DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-11, 14-19, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires “estimating a plurality of external environmental condition of an object and a probability of each external environmental condition.” However, the specification as filed does not provide an adequate explanation as to how this is performed. More specifically, the specification, Para. 37, states, “In the first example, as illustrated in FIG. 5, the external environmental condition such as ‘icing, heavy rain, or typhoon’ is estimated, and the probability of each external environmental condition is also estimated. In particular, in this example, it is determined that the external environmental condition is ‘icing’ among ‘icing, heavy rain, and typhoon’, and the probabilities of all estimated conditions are estimated as ‘icing 95%, heavy rain 3%, and typhoon 2%’.” However, this description does not adequately explain how the recited probability is determined. In particular, this disclosure fails to identify the parameters, factors, calculations, steps taken and decision criteria used to generate the probability value. The specification further fails to explain how the different environmental-condition input data are selected, processed, labeled to construct the machine-learning determination model. Nor does it describe the model architecture, training methodology, relationships between the input data and the resulting determination, or any other implementation details that sufficiently explain how the claimed functionality is achieved. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. However, the specification fails to convey with reasonable clarity that he or she was in possession of the invention as claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
In the present instance, the claim limitation defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
The written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could device an algorithm to perform the specialized programmed functions. For written description, the specifications filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
The dependent claims 4-10 are rejected for being dependent on the rejected claim 1.
Claim 11 requires “estimate a plurality of external environmental condition of an object and a probability of each external environmental condition.” However, the specification as filed does not provide an adequate explanation as to how this is performed. More specifically, the specification, Para. 37, states, “In the first example, as illustrated in FIG. 5, the external environmental condition such as ‘icing, heavy rain, or typhoon’ is estimated, and the probability of each external environmental condition is also estimated. In particular, in this example, it is determined that the external environmental condition is ‘icing’ among ‘icing, heavy rain, and typhoon’, and the probabilities of all estimated conditions are estimated as ‘icing 95%, heavy rain 3%, and typhoon 2%’.” However, this description does not adequately explain how the recited probability is determined. In particular, this disclosure fails to identify the parameters, factors, calculations, steps taken and decision criteria used to generate the probability value. The specification further fails to explain how the different environmental-condition input data are selected, processed, labeled to construct the machine-learning determination model. Nor does it describe the model architecture, training methodology, relationships between the input data and the resulting determination, or any other implementation details that sufficiently explain how the claimed functionality is achieved. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. However, the specification fails to convey with reasonable clarity that he or she was in possession of the invention as claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
In the present instance, the claim limitation defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
The written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could device an algorithm to perform the specialized programmed functions. For written description, the specifications filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
The dependent claims 14-19 are rejected for being dependent on the rejected claim 11.
Claim 21 requires “estimating a plurality of external environmental condition of an object and a probability of each external environmental condition.” However, the specification as filed does not provide an adequate explanation as to how this is performed. More specifically, the specification, Para. 37, states, “In the first example, as illustrated in FIG. 5, the external environmental condition such as ‘icing, heavy rain, or typhoon’ is estimated, and the probability of each external environmental condition is also estimated. In particular, in this example, it is determined that the external environmental condition is ‘icing’ among ‘icing, heavy rain, and typhoon’, and the probabilities of all estimated conditions are estimated as ‘icing 95%, heavy rain 3%, and typhoon 2%’.” However, this description does not adequately explain how the recited probability is determined. In particular, this disclosure fails to identify the parameters, factors, calculations, steps taken and decision criteria used to generate the probability value. The specification further fails to explain how the different environmental-condition input data are selected, processed, labeled to construct the machine-learning determination model. Nor does it describe the model architecture, training methodology, relationships between the input data and the resulting determination, or any other implementation details that sufficiently explain how the claimed functionality is achieved. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. However, the specification fails to convey with reasonable clarity that he or she was in possession of the invention as claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
In the present instance, the claim limitation defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
The written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could device an algorithm to perform the specialized programmed functions. For written description, the specifications filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
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 JAI M LEE whose telephone number is (571)272-5870. The examiner can normally be reached M-F 9:5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth Vanderpuye can be reached at 571-272-3078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAI M. LEE
Examiner
Art Unit 2634
/JAI M LEE/Examiner, Art Unit 2634
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