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 .
Applicant(s) Response to Official Action
The response filed on 11/28/2025 has been entered and made of record.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/403,113, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Please refer to the 35 USC § 112 rejection section below.
Claim Objection
There appears to be a typo in line 5 of claim 2 where the intended amendment seems to be “the N three dimensional points to be processed” instead.
Response to Arguments/Amendments
Presented arguments have been fully considered, but some are rendered moot in view of the new ground(s) of rejection necessitated by amendment(s) initiated by the applicant(s). Examiner fully addresses below any arguments that were not rendered moot.
Claim Rejections - 35 USC § 101
Summary of Arguments:
Regarding claim 1-7 Applicant argues that the limitation of "selecting, in order of priority based on Morton codes, one of a plurality of referable three-dimensional points, and calculating an evaluation value by evaluating the selected one of the plurality of referable three-dimensional points" and "when the evaluation value is equal to a smallest evaluation value of a three- dimensional point included in an initial group of N three-dimensional points, setting a three- dimensional point previously evaluated in the order of priority into the N three-dimensional points to be processed for predicted value generation" lead to a specific improvement in the processing efficiency of a computer. Applicant respectfully submits that the features of the claimed invention are more than a configuration in which a general-purpose computer merely automates calculation, and define a control logic reliant on a specific data structure in the claims.
Examiner’s Response:
Examiner respectfully disagrees. Regarding claim 1, Examiner contends that Applicant’s cited claim portion along with the cited ¶0123, ¶0798 and ¶0819 current application’s publication (US 2024/0371045 A1) does not amount to significantly more. According to Applicant’s Remark, “the evaluation value” is merely a distance computed between to three-dimensional points which mathematical formula is well-known and does not amount to a patentable application as claimed. The “selecting, in order of priority based on Morton codes, one of a plurality of referable three-dimensional points” seems to suggest sorting data in order to select from the sorted data; this step is similar to example (vi) in MPEP 2106.05(d)II (i.e. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015)) and was found to be well-understood, routine, conventional activity. Morton codes are well known for ordering multi-dimensional data. The addition of “generating a bitstream” represents mere instructions to apply an exception, or insignificant extra-solution activity since it is recited at a high level of generality.
Accordingly, Examiner maintains the rejections.
Claim Rejections - 35 USC § 112(a)
Summary of Arguments:
Regarding claim 1-7 Applicant submits that:
¶0816, ¶0818, ¶0882 and ¶0883 of the current application’s publication (US 2024/0371045 A1) provide adequate support for an “initial group of N three-dimensional points” (claim 1);
¶0886-0890, ¶0837-0839 and ¶0925 of the current application’s publication (US 2024/0371045 A1) provide adequate support for “when the evaluation value is equal to a smallest evaluation value of a three-dimensional point included in an initial group of N three-dimensional points, setting a three-dimensional point previously evaluated in the order of priority into the N three-dimensional points to be processed for predicted value generation” (claim 1);
¶0817 and ¶0818 of the current application’s publication (US 2024/0371045 A1) provide adequate support for claim 3; and
¶0795-0798 and ¶0837-¶0842 of the current application’s publication (US 2024/0371045 A1) provide adequate support for claim 4.
Examiner’s Response:
Examiner respectfully disagrees. Regarding claim 1, Examiner contends none of the cited paragraph above provide support for “initial group of N three-dimensional points”. Page 12 of the Applicant Remarks states that "N three-dimensional points to be processed for predicted value generation" recited in the preamble are different from "an initial group of N three-dimensional points". Nowhere in the original disclosure of the publication of this application is mentioned two different sets a same number of “N three-dimensional points”. No step of selecting a single three-dimensional point from the “plurality of referable three-dimensional points” “in order of priority based on Morton codes” was found in the presented paragraphs. The claim element “a three- dimensional point previously evaluated in the order of priority” was not found in the original disclosure, let alone. “when the evaluation value is equal to a smallest evaluation value of a three-dimensional point included in an initial group of N three-dimensional points setting a three- dimensional point previously evaluated in the order of priority into the N three-dimensional points to be processed for predicted value generation”.
The claims seem to be directed to fig. 96 of the application as filed, where the “plurality of referable three-dimensional points” correspond to three-dimensional points in the LoD(n-1) layer, an “initial group” is selected from one of the groups Gk of the LoD(n-1) layer (page 204-206 of Application as filed). Said “initial group” are not defined as having the same number of “N three dimensional points” as the “N three dimensional points to be processed”.
Accordingly, Examiner maintains the rejections.
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.
35 U.S.C. 101 requires that a claimed invention must fall within one of the four eligible categories of invention (i.e. process, machine, manufacture, or composition of matter) and must not be directed to subject matter encompassing a judicially recognized exception as interpreted by the courts. Three categories of subject matter are found to be judicially recognized exceptions to 35 U.S.C. § 101 (i.e. patent ineligible) (1) laws of nature, (2) physical phenomena, and (3) abstract ideas. To be patent-eligible, a claim directed to a judicial exception must as whole be directed to significantly more than the exception itself. Hence, the claim must describe a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception.
Claim(s) 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Claim(s) are directed toward processing data which encompasses all forms of data in contrast to limited forms of data, such as image data or video data. Since the claims encompasses all forms of data, they are directed toward all practical uses of the processing steps (i.e. mathematical formula), which is essentially a claim to the mathematical formula itself (i.e. abstract idea), which corresponds to concepts identified as abstract ideas by the courts, such as the Arrhenius equation in Diehr and the mathematical formula for hedging in Bilski. Furthermore, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 112
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.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has not pointed out where the new claims are supported, nor does there appear to be a written description as originally filed for the claim limitations:
‘selecting, in order of priority based on Morton codes, one of a plurality of referable three-dimensional points, and calculating an evaluation value by evaluating the selected one of the plurality of referable three-dimensional points; when the evaluation value is equal to a smallest evaluation value of a three-dimensional point included in an initial group of N three-dimensional points setting a three- dimensional point previously evaluated in the order of priority into the N three-dimensional points to be processed for predicted value generation,’ (claim 1),
‘when the evaluation value is larger than the smallest evaluation value, setting the selected one of the plurality of referable three- dimensional points into the N three-dimensional points to be proceeded for predicted value generation instead of the three-dimensional point having the smallest evaluation value’ (claim 2),
‘wherein the initial group of N three-dimensional points include a three-dimensional point that is selected as a reference point from among the plurality of referable three-dimensional points and has a second Morton code close to a first Morton code of the three-dimensional point to be predicted’ (claim 3),
‘wherein the initial group of N three-dimensional points value further include (N - 1) three- dimensional points that are selected from among the plurality of referable three-dimensional points in the order of priority based on the Morton codes’ (claim 4),
‘wherein the evaluation value is calculated based on a distance between the three-dimensional point to be predicted and the selected one of the plurality of referable three-dimensional points’ (claim 5),
‘wherein the order of priority based on the Morton codes is an order in which a three-dimensional point that has a Morton code smaller than the second Morton code and a three-dimensional point that has a Morton code larger than the second Morton code are alternately selected from among the plurality of referable three-dimensional points’ (claim 7).
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure. MPEP 2163.06 I.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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CLIFFORD HILAIRE
Primary Examiner
Art Unit 2488
/CLIFFORD HILAIRE/Primary Examiner, Art Unit 2488