REISSUE OFFICE ACTION
The present application is being examined under the pre-AIA first to invent provisions.
This is a reissue office action for US Patent 8,794,506, which included original patent claims 1–20. Applicant requested amendment of the claims on 3/17/2026. Claims 21–51 are pending.
Declaration and Reason for Reissue
This Reissue has been filed pursuant to the original patent being at least partly inoperative or invalid by reason of “claiming more or less than he had the right”, specifically:
“The patent erroneously claims more than applicant had a right to claim, by encompassing abstract idea subject matter of methods and systems that do not automatically process digital photographic images with one or more computer systems including one or more processors and system memories containing program instructions for execution by the one or more processors. Claims 1, 9, and 17 of the patent are amended in this reissue application to exclude the identified abstract idea subject matter” (9/3/2024 declaration p. 2).
Consent of Assignee
The consent by assignee filed 3/17/2026 is accepted.
Claim Interpretation
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.
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.
Claim
112 6th or 112(f) phrase
Potential Corresponding Structure
50
means for receiving a sequence of digital images
“after completing a job session, the photographer can transfer the photos to a server” (7:16–17).
“the photographs are received by a server” (17:60–61).
501
means for processing each image of the sequence of digital images by a searching algorithm
“software programs 1526, such as searching algorithm for searching photographs containing coded components” (18:50–52).
50
means for sorting the plurality of job photographs to corresponding jobs
“sorting algorithm to sort photographs to corresponding jobs” (18:53–54).
Claim Objections
Claim 50 is objected to because of the following informalities:
Claim 50, p. 13, line 8, “[the]” should not include brackets as markup because this is a claim new to the patent.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 35 and 50–51 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 pre-AIA the applicant regards as the invention.
Claim 35, the claim scope is confusing for its step of recognizing an alphanumeric string. The confusion stems from the fact that its parent claim requires the graphic pattern to be recognized as a 1D or a 2D code. It is not clear how it can then be further recognized as something different (i.e. the alphanumeric string).
Claim 50, p. 13, last line, there is no antecedent basis for the “means for sorting”.
As described elsewhere herein, these claims invoke 112 6th paragraph, however the written description fails to disclose and link the corresponding structure, material, or acts for all of the claimed functions. Without a limiting specification, which is required by statute, the claim limitation becomes an unbounded purely functional limitation. There are no boundaries or limits imposed by structure, material or acts. The claim will cover all ways of performing a function, known and unknown. Therefore, such an unbounded limitation renders the claim indefinite as follows:
Claim 50 is indefinite for invoking 112 6th paragraph without disclosing and linking the corresponding structure, material, or acts for the identified functions for the:
“means for sorting the plurality of job photographs to corresponding jobs”.
the “means for processing each image of the sequence of digital images by a searching algorithm” is not currently required by this claim. However, it continues to be noted here because it may return to the claim due to the 251 broadening rejection in this action.
It is noted that a function performed by a programmed computer requires disclosure of both the computer and the specific algorithm that causes the computer when programmed with the algorithm to perform the function. Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish the specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239; Finisar, 523 F.3d at 1340-41, 86 USPQ2d at 1623.
Applicant ordinarily may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph [it is noted that amending the reissue claim to be broader than the patented claim will result in a rejection for impermissible broadening after two years – see 35 USC § 251]; or
(b) Amend the written description of the specification such that it expressly recites and links the corresponding structure, material, or acts that perform the claimed function, but must not introduce any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
35 USC § 251 Rejections
Claims 50–51 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
35 U.S.C. 251 states in part that:
“No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent”.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claim 50 no longer requires the “means for processing”, the “means for sorting” and the (means for) processing “by a searching algorithm configured to…”.
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 21–51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 16 and 21–46 of U.S. Patent No. RE50,168.
Regarding claims 21–49, although the claims are not identical, they are not patentably distinct from each other because the claims of RE50,168 anticipate these claims under examination in the current reissue.
Regarding claims 17–18, although the claims at issue are not identical, they are not patentably distinct from the claims of RE50,168. It would have been obvious at the time the invention was made to have include the claimed computer elements in order to configure a system to carry out the methods of RE50,168.
Response to Arguments
Applicant states:
“a Terminal Disclaimer, in compliance with 37 CFR 1.32l(c), is submitted along with the associated official fee. The United States Patent Office's records show the common ownership of the above-identified application and the conflicting application or patent. In view of the foregoing, it is respectfully submitted that the raised double patenting rejection should be withdrawn at this time” (3/17/2026 Remarks p. 17).
Examiner has maintained the double patenting rejection because the Terminal Disclaimer filed 3/17/2026 has been disapproved.
Notification of Proceedings and Material Information
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this patent is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY D CARLSON whose telephone number is (571)272-6716. The examiner can normally be reached Mon-Fri 7:30 am to 5:00 pm, off 1st Fri.
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, Michael Fuelling can be reached on (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
1 This phrase is not presently in the claim. However, due to the 251 broadening rejection, it is expected that it will return to the claim by amendment and thus continues to be mentioned here.
Prosecution Insights