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 .
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.
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.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 1, 6, 6, 7, and 7 respectively, of U.S. Patent No. 12,094,120. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims anticipate all limitations of the corresponding instant Application claims.
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 1-5 7, and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental process abstract idea without significantly more.
Claim(s) 1 recite(s):
“determine a couple of candidate medical images including a reference image and a comparative image based on at least any one of a number of medical images selected in the selection information in the medical image and a number of examinations selected in the selection information in the examination”, which can be reasonably be interpreted as a human observer viewing displayed images and mentally making this determination via visual perception;
“wherein, when the number of medical images that are selected is one, determine the reference image in association with the selected one medical image and the comparative image by making a search out from the plurality of medical images based on the selected one medical image”, which can be reasonably be interpreted as a human observer viewing displayed images and mentally making this determination via visual perception,
“when the number of medical images that are selected is two or more and the number of examinations in association with the selected medical images is one, determine the reference image out from the selected medical images based on any one of the selection order and the reception specified from the user and the comparative image by making a search out from the plurality of medical images based on the reference image” , which can be reasonably be interpreted as a human observer viewing displayed images and mentally making this determination via visual perception, and
“when the number of medical images that are selected is two or more and the number of examinations in association with the selected medical images is two or more, determine the reference image and the comparative image selected out from the selected medical images based on any one of the selection order and the reception specified from the user”, which can be reasonably be interpreted as a human observer viewing displayed images and mentally making this determination via visual perception.
This judicial exception is not integrated into a practical application because additional elements of:
“An image processing apparatus comprising:”, “a selection unit configured to”, and “a determination unit configured to” are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
“a data acquisition unit configured to acquire information of a medical image including a plurality of medical images and information of examination in association with the plurality of medical images” are generically recited insignificant extra-solution activity of data gathering;
“a reception unit configured to receive at least any one of selection information in the medical image out from the plurality of medical images specified by a user and selection information in the examination out from a plurality of examinations specified by the user” are generically recited insignificant extra-solution activity of data gathering;
“acquire information of a reference examination and a comparative examination based on at least any one of a capturing date and time of the medical image in association with the examination and an order of selection from the user in association with the selection information, wherein the reference examination is configured to include one or more candidate reference images and the comparative examination is configured to include one or more candidate comparative images” are generically recited insignificant extra-solution activity of data gathering;
“a display control unit configured to display the couple of candidate medical images determined by the determination unit on a display unit” are generically recited insignificant extra-solution activity of data outputting.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements of:
“An image processing apparatus comprising:”, “a selection unit configured to”, and “a determination unit configured to” are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
“a data acquisition unit configured to acquire information of a medical image including a plurality of medical images and information of examination in association with the plurality of medical images” are insignificant extra-solution activity of data gathering;
“a reception unit configured to receive at least any one of selection information in the medical image out from the plurality of medical images specified by a user and selection information in the examination out from a plurality of examinations specified by the user” are insignificant extra-solution activity of data gathering;
“acquire information of a reference examination and a comparative examination based on at least any one of a capturing date and time of the medical image in association with the examination and an order of selection from the user in association with the selection information, wherein the reference examination is configured to include one or more candidate reference images and the comparative examination is configured to include one or more candidate comparative images” are insignificant extra-solution activity of data gathering;
“a display control unit configured to display the couple of candidate medical images determined by the determination unit on a display unit” are insignificant extra-solution activity of data outputting.
Depending claims 2-5 do not remedy these deficiencies:
Claims 2 and 4 further recite limitations that can reasonably be interpreted as mental process abstract ideas of a human observer mentally determining via visual perception.
Claims 3 and 5 further recited limitations that that are insignificant extra-solution activity of data outputting.
As per claim(s) 7, arguments made in rejecting claim(s) 1 are analogous. Claim 7 also recites, “controlling an image processing apparatus”, which are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
As per claim(s) 9, arguments made in rejecting claim(s) 1 are analogous. Claim 9 also recites, “a non-transitory computer-readable storage medium storing a computer program for causing a computer to execute a method for controlling an image processing apparatus”, which are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
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 7, 8, 9, and 10 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.
Independent claims 7 and 9 recite the limitation "the selection information" in the 2nd clause after the preamble. There is insufficient antecedent basis for this limitation in the claim. One of ordinary skill in the art cannot know which “selection information” is being referred to. Thus, the metes and bounds cannot be ascertained. Note that the clause order is different in independent claims 7 and 9 relative to claim 1 in that this second clause corresponds to the 3rd clause of claim 1. This is why claim 1 is not rejected in this way because antecedent basis is established in claim 1’s 2nd clause.
Depending claims 8 and 10 do not remedy this deficiency.
Allowable Subject Matter
Claims 1-5 would be allowable if rewritten or amended to overcome the non-statutory double patenting rejections and rejection(s) under 35 U.S.C. 101 set forth in this Office action. Note that an appropriate terminal disclaimer will suffice for overcoming the non-statutory double patenting rejections.
Claims 7 and 9 would be allowable if rewritten or amended to overcome the non-statutory double patenting rejections, 35 U.S.C. 101, and rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Note that an appropriate terminal disclaimer will suffice for overcoming the non-statutory double patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter: Limitations pertaining to “wherein, when the number of medical images that are selected is one, in the determining, the reference image is determined in association with the selected one medical image and the comparative image is determined by making a search out from the plurality of medical images based on the selected one medical image,
when the number of medical images that are selected is two or more and the number of examinations in association with the selected medical images is one, in the determining, the reference image is determined out from the selected medical images based on any one of the selection order and the reception specified from the user and the comparative image by making a search out from the plurality of medical images based on the reference image, and
when the number of medical images that are selected is two or more and the number of examinations in association with the selected medical images is two or more, the reference image and the comparative image are determined by a selection out from the selected medical images based on any one of the selection order and the reception specified from the user”, in conjunction with other limitations present in the independent claims 1, 7, and 9, distinguish over the prior art.
Claim 6 would be allowable if rewritten to overcome the non-statutory double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Note that an appropriate terminal disclaimer will suffice.
Claims 8 and 10 would be allowable if rewritten to overcome the non-statutory double patenting rejections and rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Note that an appropriate terminal disclaimer will suffice for overcoming the non-statutory double patenting rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atiba Fitzpatrick whose telephone number is (571) 270-5255. The examiner can normally be reached on M-F 10:00am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Bee can be reached on (571) 270-5183. The fax phone number for Atiba Fitzpatrick is (571) 270-6255.
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Atiba Fitzpatrick
/ATIBA O FITZPATRICK/
Primary Examiner, Art Unit 2677
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