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 with traverse of invention I in the reply filed on 3/18/26 is acknowledged. The traversal is on the ground(s) that there is no search burden. This is not found persuasive because the inventions are clearly distinguished from each other in terms of both classification and subject matter. As noted in the statement of search burden in the restriction of record, such divergent subject matter is the reason a serious search burden exists. Further, applicant’s arguments that the invention is anticipated/made obvious by individual references has no bearing whatsoever on the search burden. A search burden is determined by what areas must be searched to complete a thorough search, not by how little needs to be searched find an anticipatory reference for a given set of limitations.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/18/26
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 1-8 and 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of a mental process without significantly more. The independent claim(s) recite(s) a mental process as three steps: 1) obtaining data; 2) selecting an area in a printed pattern with a defect; and 3) determining another area in the printed pattern not containing the defect. All three of these steps could easily be performed mentally, and are commonly applied together as a mental process in fields as diverse as sewing (examining stitches in the area around a defect), cartography (finding a known location near a mistake in the map), and industrial inspection (checking for fiducials in areas of an image outside of identified defects).
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Further, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
In the instant case, the steps and functions of the independent claims can be performed by the human mind or be a human using pen and paper. The addition of a computer to implement such steps, or the embodiment of such steps in a computer readable medium, does not change the classification of these steps as mental process type abstract ideas. Versata Dev. Group. v. SAP Am., Inc., 793 F.3d 1306, 115 USPQ2d 1681 (Fed. Cir. 2015).
The dependent claims do not any features that would change the abstract idea into something more. Dependent claims 2-8 and 17-20 describe details of the pattern to be inspected and search criteria, but all such limitations simply specify the data that is to be considered mentally.
Claims 15 and 16 describe an imaging system, but the imaging system is not tied to any of the functions or steps of the claimed invention. At best, the recitation ties the patent to the field of imaging technologies. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). In the instant case, a mental process is not affected by the applicant’s requirement that a generic imaging device be involved. Thus, the generic recitations of an imaging device are insufficient to make the claims eligible.
Considered individually, and as an ordered combination, the claims recite various features, but none of them is significantly more than just the above noted mental process. Simply put, the claims do not require that anything other than a mental process occur. To the extent that the process must occur in a computer or in presence of an imaging device, these limitations do not render the abstract idea patent eligible.
Finally, it is noted that this judicial exception is not integrated into a practical application because it is not applied to anything external to the abstract idea. In particular, the invention appears to be directed to finding an area in a printed pattern. Finding something, in of itself, is not an application at all, where, as here, nothing happens once the area is found.
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 15-20 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. Claims 15 and 16 recite “an imaging device” twice. As such, there is improper antecedent basis in the claims, and the claims are indefinite.
Claims 1-8 and 16-20 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. The claims all describe a “Hot Spot” as well as obtaining and selecting the same. However, the application only defines a “Hot Spot” as having a higher failure potential than other locations. This is a subjective measure, since there is no context for what is failing and no boundaries for what entails failure. As such, different practitioners of ordinary skill in the art would necessarily come to different conclusions as to whether a particular area included a “Hot Spot.” Since one of ordinary skill cannot reasonably determine the scope of the claimed “Hot Spot” or discern “failure potential,” the claims are rejected for being indefinite.
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 1-4 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2008/0159609 A1 [Miyamoto].
Regarding Claim 1:
Miyamoto discloses a non-transitory computer-readable medium that stores a set of instructions that is executable by at least one processor of an apparatus to cause the apparatus to perform operations (para 61) comprising:
obtaining hot spot (HS) location information with respect to a printed pattern (paras 68, 78-79, Fig. 4b (EP));
obtaining local focus point (LFP) search criteria for searching the printed pattern to determine a LFP for an imaging device (paras 69, 78-79, Fig. 4b (AP));
selecting a HS area in the printed pattern that contains a HS (Fig. 4b (EP)); and
determining the LFP proximate to the HS area based on the LFP search criteria, the LFP not containing the HS (Fig. 4b (AF)).
Regarding Claim 2:
Miyamoto discloses the computer-readable medium of claim 1, wherein the HS is a location on the printed pattern that has a higher failure potential than other locations on the printed pattern. Para 7, the EP is at a critical point, which is more likely to have certain failures, such as line pattern width discrepancies, than areas without line pattern widths.
Regarding Claim 3:
Miyamoto discloses the computer-readable medium of claim 1, wherein the LFP is an area on the printed pattern that meets the LFP search criteria and is nearest to the HS. Fig. 4b (AF)).
Regarding Claim 4:
Miyamoto discloses the computer-readable medium of claim 1, wherein the LFP search criteria comprises one or more of pattern density, polygon size, polygon count, or polygon orientation. Para 72 describes pattern shape that allows easy detection as a criteria for an AF point. Ease of detection is a function of polygon size, as only certain sizes are easily imaged.
Regarding Claim 15:
Miyamoto discloses a system comprising:
an imaging device (abstract);
at least one programmable processor (para 61); and
a non-transitory computer-readable medium that stores a set of instructions that is executable by at least one processor of the system to cause the system to perform operations (para 61) comprising:
determining an area of interest on a printed pattern (paras 68, 78-79, Fig. 4b (EP));
obtaining local focus point (LFP) search criteria for searching the printed pattern to determine a LFP for an imaging device (paras 69, 78-79, Fig. 4b (AF));
determining the LFP proximate to the area of interest based on the LFP search criteria, the LFP not containing the area of interest (Fig. 4b (AF)).
Regarding Claim 16:
Miyamoto discloses a system comprising:
an imaging device (abstract);
at least one programmable processor (para 61); and
a non-transitory computer-readable medium that stores a set of instructions that is executable by at least one processor of the system to cause the system to perform operations (para 61) comprising:
obtaining hot spot (HS) location information with respect to a printed pattern (paras 68, 78-79, Fig. 4b (EP));
obtaining LFP search criteria for searching the printed pattern to determine a local focus point (LFP) for an imaging device (paras 69, 78-79, Fig. 4b (AF));
selecting a HS area in the printed pattern that contains a HS (Fig. 4b (EP)); and
determining the LFP proximate to the HS area based on the LFP search criteria, the LFP not containing the HS (Fig. 4b (AF)).
Regarding Claim 17:
Miyamoto discloses the system of claim 16, wherein the HS is a location on the printed pattern that has a higher failure potential than other locations on the printed pattern. Para 7, the EP is at a critical point, which is more likely to have certain failures, such as line pattern width discrepancies, than areas without line pattern widths.
Regarding Claim 18:
Miyamoto discloses the system of claim 16, wherein the LFP is an area on the printed pattern that meets the LFP search criteria and is nearest to the HS. Fig. 4b (AF)).
Regarding Claim 19:
Miyamoto discloses the system of claim 16, wherein the LFP search criteria comprises one or more of pattern density, polygon size, polygon count, or polygon orientation. Para 72 describes pattern shape that allows easy detection as a criteria for an AF point. Ease of detection is a function of polygon size, as only certain sizes are easily imaged.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2012/0212602 A1 teaches a similar system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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