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 .
Information Disclosure Statement
1. The information disclosure statement (IDS) submitted on 08/08/2024 has been considered by the examiner.
Claim Interpretation
2. 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.
3. 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.
4. 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: “processing device(s)” in claims 10 and 18.
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.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-3 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 17 of U.S. Patent No. 12,062,176 B2 (herein referred to as Gupta). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, claim 1 has been similarly analyzed and rejected as per claim 17 of Gupta (claim 17 is a combination of subject matter of claim 17 and 10).
Gupta discloses A method comprising: determining a plurality of modifications to a digital image made to generate a modified digital image (claim 10 – col. 37, lines 18-21);
determining non-contiguous modified pixel regions in the modified digital image that define boundaries of the plurality of modifications, and, generating edited region indicators comprising shapes corresponding to shapes of the non-contiguous modified pixel regions (claim 10 – col. 37, lines 22-30; claim 17 – col. 39, lines 4-8); and
providing, in a graphical user interface, visual indications of the plurality of modifications between the digital image and the modified digital image (claim 10 – col. 37, lines 41-44).
Regarding claim 2, Gupta discloses the method as recited in claim 1, wherein determining the non-contiguous modified pixel regions in the modified digital image comprises determining a non-contiguous modified pixel region consisting of pixels in the modified digital image that are modified compared to corresponding pixels in the digital image (claim 10, lines 18-28, 41-44).
Regarding claim 3, Gupta discloses the method as recited in claim 2, further comprising: generating one or more change records indicating one or more modified pixels associated with a given modification in response to determining that the given modification was made to the digital image; wherein determining the non-contiguous modified region is based on the one or more modified pixels indicated in the one or more change records (claim 10 – col. 37, lines 11-13 and lines 22-28).
Regarding claim 18, claim 18 has been similarly analyzed and rejected as per citations made (with respect to claims 10 and 17 in Gupta) in the rejection of claim 1 of the instant invention.
Regarding claim 19, claim 19 has been similarly analyzed and rejected as per citations made (with respect to claim 10 in Gupta) in the rejection of claim 12 of the instant invention.
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claims 1-3, 5, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Clediere, U.S. Patent Publication No. 2011/0044558 A1, and further in view of Katukam et al., 2015, “Image Comparison Methods & Tools: A Review” (pp. 35-42).
Regarding claim 1, Clediere discloses a method comprising: determining a plurality of modifications to a digital image made to generate a modified digital image (para 0017 – the modified pixels (203) are compared with the input pixels 201; where 203 is considered here as modified digital image, and input pixels 201 as digital image; para 0018 - The pixel-comparator (204) identifies those pixels that have been changed by the correction process (202). This can be achieved by taking the difference between pixel values, typically luminance value differences, though any convenient measure that is affected by the correction process (202) can be used);
determining non-contiguous modified pixel regions in the modified digital image that define boundaries of the plurality of modifications (para 0016 – the process of the invention analyzes each region separately and so the corrected pixels must be allocated to discrete regions. Thus in FIG. 1, all the pixels within the outline (1) have been designated with the letter A or a; and all the pixels within the outline (2) have been designated with the letter B or b. In the preferred embodiment, only the peripheral pixels are used in the analysis, i.e. those pixels having a vertical or horizontal neighbor lying outside the region. These are the pixels designated with upper case letters (A or B) in FIG. 1. Thus, the region within the outline (1) is evaluated by analysis of the pixels A; and the region within the outline (2) is evaluated by analysis of the pixels B – where the outline(s) is/are region indicator that represents shape of the regions; para 0023 – Once all the pixels of the image have been assessed, the test at step (32) ends the process and all separate, discrete regions will have their constituent pixels allocated to respective, unique region numbers; para 0024 – pixels at the periphery of the regions are identified); and
Claim 1 further recites “generating edited region indicators comprising shapes corresponding to shapes of the non-contiguous modified pixel regions and providing, in a graphical user interface, visual indications of the plurality of modifications between the digital image and the modified digital image”. As cited in Clediere, Clediere teaches identifying the modification along with the discrete modified regions and further identifies the periphery of the discrete regions, and as technically known periphery defines the shape of the regions as also shown in figure 1. Clediere, however, does not explicitly teach generating edited region indicators comprising shapes corresponding to shapes of the non-contiguous modified pixel regions and providing, in a graphical user interface, visual indications of the plurality of modifications between the digital image and the modified digital image. However, Katukam teaches (page 40 – right column- Section II. TOOLS – to compare the difference between images. We can use tool like –
1. ImageMagick: ImageMagick is a free and open-source software suite for displaying, converting, and editing raster image and vector image files…does include - for Unix-like operating systems - a basic native X Window GUI (called IM Display) for rendering and manipulating images and API libraries for many programming languages. The difference is highlighted in red color.
2. Perceptual Diff: Perceptual Diff is an open source command line image comparison tool…Use image1 and image2 as the images you want to compare. The default options for the output file will only show a black background with the difference highlighted in blue.
3. Image comparer: It is an easier to use graphical user interface-based program to compare between images…go the Differences tab to see the highlighted location of the differences).
Katukam as cited teaches highlighting location of the differences, which is nothing but generating edited region indicators corresponding to the identified manipulated/different regions, and further displays it using GUI, providing visual indications of the modifications. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use Katukam’s teachings in the invention of Clediere. A person having ordinary skill in the art would have been motivated before the effective filing date of the claimed invention to use Katukam’s teachings in the invention of Clediere, because both references are directed to the same field of endeavor of finding the similarity between the images and further identifying differences/modifications, and Katukam’s teachings adds the benefit of displaying the changes on the GUI for the user to view the visual changes/modifications using indicators/highlighter that define the shape of modification, defined by Clediere.
Regarding claim 2, the combined invention of Clediere and Katukam discloses “The method as recited in claim 1, wherein determining the non-contiguous modified pixel regions in the modified digital image comprises determining a non-contiguous modified pixel region consisting of pixels in the modified digital image that are modified compared to corresponding pixels in the digital image” (see the citations made in the rejection of claim 1 with respect to Clediere – the modification is with respect to corresponding pixels in the input image pixels).
Regarding claim 3, the combined invention of Clediere and Katukam discloses the method as recited in claim 2, further comprising: generating one or more change records indicating one or more modified pixels associated with a given modification in response to determining that the given modification was made to the digital image; wherein determining the non-contiguous modified region is based on the one or more modified pixels indicated in the one or more change records (see Clediere para 0017– the modified pixels are compared to the corresponding pixels of the input pixels, which means the modification has been recorded and saved and then compared.
Regarding claim 5, the combined invention of Clediere and Katukam discloses “The method as recited in claim 2, wherein: the pixels in the modified digital image that are modified compared to corresponding pixels in the digital image were modified in response to a modification operation; and the non-contiguous modified region in the modified digital image comprises all pixels modified in response to the modification operation.” (see Clediere – “in response to a modification operation” here implies a controlled on-demand process, which Clediere discloses in paras 0006, 0015-0016 and 0040 – desired correction process; further see Katukam – GUI (called IM Display) for rendering and manipulating images and API libraries for many programming languages. The difference is highlighted in red color – the highlighted result is in response to the modification operation).
Regarding claim 18, claim 18 has been similarly analyzed and rejected as per citations made in the rejection of claim 1.
Regarding claim 19, claim 19 has been similarly analyzed and rejected as per citations made in the rejection of claim 2.
10. Claims 4, 6-9 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
11. Claim 10-17 are allowed. None of the closest prior arts of the record as cited teaches “generating one or more subdivisions of the edited region indicator by dividing the edited region indicator into differentiated sections based on objects detected within the non-contiguous modified region; and providing one or more visual indications of the modifications between the digital image and the modified version of the digital image by positioning the edited region indicator comprising the differentiated sections based on objects in the modified version of the digital image” in combination with other limitations of claim 10. Therefore, claim 10 is allowed. All other claims depending on claim 10 are allowable at least by dependency on claim 10.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Manav Seth whose telephone number is (571) 272-7456. The examiner can normally be reached on Monday to Friday from 8:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Sumati Lefkowitz, can be reached on (571) 272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Manav Seth/
Primary Examiner, Art Unit 2672
June 27, 2026
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