DETAILED ACTION
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1,2,3,4,5,6,7 & 8,9,10,11,12,13,14, drawn to checking presence / absence, classified in G06T 7/0008.
II. Claims 15,16,17,18,19,20, drawn to coded object not directly interpretable, classified in G03H 2210/53.
Claims 1,2,3,4,5,6,7 and 8,9,10,11,12,13,14 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more:
Claim(s) 1,2,3,4,5,6,7 and 8,9,10,11,12,13,14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated1 by TAKAMICHI (JP H0899067 A) with SEARCH machine translation:
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1,2,3,4,5,6,7 & 8,9,10,11,12,13,14, drawn to checking presence / absence, classified in G06T 7/0008.
II. Claims 15,16,17,18,19,20, drawn to coded object not directly interpretable, classified in G03H 2210/53.
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The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as image analysis. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Different search strategies will be required searching claim 1’s “the read indicia lack the first element” verses claim 15’s “the read indicia is unreadable”.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Peter J. Law, Reg. No. 72,722 on 7 JULY 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
15. (withdrawn) A method comprising:
obtaining an image of an item in a distribution network, the image comprising delivery end point information for the item;
reading one or more indicia from the image of the item;
determining that the read indicia is unreadable;
determining a rotation angle of the read indicia;
rotating the obtained image of the item based on the determined rotation angle to generate a rotated image; and
identifying the delivery end point information for the item in the rotated image.
16. (withdrawn) The method of Claim 15, the method further comprising sending a control signal to item processing equipment to process the item according to delivery end point information for the item in the rotated image.
17. (withdrawn)The method of Claim 15, wherein the delivery end point information for the item comprises one or more of a ZIP code, street address, or geographical area identifier.
18. (withdrawn) The method of Claim 15, wherein the read indicia is unreadable when characters of the read indicia do not form valid delivery end point information.
19. (withdrawn)The method of Claim 15, the method further comprising receiving one or more of a size of the image, skew information of the image, image color quality, or image resolution.
20. (withdrawn) The method of Claim 15, wherein reading the one or more indicia from the image of the item comprises generating an optical character recognition result.
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 1,2,3,4,5,6,7 and 8,9,10,11,12,13,14 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more:
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Step zero: establish broadest reasonable interpretation as shown in footnotes;
Step 1: claim 1 is a process; claim 8 is a machine;
Step 2A, prong 1:
The claim(s) recite(s) an abstract idea: via claim 8 representative of claim 1:
receive an image …
receive a rotation angle …
read indicia …
determine that the read indicia lack a first element …
in response to determining that the read indicia lack the first element, determine that the read indicia are insufficient to make a further processing decision;
generate a processing equipment control message …
transmit the processing equipment control message:
8. A system for processing items, the system comprising:
a memory; and
one or more processors configured to:
receive an image of an item from item processing equipment, the item processing equipment configured to physically move the item in a distribution network;
receive a rotation angle for the image of the item;
rotate the image by the received rotation angle;
read indicia from the rotated image;
determine that the read indicia lack a first element associated with delivery of an item;
in response to determining that the read indicia lack the first element, determine that the read indicia are insufficient to make a further processing decision;
generate a processing equipment control message indicating that the read indicia are insufficient;
transmit the processing equipment control message to the item processing equipment thereby causing the item processing equipment to route the item to a specific location for holding.
1. A method for processing items, the method comprising:
receiving an image of an item from item processing equipment, the item processing equipment configured to physically move the item in a distribution network;
receivinga rotation angle for the image of the item;
rotating the image by the received rotation angle;
reading indicia from the rotated image;
determining that the read indicia lack a first element associated with delivery of an item;
in response to determining that the read indicia lack the first element, determining that the read indicia are insufficient to make a further processing decision;
generating a processing equipment control message indicating that the read indicia are insufficient;
transmitting the processing equipment control message to the item processing equipment thereby causing the item processing equipment to route the item to a specific location for holding.
Step 2A, prong 2:
This judicial exception is not integrated into a practical application because the additional elements (such as “item processing equipment”) do not improve the technical field (image processing) of applicant’s disclosure at [0002]:
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Step 2B:
The claim(s) does/do not include additional elements (such as “item processing equipment”) that are sufficient to amount to significantly more than the judicial exception because the additional elements with the abstract adhere to the conventional in view of applicant’s background disclosure’s [0002][0003][0004]:
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1. (suggested: persist image rotation processing)2 A method for persisting image rotation processing of items, the method comprising:
obtaining an image of an item in a distribution network, the image comprising delivery end point information for the item;
reading one or more indicia from the image of the item;
determining that the read indicia is unreadable;
determining a rotation angle of the read indicia;
rotating the obtained image of the item based on the determined rotation angle to generate a rotated image;
receiving an image of an item from item processing equipment, the item processing equipment configured to physically move the item in a distribution network;
receiving, in one or more processors, [[a]] the rotation angle for the image of the item;
rotating the image by the received rotation angle;
reading indicia from the rotated image;
determining that the read indicia lack a first element associated with delivery of an item;
in response to determining that the read indicia lack the first element, determining that the read indicia are insufficient to make a further processing decision;
generating a processing equipment control message indicating that the read indicia are insufficient;
transmitting the processing equipment control message to the item processing equipment thereby causing the item processing equipment to route the item to a specific location for holding.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1,2,3,4,5,6,7 and 8,9,10,11,12,13,14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated3 by TAKAMICHI (JP H0899067 A) with SEARCH machine translation:
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Re 1., TAKAMICHI discloses A method for processing items, the method (likewise) comprising4:
receiving an image of an item from item processing equipment, the item processing equipment configured to physically move the item in a distribution network (or likewise “And a scanner unit (reading OCR device) 11 for reading the whole image on the postal matter P supplied by the supply unit 10, and a conveyance delay for delaying the conveyance of the postal matter P passing through the scanner unit 11. Section 12 and the transport delay section 12”, pg. 5, 3rd txt blk);
receiving5 a rotation angle for the image of the item (or likewise “Assign the command of "0 degree rotation" and press the function key F”, pg. 10, 1st txt blk);
rotating the image by the received rotation angle (or likewise “After the operator presses the function key F8 (in this case, the clockwise rotation of 90 ° is designated) (step ST16) When the return key is hit, a rotation process for erecting the addressed characters is executed. (Step ST18). As a result, the entire image of the New Year's postcard including the addressed characters is rotated 90 ° clockwise and displayed on the display unit 4a.”, pg. 10, 3rd txt blk);
reading indicia from the rotated image (or likewise “By the way, in an image of a horizontal writing New Year's postcard as shown in FIG. 4 (a), characters may be too small to be easily seen. In such a case, the rotation process of step ST18 may be performed simultaneously with the zoom-up process of step ST26.”, pg. 10, 4th txt blk);
determining that the read indicia lack6 a first element associated with delivery of an item (or likewise large letter-characters are wanted via “the address description content can be sufficiently … necessary7 to enlarge the characters.”, pg. 9, 4th txt blk);
in response to determining that the read indicia lack the first element, determining that the read indicia are insufficient to make a further processing decision (or likewise “That is, when the reading / sorting machine 1 automatically sorts mail pieces, mail pieces for which the description of the postal code, address, or destination cannot be determined are rejected.”, pg. 7, 4th txt blk, 2nd S);
generating a processing equipment control message indicating that the read indicia are insufficient (or likewise “Here, the image distribution server 3 sends the recognition result in the address recognizing unit 15 including the image data of the rejected mail supplied from the reject data control unit 27 to any one of the video coding terminals 4 according to the reject attribute. To distribute.”, pg. 6, 3rd txt blk, 2nd to last S);
transmitting the processing equipment control message to the item processing equipment (or said likewise “Here, the image distribution server 3 sends the recognition result in the address recognizing unit 15 including the image data of the rejected mail supplied from the reject data control unit 27 to any one of the video coding terminals 4 according to the reject attribute. To distribute.”, og. 6, 3rd rxt blk, 2nd to last S) thereby causing the item processing equipment to route the item to a specific location for holding (or likewise “Here, the conveyance delay unit 12 waits until the address / postal code information input by the video coding system 2 is obtained for the rejected postal matter P that cannot be recognized by the recognition unit 15. To ensure The length is sufficiently long (for example, the conveyance delay unit 12 delays conveyance for about 8 to 12 seconds).”, pg.5, 6th txt blk).
Re 2., TAKAMICHI discloses The method of Claim 1, wherein reading the indicia from the rotated image comprises generating an optical character recognition result (or said likewise “And a scanner unit (reading OCR device) 11 for reading the whole image on the postal matter P supplied by the supply unit 10, and a conveyance delay for delaying the conveyance of the postal matter P passing through the scanner unit 11. Section 12 and the transport delay section 12”, pg. 5, 3rd txt blk).
Re 3., TAKAMICHI discloses The method of Claim 1, wherein the image comprises identified text describing at least one of 8 an address, or a delivery end point (or said likewise “ Here, the conveyance delay unit 12 waits until the address / postal code information input by the video coding system 2 is obtained for the rejected postal matter P that cannot be recognized by the recognition unit 15. To ensure The length is sufficiently long (for example, the conveyance delay unit 12 delays conveyance for about 8 to 12 seconds).”, pg.5, 6th txt blk).
Re 4., TAKAMICHI discloses The method of Claim 1, wherein the read indicia comprise delivery end point information for the item (or said likewise “That is, when the reading / sorting machine 1 automatically sorts mail pieces, mail pieces for which the description of the postal code, address, or destination cannot be determined are rejected.”, pg. 7, 4th txt blk, 2nd S).
Re 5., TAKAMICHI discloses The method of Claim 4, wherein the first element is a subset of the delivery end point information comprising one or more of a ZIP code, street address, or geographical area identifier (or said likewise “That is, when the reading / sorting machine 1 automatically sorts mail pieces, mail pieces for which the description of the postal code, address, or destination cannot be determined are rejected.”, pg. 7, 4th txt blk, 2nd S).
Re 6., TAKAMICHI discloses The method of Claim 5, wherein the first element is required in order to determine a 9 delivery end point for the item (or said likewise “ Here, the conveyance delay unit 12 waits until the address / postal code information input by the video coding system 2 is obtained for the rejected postal matter P that cannot be recognized by the recognition unit 15. To ensure The length is sufficiently long (for example, the conveyance delay unit 12 delays conveyance for about 8 to 12 seconds).”, pg.5, 6th txt blk).
Re 7., TAKAMICHI discloses The method of Claim 1, wherein the method further comprises receiving10 (or likewise “When the image data of the rejected mail is received in the New Year's postcard mode (step ST300), the video coding terminal 4 determines a predetermined area (x1, y1) on the upper left shoulder and a predetermined lower right on the official New Year's postcard whose size and print pattern are known in advance.”, pg. 10, 2nd S).
Claim 8 is rejected like claim 1:
Re 8., TAKAMICHI discloses A system for processing items, the system comprising:
a memory (or likewise “a control unit 16 for controlling the above units (10 to 15), and the like.”); and
one or more processors (or likewise “a control unit 16 for controlling the above units (10 to 15), and the like.”) configured to:
receive an image of an item from item processing equipment, the item processing equipment configured to physically move the item in a distribution network;
receive a rotation angle for the image of the item;
rotate the image by the received rotation angle;
read indicia from the rotated image;
determine that the read indicia lack a first element associated with delivery of an item;
in response to determining that the read indicia lack the first element, determine that the read indicia are insufficient to make a further processing decision;
generate a processing equipment control message indicating that the read indicia are insufficient;
transmit the processing equipment control message to the item processing equipment thereby causing the item processing equipment to route the item to a specific location for holding.
Claim 9 is rejected like claim 2:
Re 9., TAKAMICHI discloses The system of Claim 8, wherein reading the indicia from the rotated image comprises generating an optical character recognition result.
Claim 10 is rejected like claim 3:
Re 10., TAKAMICHI discloses The system of Claim 8, wherein the image comprises identified text describing at least one of a class of service, an address, or a delivery end point.
Claim 11 is rejected like claim 4:
Re 11., TAKAMICHI discloses The system of Claim 8, wherein the read indicia comprise delivery end point information for the item.
Claim 12 is rejected like claim 5:
Re 12., TAKAMICHI discloses The system of Claim 11, wherein the first element is a subset of the delivery end point information comprising one or more of a ZIP code, street address, or geographical area identifier.
Claim 13 is rejected like claim 6:
Re 13., TAKAMICHI discloses The system of Claim 12, wherein the first element is required in order to determine a correct delivery end point for the item
Claim 14 is rejected like claim 7:
Re 14., TAKAMICHI discloses The system of Claim 8, wherein the one or more processors are further configured to receive one or more of a size of the image, skew information of the image, image color quality, or image resolution.
Conclusion
The prior art “nearest to the subject matter defined in the claims” (MPEP 707.05) made of record and not relied upon is considered pertinent to applicant's disclosure.
The following table lists several references that are relevant to the subject matter claimed and disclosed in this Application. The references are not relied on by the Examiner, but are provided to assist the Applicant in responding to this Office action.
Citation
Relevance
IDS cited Srihari et al. (Recognizing Address Blocks on Mail Pieces: Specialized Tools and Problem-Solving Architecture)
Srihari teaches hand-written destination address block 7 is lacking:
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--Figure 2C is a photopic image of a flat mail thresholding piece. Again, the color (COTHJ tool is applied first. In this case, no white regions of acceptable size are detected. This detection leads to the application of the adaptive thresholding (ADTH) tool, followed by the machine-generat-ed text segmentation (MSEG) tool, to the entire image. As a result, several textual blocks are segmented out (see figure 10). The result interpretation rules of MSEG detect that (1) blocks 2, 9, and 10 are candidates a machine-generated address and (2) the size of block 7 is too large to be a machine-generated for destination address but is adequate11 to be a hand- generated destination address. MSEG then notifies the control mechanism to use the hand-writing and machine…--
as the closest to the claimed “the read indicia lack a first element associated with delivery of an item” of claim 1.
Baker et al. (US 2006/0113387 A1)
Baker teaches controller routing mail to reject bin (fig. 4:1080: NO VALID ZIP: SORT COMPUTER SENDS TO REJECT) depending on missing/unrecoverable/fragmented barcode data (fig. 4:1060):
[0005] In processing mail, the systems may read the bar codes applied to the face of the envelope to determine the destination sortation bin for the mail piece during a particular sortation pass. In the United States, USPS POSTal Numeric Encoding Technique (POSTNET) bar codes are printed on the face of the envelope and are read by the bar code reading system. The POSTNET specifications are documented in the USPS Domestic Mail Manual issue 58 in section C840 (bar coding standards for letters and flats) and in USPS Publication 25 (Designing letter mail) in chapter 4. The POSTNET bar code encodes the destination ZIP code (postal code) on the face of the mail piece and is employed for the sortation process. A problem occurs when the imprinted postal code cannot be properly read such as from a POSTNET or other bar code by the sortation equipment. In such a case, the mail piece is outsorted from the sortation run to a reject bin for manual processing. This is a very expensive cost in processing mail. It is particularly problematic because of the requirement for maintaining the careful layering of the mail in for multipass sequence sorts.
[0028] Reference is now made to FIG. 1. A mail piece sorter system 1 includes a mail piece magazine 100, including a stack of mail pieces shown generally at 110. A mail piece feeder 120 feeds individual mail pieces out of the mail piece magazine 100 onto the sorter transport 140. A first bar code reader 150 is mounted along the sorter transport path and reads bar codes printed on passing mail pieces, such as mail piece 130. The sorter control computer 180 controls the operation of the sorter system and utilizes a sort plan database 190, which depends on bar code data (in the form of a ZIP or postal code) obtained from the mail piece to determine the proper sortation bin for the scanned mail piece. The ZIP code data obtained from the scanned mail piece 130 when provided to the sorter control computer 180 with reference to the sort plan database 190, causes sortation bin 170 diverter 160 to be deployed. Deployed diverter 160 guides the mail piece 130 into the sortation bin 170 as the mail piece is moved along transport 140. The bar code data is obtained from the scanned mail piece 130 by bar code reader 150 and, as will be explained hereinafter, by the operation of other bar code readers mounted along the sorter transport path. The operation of these bar code readers is further enhanced, if desired, by optical character recognition (OCR) devices and/or a mail data file lookup.
as the closest to the claimed:
--in response to determining that the read indicia lack the first element, determining that the read indicia are insufficient to make a further processing decision (i.e., said “outsorted from the sortation run to a reject bin”);
generating a processing equipment control message indicating that the read indicia are insufficient (fig. 4: “NO”);
transmitting the processing equipment control message to the item processing equipment thereby causing the item processing equipment to route the item to a specific location for holding--
of claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS ROSARIO whose telephone number is (571)272-7397. The examiner can normally be reached Monday-Friday, 9AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Henok Shiferaw can be reached at 571-272-4637. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DENNIS ROSARIO/Examiner, Art Unit 2676
/Henok Shiferaw/Supervisory Patent Examiner, Art Unit 2676
1 MPEP 2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017], 2nd para, 2nd to last S: The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
2 MPEP 2106.07(a) II. WHEN MAKING A REJECTION, EXPLAIN WHY THE ADDITIONAL CLAIM ELEMENTS DO NOT RESULT IN THE CLAIM AS A WHOLE INTEGRATING THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION OR AMOUNTING TO SIGNIFICANTLY MORE THAN THE JUDICIAL EXCEPTION (STEP 2A PRONG TWO AND STEP 2B), last sentence:
In the event a rejection is made, it is a best practice for the examiner to consult the specification to determine if there are elements (fig. 5:502;504;506;508; 520,524,526,528) that could be added to the claim to make it eligible. If so, the examiner should identify those elements (fig. 5: 502;504;506;508;520, 524, 526,528) in the Office action and suggest them as a way to overcome the rejection.
3 MPEP 2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017], 2nd para, 2nd to last S: The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
4 BROAD CLAIM LANGUAGE: -ing (of “comprising”): a suffix of nouns formed from verbs, expressing the action of the verb or its result, product, material, etc. (the art of building; a new building; cotton wadding ), wherein etc. is defined: and others; and so forth; and so on (used to indicate that more of the same sort or class might have been mentioned, but for brevity have been omitted), where so is defined: likewise or correspondingly; also; too. (Dictionary.com)
5The crossed-out text “does not limit the scope of” claim 1 via MPEP 2143.03 All Claim Limitations Must Be Considered [R-01.2024], 3rd para:
As a general matter, the grammar (e.g., nonrestrictive comma phrases) and ordinary meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009).
6 lack: to be deficient (in) or have need (of) (Dictionary.com: BRITISH)
7 necessary: needed to achieve a certain desired effect or result; required, wherein need is defined: resulting from necessity; inevitable, wherein necessity is defined: poverty or want, wherein want is defined: to be lacking or deficient (in something necessary or desirable) (Dictionary.com: BRITISH)
8 The crossed-out text “does not limit the scope of” claim 1 via MPEP 2143.03 All Claim Limitations Must Be Considered [R-01.2024], 3rd para:
As a general matter, the grammar (e.g., nonrestrictive comma phrases) and ordinary meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009).
9 The crossed-out text “does not limit the scope of” claim 1 via MPEP 2143.03 All Claim Limitations Must Be Considered [R-01.2024], 3rd para:
As a general matter, the grammar (e.g., nonrestrictive comma phrases or coordinate-adjectives) and ordinary meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009).
10 The crossed-out text “does not limit the scope of” claim 1 via MPEP 2143.03 All Claim Limitations Must Be Considered [R-01.2024], 3rd para:
As a general matter, the grammar (e.g., nonrestrictive comma phrases or coordinate-adjectives) and ordinary meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009).
11 adequate: able to fulfil a need or requirement without being abundant, outstanding, etc, wherein need is defined: the fact or an instance of feeling the lack of something (Dictionary.com)
Prosecution Insights