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 .
Election/Restrictions
Applicant’s election without traverse of Species I (claim 2) in the reply filed on Mar 4th 2026 is acknowledged. The application has pending claims 1-10 (withdrawn claims 3-5 are withdrawn from further consideration).
Claim Rejections - 35 USC § 112(b)
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 1, 2, and 6–10 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.
Regarding independent claims 1, 9 and 10, each claim recites selecting “a representative image that best represents the lesion, from a plurality of still images determined to correspond to the same lesion”. However, the phrase “best represents the lesion” is a subjective and relative phrase, and the claim does not recite an objective standard, rule, threshold, ranking criterion, score, measurement, or algorithm for determining when one still image “best represents” the lesion as compared with other still images. The specification describes multiple different possible criteria for selecting a representative image, including a still image where the lesion is largest, most centered, most in focus, or most likely to be a lesion. These alternatives demonstrate that “best represents” can depend on different, non-equivalent selection criteria. Because claim 1 does not specify which criterion is used, the metes and bounds of the claimed “representative image that best represents the lesion” are not reasonably certain. Although claim 2 identifies one possible criterion for representative-image selection, claim 2 still depends from and incorporates the indefinite limitation of claim 1. In addition, the phrase “the lesion is the largest” is unclear because the claim does not specify whether “largest” is determined based on apparent lesion area in the image, pixel area, lesion diameter, bounding-box size, actual physical size, or another measurement. Accordingly, the scope of claim 2 is not reasonably certain, fail to cure the deficiency. Because claims 6-8 depend from claim 1, they inherit this ambiguity, fail to cure the deficiency.
Regarding claim 6, the claim recites that the processor is further configured to “display an image in which the plurality of still images determined to correspond to the same lesion and the representative image selected from the plurality of still images are shown in association with an imaging time of the endoscopic image.” This limitation is meant by “display an image in which” the plurality of still images and the representative image are shown. Further, the claim recites “an imaging time of the endoscopic image” in the singular, while the displayed items include a plurality of still images. It is therefore unclear whether each still image is associated with its own imaging time, whether only the representative image is associated with an imaging time, or whether all still images are associated with a single imaging time. Thus, the scope of claim 6 is not reasonably certain.
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, 2, and 6–10 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception without significantly more. The flow chart in MPEP §2106, Subject Matter Eligibility Test for Products and Processes, is referred to for establishing ineligible subject matter. The USPTO’s current subject matter eligibility guidance is found in MPEP §§2103–2106.07, and the Office’s 2024 AI SME Update and August 4, 2025 memorandum further explain the analysis for computer-implemented and AI-related claims.
Step 1: Statutory Category
Independent claim 1 recites an information processing device comprising a memory and a processor, which falls within the machine category of statutory subject matter. Independent claim 9 recites an information processing method, which falls within the process category. Independent claim 10 recites a non-transitory computer-readable recording medium storing a program, which falls within the manufacture category. Therefore, the claims satisfy Step 1.
Step 2A, Prong One: Judicial Exception
Claim 1 recites, in substance, acquiring endoscopic image information, acquiring still images of a lesion, determining the identity of the lesion included in the plurality of still images, and selecting a representative image that best represents the lesion from still images determined to correspond to the same lesion. These limitations recite the abstract idea of collecting image information, evaluating / comparing the information to determine whether images correspond to the same lesion, and selecting a representative image based on that evaluation.
Under the broadest reasonable interpretation, the limitations of determining whether still images correspond to the same lesion and selecting an image that “best represents the lesion” encompass observations, evaluations, judgments, and opinions that can practically be performed by a person reviewing endoscopic still images, with or without pen and paper. For example, a doctor or reviewer may look through multiple endoscopic images, determine which images show the same lesion, and select the image that best represents that lesion for an examination report. Accordingly, these limitations fall within the mental-process grouping of abstract ideas.
Claim 2 further recites that the representative image is the still image in which the lesion is largest among the plurality of still images determined to correspond to the same lesion. This limitation merely specifies a criterion for the same abstract selection process, i.e., comparing lesion appearances / sizes in images and selecting the image having the largest lesion. Such comparison and selection are still an evaluation or judgment based on image information.
Claim 6 recites displaying an image in which the plurality of still images and the selected representative image are shown in association with an imaging time. This limitation is directed to organizing and presenting the results of the abstract image-review process.
Claim 7 recites that the plurality of still images includes still images captured based on a photographing instruction of an examiner. This limitation merely specifies the source of collected image information.
Claim 8 recites that the plurality of still images includes still images captured automatically by the processor that detects and captures a lesion in the endoscopic image. This limitation generically automates the acquisition of images relating to a detected lesion, but does not recite any particular lesion-detection model, feature extraction technique, segmentation technique, thresholding method, training method, or other technical image-processing improvement.
Independent claims 9 and 10 recite substantially the same abstract idea in method and computer-readable-medium form, respectively. Therefore, claims 1, 2, and 6–10 recite a judicial exception.
Step 2A, Prong Two: No Integration into a Practical Application
The claims do not integrate the judicial exception into a practical application. The additional elements include a generic memory, a generic processor, endoscopic image data, still image data, imaging time information, display of information, and execution of instructions by a computer. These elements merely use a computer as a tool to acquire, analyze, select, and display information.
This rejection is not based on a bare assertion that the claim merely uses a computer as a tool. Rather, consistent with the USPTO’s August 4, 2025 memorandum and the Desjardins-related guidance, the claim has been analyzed as a whole to determine whether it reflects an improvement in the functioning of the computer, an improvement to a learning model, or an improvement to another technology or technical field.
Here, the claims do not recite an improvement to an endoscope, image sensor, image acquisition hardware, display hardware, computer memory, processor operation, data structure, lesion-detection model, image-recognition model, feature extraction process, training process, or segmentation technique. Instead, the claims use generic computer processing to automate the selection of a representative endoscopic still image for use in an examination / reporting workflow. The specification describes the problem as reducing the burden on the doctor / examiner when selecting an image for an examination report, rather than solving a technological problem in endoscopic imaging or computer operation.
The recited “endoscopic image” and “lesion” limit the abstract idea to a particular technological/medical environment, but limiting an abstract idea to a particular field of use does not integrate the exception into a practical application. The recited acquisition of image data and display of selected image information are insignificant extra-solution activity. The claims do not impose any meaningful limitation on how the computer performs the image comparison, same-lesion determination, or representative-image selection beyond the desired result.
Accordingly, the claims are directed to the judicial exception and do not integrate the exception into a practical application.
Step 2B: No Significantly More / No Inventive Concept
The claims do not recite additional elements, individually or as an ordered combination, that amount to significantly more than the judicial exception.
The memory and processor are generic computer components. The specification describes the information processing device as including ordinary computer components such as a processor, memory, interface, input/output devices, database, and program execution environment. The claims do not require any unconventional computer hardware, any specialized endoscopic hardware, or any unconventional interaction between hardware components.
The limitations: acquiring endoscopic image data, acquiring still images, determining same-lesion identity, selecting a representative image, displaying images with imaging time, using examiner-captured images, and automatically capturing images based on lesion detection, are data-gathering, information-analysis, selection, and display steps performed using generic computer functionality. These steps do not add a technological inventive concept; they merely apply the abstract idea using generic computer implementation.
Claim 2’s “largest lesion” selection criterion does not add significantly more because it is part of the abstract evaluation and selection itself. Claim 6’s display of images with imaging time is conventional presentation of results. Claim 7’s examiner photographing instruction merely identifies a source of the still images. Claim 8’s automatic capture by a processor merely automates data acquisition based on lesion detection without reciting a particular technical mechanism for doing so.
When considered as an ordered combination, the claims amount to no more than using a generic computer to collect endoscopic image data, evaluate/group images by lesion identity, select a representative image, and display the selected information. The ordered combination therefore does not transform the abstract idea into patent-eligible subject matter.
Accordingly, claims 1, 2, and 6–10 are directed to a judicial exception without significantly more and are rejected under 35 U.S.C. §101.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 6–10 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by Usuda (Usuda et al, US 2021/0042926 A1, 2021), as provided by the applicant in the IDS filed 5/9/2024.
Regarding claim 1, Usuda teaches an information processing device comprising:
a memory configured to store instructions; and
a processor configured to execute the instructions to:
( [Fig. 2], [0065], [0080]: ROM 48 / 62, processor control unit 61, storage unit 67, and the processor control unit reads necessary programs and data from ROM and performs processes. )
acquire an endoscopic image;
( [0011]: acquires endoscopic images. )
acquire a plurality of still images obtained by imaging a lesion included in the endoscopic image;
( [0011], [0088]: detects lesion images representing lesions in the endoscopic images acquired. )
determine an identity of the lesion included in the plurality of still images; and
( [0011], [0090], [0098]: the clustering unit compares endoscopic images saved and generates a group of endoscopic images having the same lesion on the basis of a degree of correlation, and identification ID information is added to each endoscopic image. )
select a representative image that best represents the lesion, from a plurality of still images determined to correspond to the same lesion.
( [0011]: a representative image selection unit that selects, for each group, a representative image from among the endoscopic images in the group. )
Regarding claim 6, Usuda teaches the information processing device according to claim 1, wherein the processor is further configured to display an image in which the plurality of still images determined to correspond to the same lesion and the representative image selected from the plurality of still images are shown in association with an imaging time of the endoscopic image.
( [Fig 6], [Fig. 9], [0087], [0091], [0106], [0112]: the display unit displays a list of representative images saved in the saving unit; the endoscopic images are acquired with supplementary information including the time at which the endoscopic image was captured, and that the endoscopic image and supplementary information are saved in the saving unit for display. )
Regarding claim 7, Usuda teaches the information processing device according to claim 1, wherein the plurality of still images includes still images captured on the basis of a photographing instruction of an examiner.
( [0064], [0083]: handheld operation part, which has a still-image capture button, operated in response to an image capture instruction for a still image or moving image. )
Regarding claim 8, Usuda teaches the information processing device according to claim 1, wherein the plurality of still images includes still images captured automatically by the processor that detects and captures the lesion in the endoscopic image.
( [Fig. 10], [0080], [0086-0088]: the processor control unit reads necessary programs and data from ROM and performs automatic detection-processing flow: image acquisition unit acquires endoscopic images from the endoscope in real time, detection unit detects lesion images representing lesions in those acquired endoscopic images, saving unit saves acquired images, grouped endoscopic images, and information regarding lesion images detected by detection unit. )
Regarding claims 9-10. The rationale provided for claim 1-2 and 6-8 is incorporated herein. In addition, the system of claims 1-2 and 6-8 correspond to the method of claim 9, as well as the non-transitory computer-readable recording medium of claim 10, and performs the steps disclosed herein. Therefore, the claims are all rejected.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2 is rejected under 35 U.S.C. §103 as being unpatentable over Usuda in view of Mankovich (Makovich et al, US 2015/0235365 A1, 2015).
Regarding claim 2, Usuda teaches the information processing device according to claim 1,
Usuda discloses some criterions for representative-image selection but fails to discloses expressly where Mankovich teaches:
wherein the representative image is a still image in which the lesion is the largest among the plurality of still images that are determined to correspond to the same lesion.
( [0002], [0007], [0045]: Mankovich teaches annotations including lesion measurements, and typically selects a few representative images as key images. Mankovich further teaches that the goal of the radiologist or healthcare practitioner is to annotate an image slice with a best example of a finding, and that the best example can include an image slice with the most well-defined border to the lesion or an image slice which shows a maximum dimension of the lesion. )
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Usuda’s representative-image selection unit to select, from the same-lesion image group, the image in which the lesion is largest, as taught by Mankovich, because Usuda already teaches selecting an appropriate representative image from a same-lesion endoscopic image group according to preset visual / clinical selection criteria, and Mankovich teaches that, in medical lesion-image review, a best representative / key image of a lesion may be the image showing the maximum dimension of the lesion. A person of ordinary skill in the art would have been motivated to use Mankovich’s maximum-lesion-dimension criterion in Usuda’s same-lesion endoscopic image group to provide a representative image that more clearly depicts the lesion for clinical review, annotation, and report preparation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEN KUDO whose telephone number is (571)272-4498. The examiner can normally be reached M-F 8am - 5pm.
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, Vincent Rudolph can be reached at 571-272-8243. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
KEN KUDO
Examiner
Art Unit 2671
/KEN KUDO/Examiner, Art Unit 2671
/VINCENT RUDOLPH/Supervisory Patent Examiner, Art Unit 2671
Prosecution Insights