DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The Information Disclosure Statement filed 18 April 2025 has been fully considered by Examiner. An annotated copy is included herewith.
Claim Interpretation
3. 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: “encoder configured for” in claims 17, 19 and 20.
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.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 17-23 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the scope of the claims includes software per se, which is not one of the statutory categories of invention. See MPEP § 2106.03(I), ‘Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations …’
Claim 17 recites an apparatus. However, the apparatus only comprises an encoder which performs a sequence of steps. Therefore, the apparatus is merely the encoder. An encoder, as generally understood in the art, and as can be seen from the present Specification (see, for example, page 8, lines 16-23 and page 9, lines 13-25), the recited encoder is merely a part of the MPEG software. Furthermore, there is nothing additional in claim 17, or in any of claim 18-23 which incorporate the subject matter of claim 17 by dependency, which requires that the encoder be something other than software. Therefore, since the subject matter of claims 17-23 includes embodiments which are merely software per se, claims 17-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
8. Claims 1-16 are allowed. Additionally, claims 17-23, though rejected above under 35 U.S.C. §§ 112(a) and 101, distinguish over the prior art
The following is an examiner’s statement of reasons for allowance:
Claim 1 recites a ‘method programmed in a non-transitory memory of a device comprising: finding a set of voxels; computing a Gray-level Co-occurrence Matrix (GLCM) based on colors of two furthest voxels in the set of voxels for each GLCM channel; and calculating texture metrics from the GLCM.’
While there is some related prior art, Examiner has not discovered prior art which fully teaches claim 1, either singly or in an obvious combination. Relevant prior art includes:
A. Lasserre, US-2024/0242436-A1, which teaches enhancing voxelization of triangle primitives, which includes finding a set of voxels (see, for example, fig 1(126), figs 11-13, [0040], [0054], and [0097] of Lasserre – voxel generation and parameterization); computing a set of 3D encoded values based on colors of two furthest vertices in each of the set of voxels (see, for example, fig 11(1120,1121), fig 12(1220-1223), fig 13, [0102], [0105]-[0106], and [0109] of Lasserre); and calculating texture metrics from the set of 3D encoded values (see, for example, [0033] and [0037] of Lasserre).
B. Chen et al., US-2023/0039554-A1, which teaches computing a Gray-level Co-occurrence Matrix, along with related factors such as texture means, optimal features, nearest neighbor classification, and so on, based on point cloud data obtained from LIDAR sensing data.
C. Kwong et al., US-2025/0045970-A1, which teaches feature extraction from point cloud data, and point cloud compression techniques/
D. Taquet et al., US-2025/0029283-A1, which teaches encoding 3D point cloud data as voxels according to determined triangles and intersection points.
However, none of the prior art cited above, nor any other prior art discovered by Examiner, fully teaches claim 1. Therefore, claim 1 distinguishes over the prior art. Claims 9 and 17 each distinguish over the prior art for the reasons set forth with respect to claim 1. Claims 2-8, 10-16, and 18-23 each distinguish over the prior art at least due to their respective dependencies.
Claims 1-23 each distinguish over the prior art. There are no outstanding grounds of rejection or objection with respect to claims 1-16. Accordingly, claims 1-16 are allowed. Claims 17-23 each distinguish over the prior art, but are rejected above under 35 U.S.C. §§ 112(a) and 101.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James A Thompson whose telephone number is (571)272-7441. The examiner can normally be reached M-F 8am-6pm.
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/JAMES A THOMPSON/Primary Examiner, Art Unit 2615
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