occupants of a vehicle is information without value unless accompanied by information (such as a license plate number) indicating which particular vehicle has the determined number of occupants. Therefore, it would have been obvious to combine Graver with claim 8 of U.S. Patent No. 12,309,223 to obtain the invention specified in this claim.
Claim 76 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 76
U.S. Patent No. 12,309,223
Claim 8
The system of claim 1, wherein anonymizing the captured images comprises detecting occupants in the captured images.
(Incorporated from parent claim 1)
determining the vehicle occupancy based on the one or more regions of interest; and
determining a most likely number of occupants based on each determined vehicle
occupancy;
Determining a number of occupants in a vehicle necessary requires detecting the occupants. As such, the limitation of claim 76 of the present application is inherent in claim 8 of U.S. Patent No. 12,309,223.
Claim 77 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses the anonymized captured images are used to further train, tune, deploy, or audit the system at p. 37. The motivation for the combination is the same as previously presented.
Claim 78 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 78
U.S. Patent No. 12,309,223
Claim 8
The system of claim 1, further comprising a roadside vehicle detector; and wherein the processor is further configured to: receive a signal from the roadside vehicle detector.
(Incorporated from parent claim 1)
a processor, in communication with a memory, configured to: … receive the captured images from the first roadside imaging device; detect a vehicle in the captured images;
Claim 79 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 79
U.S. Patent No. 12,309,223
Claim 8
The system of claim 1, further comprising a first roadside light emitter emitting light in a first field of view; and
(Incorporated from parent claim 1)
A system for detecting vehicle occupancy, the system comprising: … ; a first roadside light emitter emitting light in the first field of view;
wherein the processor is further configured to:
a processor, in communication with a memory, configured to:
command the first roadside light emitter to emit light according to a first pattern for a first duration; and
command the first roadside light emitter to emit light according to a first pattern for a first duration;
command the first roadside imaging device to capture the one or more images according to a second pattern associated with the first pattern for a second duration associated with the first duration.
command the first roadside imaging device to capture one or more images according to a second pattern associated with the first pattern, during a second duration associated with the first duration;
Claim 80 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223 in view of Liu et al (Chinese Pub. No. CN 110598438 A). In particular, Liu discloses anonymizing images carried out using deep convolutional networks at pp. 2-3 and p. 5 of the English translation. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to anonymize images using deep convolutional networks, as taught by Liu, when anonymizing captured images as recited by claim 8 of U.S. Patent No. 12,309,223. The motivation for doing so comes from Liu, which discloses that its system provides, “a cloud-based deep convolutional neural network protection outer packet data privacy protection system, under the premise of no privacy leakage to realize the safe calculation and classification of the data.” (p. 3). Therefore, it would have been obvious to combine Liu with claim 19 of U.S. Patent No. 12,309,223 to obtain the invention specified in this claim.
Claim 81 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 81
U.S. Patent No. 12,309,223
Claim 19
The method of claim 12, wherein anonymizing the captured images uses a non-invertible process that strips personally identifiable information from the captured images.
(Incorporated from parent claim 12)
The method of claim 19, where anonymizing the captured images comprises blurring detected faces.
Claim 82 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses anonymizing the captured images comprises at least one of obfuscating color or texture of skin (i.e., face) and distorting the aspect ratio at p. 35, l. 26 – p. 37, l. 29. The motivation for the combination is the same as previously presented.
Claim 83 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses a degree of anonymization applied to the captured images generates anonymized images that are stripped of personally identifiable information and are suitable for use in supervised learning at p. 37. The motivation for the combination is the same as previously presented. Badalone does not specify the supervised learning is suitable for vehicle occupancy detection. The present limitation is functional; it defines the invention, “by what it does rather than by what it is.” In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). There is nothing intrinsically wrong with functional claiming. Id. Nevertheless, the Court of Appeals for the Federal Circuit has held that where structural similarities between an invention as claimed and the prior art justify an inference that the prior art may be inherently capable of performing the functional limitation, prima facie inherency has been established:
where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.
In re Schrieber, 128 F.3d 1473, 1478 (CAFC 1997), quoting, Swinehart, 439 F.2d at 213. In the present Application, the structure supporting the claimed function comprises a processor configured to anonymize an image by obfuscating color or texture of skin (i.e., face) and distorting the aspect ratio. These same structures are found in the Badalone reference at p. 35, l. 26 – p. 37, l. 29. Given the structural similarities between the process recited by the invention of the present claim and the disclosure in Badalone, the suitability of the supervised learning for vehicle occupancy detection is found to be inherent in the Badalone reference.
Claim 84 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223 in view of Graver (US PG Pub. No. 2022/0358835). As a matter of claim construction, the term “decoupling” has been interpreted according to its plain and ordinary meaning as separating. Graver discloses decoupling (i.e., extracting is separating) non-visual information from the captured images, wherein the non-visual information includes license plate numbers.at ¶ [0030] and ¶ [0086]. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to decouple (i.e., extract) non-visual information from the captured images, wherein the non-visual information includes license plate numbers, as taught by Graver, before transmitting the most likely number of occupants to a monitoring system as recited by claim 8 of U.S. Patent No. 12,309,223. The motivation for doing so comes from the prior art wherein, as a matter of common sense, one of ordinary skill in the art would infer that transmitting the number of occupants of a vehicle is information without value unless accompanied by information (such as a license plate number) indicating which particular vehicle has the determined number of occupants. Therefore, it would have been obvious to combine Graver with claim 19 of U.S. Patent No. 12,309,223 to obtain the invention specified in this claim.
Claim 85 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 85
U.S. Patent No. 12,309,223
Claim 19
The method of claim 12, wherein anonymizing the captured images comprises detecting occupants in the captured images.
(Incorporated from parent claim 12)
determining the vehicle occupancy in the one or more regions of interest; and determining a most likely number of occupants based on each determined vehicle occupancy;
Determining a number of occupants in a vehicle necessary requires detecting the occupants. As such, the limitation of claim 76 of the present application is inherent in claim 8 of U.S. Patent No. 12,309,223.
Claim 86 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223 in view of Badalone et al (Canadian Pub. No. CA 3 169 565 A1). In particular, Badalone discloses the anonymized captured images are used to further train, tune, deploy, or audit the system at p. 37. The motivation for the combination is the same as previously presented.
Claim 87 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 87
U.S. Patent No. 12,309,223
Claim 19
The method of claim 12, further comprising:
receiving a signal from a detector based on a first field of view of the first roadside imaging device prior to commanding the first roadside imaging device.
A method for detecting vehicle occupancy, the method comprising; … receiving the captured images from the first roadside imaging device; detecting a vehicle in the captured images;
Claim 88 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,309,223. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table:
Present Application
Claim 88
U.S. Patent No. 12,309,223
Claim 19
The method of claim 12, further comprising:
A method for detecting vehicle occupancy, the method comprising;
commanding a first roadside light emitter to emit light according to a first pattern for a first duration; and
commanding a first roadside light emitter to emit light according to a first pattern for a first duration;
commanding the first roadside imaging device to capture the one or more images according to a second pattern associated with the first pattern for a second duration associated with the first duration.
commanding the first roadside imaging device to capture images according to a second pattern associated with the first pattern, during a second duration associated with the first duration;
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID F DUNPHY whose telephone number is (571)270-1230. The examiner can normally be reached 9 am - 5 pm.
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/DAVID F DUNPHY/Primary Examiner, Art Unit 2673