DETAILED ACTION
The instant application having Application No. 18/702803 filed on April 19, 2024 is presented for examination by the examiner.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
On March 25, 2026, a Requirement for Restriction/Election was sent out requiring an election between Group I (claims 1-9) and Group II (claims 10-15). Applicants’ election without traverse of Group II (claims 10-15) in the reply filed on June 22, 2026 is acknowledged. However, upon further examination, the Examiner noticed that the Requirement for Restriction/Election contained a typographical error and should have required an election between Group I (claims 1-10) and Group II (claims 11-15). The Examiner contacted the attorney of record (Bradley Lytle, Reg. No. 40073) on September 2, 2026 about this issue and Attorney Lytle elected claims 11-15 over the phone.
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 .
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, found at http://www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax, which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Applicant is also encouraged to contact the Examiner for an Interview, should the Applicant determine that clarifying and further illustrating the distinguishing features of the instant application may further the prosecution.
Oath/Declaration
The applicant’s oath/declaration has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609(C), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
Priority
As required by M.P.E.P. 201.14(c), acknowledgement is made of applicant’s claim for priority based on applications filed on November 22, 2021 (JP2021-189367).
Claim Analysis – 35 USC § 112 (f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “image processing unit” in claims 11-15 and “control unit” in claims 11-14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 11-15 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification does not clearly show the corresponding structure of the claimed elements. Therefore, the claims are rejected under 112(b) for failing to clearly link or associate the disclosed structure to the claimed function such that one of ordinary skill in the art would recognize what structure is used to perform the claimed function. Please also see the 112(b) rejection below for further details.
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 11-15 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 pre-AIA the applicant regards as the invention.
Claim limitation “image processing unit” in claims 11-15 and “control unit” in claims 11-14 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The examiner has cited particular examples of 35 U.S.C. 112 rejections above. It is respectfully requested that, in preparing responses, the applicant check the claims for further 35 U.S.C. 112 rejections in the event that it was inadvertently missed by the examiner to advance prosecution.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 11-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2021/174155) in view of NPL “Visual privacy protection methods: A survey” (provided in the IDS dated April 2, 2025) hereinafter referred to as Padilla-Lopez.
As per claims 11 and 15, Smith discloses An imaging device (Smith, paragraph 561, teaches a smart camera that can detect an object in the cameras field of view using machine learning.) comprising:
an image processing unit configured to perform, using an artificial intelligence model, image processing on a captured image obtained by capturing an image of a subject (Smith, paragraph 380, teaches using machine learning to detect a person in an image of pre-processing image data from a camera.); and
a control unit configured to [perform] a level of security processing for the output data (Smith, paragraph 375, teaches using a privacy preserving demographic system to identify human demographics in the image while preserving privacy as the camera sensors can be used to capture top-down views instead of frontal views. Smith, paragraph 609, also teaches encrypting the data.)
Smith teaches preserving privacy when capturing images of people. However, Smith does not specifically teach “switch[ing], on a basis of output data of the image processing, a level of security processing for the output data”.
Padilla-Lopez discloses switch, on a basis of output data of the image processing, a level of security processing for the output data (Padilla-Lopez, section 3.4, teaches image redaction or image encryption by redacting or encrypting a portion of the image to “conceal private information concerning the subjects appearing on [the image]”. Therefore, if the image contains sensitive information it will be redacted or encrypted and if the image does not contain sensitive information it will not be redacted or encrypted.)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Padilla-Lopez with Smith. Smith teaches performing privacy preserving on captured images of people. Padilla-Lopez teaches redacting or encryption a portion of an image to “conceal private information concerning the subjects appearing on [the image]”. Therefore, it would have been obvious for the system of Smith to redact or encrypt the “sensitive regions of an image such as faces, bodies, number plates, etc. to conceal private information concerning the subjects appearing on it” (Padilla-Lopez section 3.4).
As per claim 12, Smith in view of Padilla-Lopez discloses The imaging device according to claim 11, wherein the security processing includes processing of encrypting the output data, and the control unit switches an encryption level of the output data as switching of the level of the security processing (Padilla-Lopez, section 3.4, teaches image redaction or image encryption by redacting or encrypting a portion of the image to “conceal private information concerning the subjects appearing on [the image]”. Therefore, if the image contains sensitive information it will be redacted or encrypted and if the image does not contain sensitive information it will not be redacted or encrypted. Smith, paragraph 609, also teaches encrypting the data.)
As per claim 14, Smith in view of Padilla-Lopez discloses The imaging device according to claim 11, wherein the security processing includes processing of attaching electronic signature data for authenticity determination to the output data, and the control unit switches whether or not to attach the electronic signature data to the output data as switching of the level of the security processing (Smith, paragraphs 447 and 622, teaches attaching an electronic signature to perform authentication.)
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Padilla-Lopez and further in view of Takashina (JP 2014220617) (machine translation has been provided).
As per claim 13, Smith in view of Padilla-Lopez discloses The imaging device according to claim 12, wherein the control unit encrypts the output data in a case where the output data is image data … (Padilla-Lopez, section 3.4, teaches image redaction or image encryption by redacting or encrypting a portion of the image to “conceal private information concerning the subjects appearing on [the image]”. Therefore, if the image contains sensitive information it will be redacted or encrypted and if the image does not contain sensitive information it will not be redacted or encrypted. Smith, paragraph 609, also teaches encrypting the data. As Smith and Padilla-Lopez are cameras or image processing devices, they only process images which will be redacted/encrypted based on the content of the image (as in the combination of references). Since they do not process data other than images that other data can be considered as not encrypted.)
However, Smith in view of Padilla-Lopez does not specifically teach “does not encrypt the output data in a case where the output data is specific data other than image data”.
Takashina discloses wherein the control unit encrypts the output data in a case where the output data is image data, and does not encrypt the output data in a case where the output data is specific data other than image data (Takashina, page 5, teaches encrypting the transfer image using the information processing device identification information as the encryption key and then transmitting the transfer image (which is encrypted) along with the imaging device identification information (which is not encrypted).)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Takashina with Smith in view of Padilla-Lopez. Smith in view of Padilla-Lopez teaches redacting or encryption a portion of an image to “conceal private information concerning the subjects appearing on [the image]”. Takashina teaches transmitting image data (which is encrypted) and non-image data (which is not encrypted). Therefore, it would have been obvious for the system of Smith in view of Padilla-Lopez to redact or encrypt the “sensitive regions of an image such as faces, bodies, number plates, etc. to conceal private information concerning the subjects appearing on it” during transmission while also not encrypting other non-sensitive non-image data as this would require less processing power by not encrypting data that is not sensitive.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes:
Tan (US 2020/0077003) – teaches encrypting or not encrypting an image depending on the security level of the application that the image is being sent to.
Shimba (US 11516009) – teaches an encryption policy to change the encryption method being used based on the security level of the data being encrypted.
Fukuhara (US 2015/0161376) – teaches having low security documents that can be stored and high security documents that must be deleted after processing.
Holman (US 2015/0106628) – teaches allowing or denying the manipulation of an encrypted image depending on the security level of the image.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yin-Chen Shaw can be reached on 5712728878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/John B King/
Primary Examiner, Art Unit 2498
Prosecution Insights