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 .
Priority
Applicant’s claim for the benefit of prior-filed application (foreign priority application JP2023-117391 filed July 19, 2023) under 35 U.S.C. 110(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The Information Disclosure Statement filed on May 8, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-13, 19 and 21 in the reply filed on June 8, 2026 is acknowledged.
Status of Claims
This office action is in response to an election of claims entered on June 8, 2026 for the patent application 18/765,400 originally filed on July 8, 2024. Claims 1-13, 19 and 21 are elected. Claims 14-18, 20 and 22 are withdrawn. Claims 1-22 are pending.
Claim Interpretation
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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 “unit” are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “unit” are not being interpreted under 35 U.S.C. 112(f), 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), 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 limitations are:
Per claim 1:
“an image input section configured to input…”
“a detection section configured to detect…”
“a presentation form determination section configured to determine…”
Per claim 2:
“at least one information presentation unit of an information presentation unit…”
“an information presentation unit…”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they 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 these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
Claims rejected under 35 U.S.C. § 112(a)
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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
Per claim 1:
“an image input section configured to input…”
“a detection section configured to detect…”
“a presentation form determination section configured to determine…”
Per claim 2:
“at least one information presentation unit of an information presentation unit…”
“an information presentation unit…”
These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the specification fails to disclose the hardware and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Furthermore, the specification does not provide a disclosure of the hardware and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed “sections,” per claim 1 and “units” per claim 2 to perform the claimed functions. As such, claims 1 and 2 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 2-13 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1.
Claims rejected under 35 U.S.C. § 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.
Claims 1-13 and 21 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Per MPEP §2181, to satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850. A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
Per claim 1:
“an image input section configured to input…”
“a detection section configured to detect…”
“a presentation form determination section configured to determine…”
Per claim 2:
“at least one information presentation unit of an information presentation unit…”
“an information presentation unit…”
As such, 35 U.S.C. 112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed functions. Accordingly, the metes and bounds of the claim are not clear. Therefore, claims 1 and 2 are rejected 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-13 are also rejected 35 U.S.C. § 112(b), based on their respective dependencies to claim 1.
Claim 2 recites the limitation “an Information presentation unit,” repeatedly. The limitation “at least one Information presentation unit,” and “an Information presentation unit,” are originally introduced in claim 2. As such, the subsequent limitations are either (1) not following antecedent basis; or (2) are intended to be new limitations which ambiguously conflict with the previous limitation of claim 2. Therefore, claim 2 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 3-13 are also rejected 35 U.S.C. § 112(b), based on their respective dependencies to claim 2.
Claims 3, 5 and 6 recite the limitation “at least one Information presentation unit.” The limitation “at least one Information presentation unit,” and “an Information presentation unit,” are originally introduced in claim 2. As such, the subsequent limitations are either (1) not following antecedent basis (i.e. “the at least one Information presentation unit” or “the information presentation unit”); or (2) are intended to be new limitations which ambiguously conflict with the previous limitation of claim 2. Therefore, claims 3, 5 and 6 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 12 and 13 recite the limitation “an Information presentation unit.” The limitation “at least one Information presentation unit,” and “an Information presentation unit,” are originally introduced in claim 2. As such, the subsequent limitations are either (1) not following antecedent basis; or (2) are intended to be new limitations which ambiguously conflict with the previous limitation of claim 2. Therefore, claims 12 and 13 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 21 recites “a non-transitory computer-readable storage medium” and “a method.” Per M.P.E.P. § 2173.05(p): A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages...to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement... occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In Applicant’s case, claim 29 is reciting “a non-transitory computer-readable storage medium” and “a method.” Because Applicant is claiming two separate statutory classes together in a single claim, claim 21 is deemed indefinite. Therefore, claim 21 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
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 1-10, 12, 13, 19 and 21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “an image processing apparatus” (i.e. a machine), and claim 19 is directed to “a method” (i.e. a process), and claim 21 is directed to “non-transitory computer-readable storage medium” (i.e. a machine), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “determining a presentation form of presenting a tactile presentation area,” in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“input image data;
detect object types of objects and object areas of the objects based on the image data input; and
determine a presentation form of presenting a tactile presentation area corresponding to each object area detected, for each object type detected.”
Per claim 19:
“inputting image data;
detecting object types of objects and object areas of the objects based on the image data input by said inputting; and
determining a presentation form of presenting a tactile presentation area corresponding to each object area detected by said detecting for each of the object types detected by said detecting.”
Per claim 21:
“inputting image data;
detecting object types of objects and object areas of the objects based on the image data input by said inputting; and
determining a presentation form of presenting a tactile presentation area corresponding to each object area detected by said detecting for each of the object types detected by said detecting.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the claims do not include additional elements that either alone or in combination are sufficient to claim a practical application because to the extent that, e.g., “a computer,” “an image input section,” “a detection section,” and “a presentation form determination section,” are claimed, as these are merely claimed to generally link the use of a judicial exception to a particular technological environment or field of use. In other words, the claimed “determining a presentation form of presenting a tactile presentation area,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a computer,” “an image input section,” “a detection section,” and “a presentation form determination section,” are claimed, these are generic, well-known, and conventional elements. As evidence that these are generic, well-known, and a conventional elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Moreover, the element of “a computer,” is best described in paras. [0098] and [0108] as follows: “
“[0098] The image information-presenting apparatus 100 except for the tactile presentation section 130 realized by the temperature sensation display and the pin display can be realized e.g. by one personal computer (PC) including a compact disc (CD) drive or a card reader. Image data is recorded in a CD or a card, and the PC reads out the image data. The PC and the pin display are connected such that necessary information can be communicated by near-field wireless communication. In this case, for example, a communication system using Bluetooth (registered trademark) can be employed. Further, the image information-presenting apparatus 100 except the tactile presentation section 130 includes a transmission section.
“[0108] Embodiment(s) of the present invention can also be realized by a computer of a system or apparatus that reads out and executes computer executable instructions (e.g., one or more programs) recorded on a storage medium (which may also be referred to more fully as a ‘non-transitory computer-readable storage medium’) to perform the functions of one or more of the above-described embodiment(s) and/or that includes one or more circuits (e.g., application specific integrated circuit (ASIC)) for performing the functions of one or more of the above-described embodiment(s), and by a method performed by the computer of the system or apparatus by, for example, reading out and executing the computer executable instructions from the storage medium to perform the functions of one or more of the above-described embodiment(s) and/or controlling the one or more circuits to perform the functions of one or more of the above-described embodiment(s). The computer may comprise one or more processors (e.g., central processing unit (CPU), micro processing unit (MPU)) and may include a network of separate computers or separate processors to read out and execute the computer executable instructions. The computer executable instructions may be provided to the computer, for example, from a network or the storage medium. The storage medium may include, for example, one or more of a hard disk, a random-access memory (RAM), a read only memory (ROM), a storage of distributed computing systems, an optical disk (such as a compact disc (CD), digital versatile disc (DVD), or Blu-ray Disc (BD)™), a flash memory device, a memory card, and the like.”
This element is reasonably interpreted as a generic, well-known, and as a commercially available product having generic computer components as part of a generic computer which provides no details of anything beyond ubiquitous standard off-the-shelf equipment.
Finally, the elements of “an image input section,” “a detection section,” and “a presentation form determination section,” are insufficiently described in the written description of the specification as originally filed to provide any details as to what the elements actually consists of. At best, the Applicant’s claimed “an image input section,” “a detection section,” and “a presentation form determination section,” are reasonably understood as some form of “input device,” “analysis device,” and “an output device,” that are reasonably interpreted as generic computer components as part of a generic computer that are also commercially available which provides no details of anything beyond ubiquitous standard off-the-shelf equipment, since no further information is provided to describe any innovation in its design or implementation. Therefore, the Applicant’s own specification discloses ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-10, 12, and 13 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-10, 12, and 13 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1.
However, the limitations of claim 11 are subject-matter eligible. Specifically, when analyzing the claim as a whole, the limitations of “wherein the information presentation unit based on the warm and cold sensation is a temperature sensation display, and the information presentation unit based on the unevenness feeling is a pin display,” have been determined to amount to significantly more in the non-convention and non-generic arrangement of known, conventional elements. As such, amending claims 1, 19 and 21 (i.e. add the elements of claim 11) would constitute claims 1-10, 12, 13, 19 and 21 to also be subject-matter eligible. Presently claims 1-10, 12, 13, 19 and 21 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
The closest prior art of record is U.S. PG Pub. 2026/0050276 to Usami. However, the Usami prior art reference has an effective filing date October 27, 2025, which is after the Applicant’s instant application effective filing date of July 8, 2024, thus preventing the Usami prior art reference to be used as prior art. Therefore, claims 1-13, 19 and 21 are allowable subject matter, if no other statutory rejections remain. In the present case, claims 1-10, 12, 13, 19 and 21 stand rejected under 35 U.S.C. §101; claims 1-13 stand rejected under 35 U.S.C. §112(a); and claims 1-13 and 21 stand rejected under 35 U.S.C. §112(b).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715
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