DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
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.
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Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,086,475. Although the claims at issue are not identical, they are not patentably distinct from each other because all of claimed limitations of the instant application are included in the parent application. The broader scope of claims would have been obvious in view of the claims of the ‘475 Patent.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim requires a method to include a machine vision system to obtain information, comparing information collected with stored information, analyzing the comparison to detect errors, and providing instructions to the printer to stop the print job based on the errors such that the printer is restarted or aborting the print job.
The limitation of analyzing, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting "with a machine vision system," nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the "with a machine vision system" language, "determining" in the context of this claim encompasses the user manually calculating the amount of use of each icon. The steps of analyzing image content by comparing actual 3D results to expected 3D results and analyzing the comparison to detect errors are definitely steps that could be done mentally if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Looking at the second prong of the 101 analysis, we look to see if the abstract idea been integrated into a particular practical application? Once an error is detected, an alert is provided to the remote user. However, this is not integrating the abstract idea into a particular practical application. This is more like the alarm in Parker V. Flook. This judicial exception is not integrated into a practical application.
Looking into the second prong of the 101 analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. In this case the limitations of providing instructions to the printer to stop based on the detection of one or more errors does not rise to the level of “significantly more” than the judicial exception.
MPEP 2106.05 tells us:
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
This application effectively applies the detection of errors to the printer in without significantly more as required. MPEP 2106.05 additional gives guidance of what would count as significantly more by stating:
iii. Applying the judicial exception with, or by use of, a particular machine, e.g., a Fourdrinier machine (which is understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) that is arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web, as discussed in Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923) (see MPEP § 2106.05(b));
In this case the particular arrangement of applying the judicial exception is not claimed in a manner to disclose the specific arrangement that allows it to read as significantly more. If these details were added to the act of providing the instructions form the vision system to the printer the claims might be overcome.
The claim is not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/ Primary Examiner, Art Unit 1748
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