DETAILED ACTION
Status of Submission
This Office action is responsive to the preliminary amendment filed on September 4, 2024, which has been entered.
Claims Subject to Examination
Amended1 patent claims 1-10, 12-21 and 28-35 are subject to examination. Patent claims 11 and 22-27 have been canceled.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 11,440,057 B2, which issued from Application No. 16/924,885, which claimed priority to US Provisional Application No. 62/872,844. The “original disclosure” is the disclosure of Application No. 16/924,885 as filed on July 9, 2020. Any subject matter added to the disclosure (including the claims) during either the earlier-concluded examination of Application No. 16/924,885 or the examination of the instant reissue application does not constitute a part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
Objection to Amendment – New Matter Added to Instant Application
The amendment filed on September 4, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the reasons given below.
The original disclosure describes a sorting system that comprises:
A pupae detection system 288 in the form of an optical detection device (e.g., laser gate or light curtain) that (i) is positioned along a primary channel 118 of an isolation device 100, (ii) projects a light beam 290 onto a light sensor, and (iii) detects when a pupa enters a data gathering zone by detecting the pupa traversing intersection 124g of the isolation device 100 when the light beam 290 is blocked by the pupa. See Fig. 2; col. 7, ll. 8-12, 28-32 and 51-54; col. 9, ll. 28-36; col. 15, ll. 3-122. The alternative embodiment of Fig. 6 includes a similar pupa detection sensor 612. See col. 11, ll. 11-15; col. 11, l. 60 to col. 12, l. 4.
A valve 254 that is closed so as to shut (or partially close) an outlet 112 of the isolation device 100 in response to the pupae detection system 288 detecting that a single pupa has passed the intersection 124g to position the single pupa in the data gathering zone for viewing/imaging and identification. See Fig. 2; col. 7, ll. 8-18, 32-36 and 51-54; col. 9, ll. 43-61. Additional valves 262, 264, 266, 268, 270 and a diaphragm 282 are used to finely adjust the position of the pupa for viewing or imaging. See col. 16, ll. 25-37.
An optical sensor 258 in the form of a camera positioned above the isolation device 100 and aimed to observe or capture an image of the single pupa through a transparent cover 296 when the single pupa is in the data gathering zone located underneath the optical sensor 258. See Fig. 2; col. 7, ll. 16-32; col. 9, l. 62 to col. 10, l. 3; col. 16, ll. 25-28 and 55-57. The single pupa imaged by the optical sensor 258 may be identified using object recognition techniques or image recognition techniques. See col. 9, ll. 55-58. The optical sensor 258 may include any suitable combination of image sensors, lenses, computer hardware, or computer software. See col. 10, ll. 4-7. The alternative embodiment of Fig. 6 includes a similar optical sensor 606 for capturing images of the isolated pupa. See col. 11, ll. 11-23 and 38-50; col. 17, ll. 49-54.
As issued, the patent claims recited the following subject matter corresponding to the disclosed pupae detection system 288, the disclosed optical sensor 258, and the processing of data produced thereby:
Pupae detection system 288
Optical Sensor 258
“an optical sensor positioned proximate the outlet of the isolation device to capture images of pupae from the third flow of liquid, wherein the optical sensor is positioned between the first intersection and the outlet” (patent claim 1, ll. 12-15)
“further comprising a pupa detection system for detecting when a single insect pupa passes the first intersection of the primary channel and the first secondary channel” (patent claim 4, depending from claim 1)
“wherein the optical sensor is configured to capture the image when the single insect pupa passes the first secondary channel” (patent claim 6, depending from claim 4)
“determining that an individual pupa has passed the first secondary channel” (patent claim 8, ll. 10-11)
“after the individual pupa has passed the first secondary channel: capturing an image of the individual pupa using an optical sensor positioned between the first intersection and the outlet” (patent claim 8, ll. 12-16)
“wherein determining that the individual pupa has passed the first secondary channel comprises using a laser gate across the primary channel adjacent to the first secondary channel” (patent claim 13, depending from claim 8)
“an optical sensor positioned between the first intersection and the outlet to capture an image of an insect pupa in the isolation device” (patent claim 15, ll. 9-11)
“determine the insect pupa has passed the first secondary channel” (patent claim 15, ll. 17-18)
“receive an image of the insect pupa from the optical sensor” (patent claim 15, ll. 19-20)
“receive the image of the insect pupa when the insect pupa passes the first secondary channel” (patent claim 16, depending from claim 15)
“capturing an image of the individual pupa using an optical sensor positioned between the second channel and a first and second pupae outlet” (patent claim 28, ll. 12-14)
“wherein the optical sensor is positioned adjacent the first pupae outlet or the second pupae outlet” (patent claim 30, depending from claim 29)
Amended patent claim 1 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “[an optical]a sensor positioned proximate the outlet of the isolation device to [capture images of]detect pupae from the third flow of liquid, wherein the [optical] sensor is positioned between the first intersection and the outlet” (ll. 9-11). This constitutes new matter because the original disclosure does not provide support for the sensor of the pupae detection system 288 being (i) positioned proximate the outlet, or (ii) positioned between the first intersection and the outlet.3 Further, the original disclosure does not describe the optical sensor 258 as a sensor that functions to detect pupae. rather, the pupae detection system 288 is described as performing this detecting function.
Patent claim 4 (depending from amended patent claim 1) now requires (i) the sensor of claim 1 that reads on the pupae detection system 288 while introducing (ii) a pupae detection system. This constitutes new matter because the original disclosure does not provide support for a sorting system having multiple pupae detection systems/sensors.
Amended patent claim 8 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “after the individual pupa has passed the first secondary channel: [capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the first intersection and the outlet” (ll. 8-10) and “sorting the individual pupa based on [the pupa type]a sensor signal from the sensor” (ll. 12-13). This constitutes new matter because the original disclosure does not provide support for (i) the sensor of the pupae detection system 288 being positioned between the first intersection and the outlet,4 or (ii) sorting the individual pupa based on a sensor signal from the sensor of the pupae detection system 288. Further, the original disclosure does not describe the optical sensor 258 as a sensor that performs the function of sensing individual pupa; rather, the pupae detection system 288 is described as performing this sensing/detecting function.
Amended patent claim 8 recites “determining that an individual pupa has passed the first secondary channel” (l. 7) in combination with “after the individual pupa has passed the first secondary channel: [capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the first intersection and the outlet” (ll. 8-10). This constitutes new matter because the original disclosure does not provide support for a method in which the sensor of the pupae detection system 288 (i) performs the function of determining that an individual pupa has passed the first secondary channel, and (ii) subsequently performs the function of sensing the individual pupa.
Amended patent claim 10 recites “wherein sorting the individual pupa based on the [pupa type]sensor signal from the sensor comprises opening a valve downstream of the outlet of the primary channel to direct the individual pupa to a container system”. As explained above with respect to claim 8, this constitutes new matter because the original disclosure does not provide support for sorting the individual pupa based on a sensor signal from the sensor of the pupae detection system 288.
Patent claim 13 (depending from amended patent claim 8) now requires (i) the sensor of claim 8 that reads on the pupae detection system 288 while introducing (ii) a laser gate (i.e., a specific form of pupae detection system) used to determine that the individual pupa has passed the first secondary channel. This constitutes new matter because the original disclosure does not provide support for a method of sorting using multiple pupae detection systems/sensors.
Amended patent claim 15 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “[an optical]a sensor positioned between the first intersection and the outlet to [capture an image of]sense an insect pupa in the isolation device” (ll. 8-9), “receive [an image of the insect pupa from] a sensor signal from the [optical ] sensor” (ll. 15-16), and “cause the insect pupa to travel into holding tank of the storage system based at least in part on the [pupa characteristic]sensor signal from the sensor. This constitutes new matter because the original disclosure does not provide support for the sensor of the pupae detection system 288 being positioned between the first intersection and the outlet,5 or (ii) sorting the pupa based on a sensor signal from the sensor of the pupae detection system 288. Further, the original disclosure does not describe the optical sensor 258 as a sensor that functions to sense an insect pupa; rather, the pupae detection system 288 is described as performing this sensing/detecting function.
Amended patent claim 15 recites “determine the insect pupa has passed the first secondary channel” (l. 14) in combination with “receive [an image of the insect pupa from] a sensor signal from the [optical ] sensor” (ll. 15-16). This constitutes new matter because the original disclosure does not provide support for a method in which the sensor of the pupae detection system 288 (i) performs the function of determining that a pupa has passed the first secondary channel, and (ii) subsequently or separately performs the function of producing a sensor signal.
Amended patent claim 16 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “wherein the processor executable instructions are further configured to receive[the image of]the sensor signal [the insect pupa ] when the insect pupa passes the first secondary channel”. This constitutes new matter for similar reasons given above with respect to claim 15.
Amended patent claim 18 recites “to cause the outlet to open after [capturing the image of]sensing the insect pupa”. As explained above with respect to claim 15, this constitutes new matter because the original disclosure does not provide support for sorting the individual pupa (by opening the outlet) based on a sensor signal from the sensor of the pupae detection system 288.
Amended patent claim 21 recites “to cause selective closure of the outlet to position the insect pupa for [imaging]sensing”. This constitutes new matter because the original disclosure does not provide support for selective closing of the outlet to position the insect pupa for sensing/ detecting the pupa by the sensor of the pupae detection system 288.
Amended patent claim 28 replaces limitations directed exclusively to the optical sensor 606 with limitations that read on the pupae detection sensor 612 such that it now recites “[capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the second channel and a first and second pupae outlet” (ll. 7-8) and “providing a third flow of liquid to sort the individual pupa into the first pupae outlet or the second pupae outlet based on [the pupa type]output from the sensor” (ll. 10-11). This constitutes new matter because the original disclosure does not provide support for (i) the pupae detection sensor 612 being positioned between the second channel and first and second pupae outlets,6 or (ii) sorting the individual pupa based on output from the sensor of the pupae detection sensor 612. Further, the original disclosure does not describe the optical sensor 258 as a sensor that performs the function of sensing individual pupa; rather, the pupae detection system 288 and the pupae detection sensor 612 are described as performing this sensing/detecting function.
Amended patent claim 30 replaces limitations directed exclusively to the optical sensor 606 with limitations that read on the pupae detection sensor 612 such that it now recites “wherein the [optical ]sensor is positioned adjacent the first pupae outlet or the second pupae outlet, and wherein determining the number of pupae comprises receiving [data ]additional output from the [optical ]sensor. This constitutes new matter because the original disclosure does not provide support for (i) the pupae detection sensor 612 being positioned adjacent the first pupae outlet or the second pupae outlet, or (ii) determining the number of pupae based on additional output from the s pupae detection sensor 612.
Amended patent claim 32 recites “providing the second flow of liquid comprises opening the first pupae outlet or the second pupae outlet based on the [pupa type]output from the sensor”. This constitutes new matter because the original disclosure does not provide support for positioning the individual pupa (by providing the second flow of liquid) based on output from the pupae detection sensor 612.
Applicant is required to cancel the new matter in response to this Office action.
New Matter Added in Earlier Examination
The amendment filed in Application No. 16/924,885 on April 13, 2022 failed to comply with 35 USC 132(a) because it improperly introduced new matter for the reasons given below.
Claim 32 (later renumbered as patent claim 31) was amended to read “wherein adjusting the first flow of liquid comprises introducing the second flow of liquid in a second direction opposite the first direction”. This constitutes new matter because the original disclosure does not provide support for introducing the second flow of liquid in a second direction opposite the first direction (the first direction being a flow direction through the first channel per patent claim 28).
New claim 36 was added (later renumbered as patent claim 33), with this claim reciting “wherein substantially all of the first flow of liquid, the second flow of liquid, and the third flow of liquid that enters the primary channel exits the primary channel at the outlet”. This constitutes new matter because the original disclosure does not provide support for the third flow entering the primary channel.
New claim 37 was added (later renumbered as patent claim 34), with this claim reciting “wherein the inlet of the primary channel is the only inlet of the primary channel and the outlet of the primary channel is the only outlet of the primary channel”. This constitutes new matter because the original disclosure does not provide support for the inlet of the primary channel being the only inlet thereof, or for the outlet of the primary channel being the only outlet thereof.
New claim 38 was added (later renumbered as patent claim 35), with this claim reciting “wherein the outlet is selectively operable between an open position and a closed position such that, when the outlet is in the closed position, a first insect pupae of the adjacent insect pupae is separated from other insect pupae of the adjacent insect pupae by remaining stagnant in the third flow of liquid while the other insect pupae are carried by the third flow towards the inlet of the primary channel”. This constitutes new matter because the original disclosure does not provide support for the outlet being selectively operable between open and closed positions; rather, a valve is disclosed as being opened and closed. Further, this constitutes new matter because the original disclosure does not provide support for a first insect pupae being separated from other insect pupae by remaining stagnant “in the third flow of liquid”.
Applicant is required to cancel the new matter in response to this Office action.
Effective Filing Date
The instant application seeks reissue of US Patent No. 11,440,057 B2, which issued from Application No. 16/924,885, which claimed priority to US Provisional Application No. 62/872,844. Provisional Application No. 62/872,844 only discloses the embodiment(s) shown in Figs. 1-5 of US Patent No. 11,440,057 B2. Thus, Provisional Application No. 62/872,844 fails to provide support in the manner required by 35 USC 112(a) for any claims directed exclusively to the embodiment(s) shown in Figs. 6-10 of US Patent No. 11,440,057 B2. Thus, aside from the new matter addressed above:
The effective filing date of claims 1-21 and 33-35 is July 11, 2019, i.e., the filing date of Provisional Application No. 62/872,844.
The effective filing date of claims 28-32 is July 9, 2020, i.e., the filing date of Application No. 16/924,885.
Reissue Oath/Declaration
The reissue declaration filed on September 4, 2024 is defective because it fails to specifically and properly identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the reissue declaration states the following:
The patent claims more than applicant had a right to claim in view of U.S. Patent No. 7,452,725, which describes an image-based analyzer device 24 having exciters 40 and detectors 44, and using CCD-image analysis. See 8:38 to 20:11. As an example, claim 1 of the patent is amended in this reissue application to exclude the image-based sensors and analysis described in U.S. Patent No. 7,452,725.
This statement is not accurate or proper because it states that the patent claims “more” than applicant had the right to claim, but the amendments filed in this reissue application are not consistent with this statement. If applicant’s claim scope exceeded their right, then the reissue claims should be narrowed relative to the patent claims. However, in this case, the reissue claims are broadened relative to the patent claims at least because the reissue claims do not require an optical sensor that captures an image(s) of a pupa or pupae.
The reissue declaration filed on September 4, 2024 is also defective because it fails to specifically identify an original patent claim that the instant broadening reissue application seeks to broaden. See 37 CFR 1.175(b) and MPEP 1414-1414.01. As required by 37 CFR 1.175(b), for an application that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. While claim 1 is mentioned in the reissue declaration, the declaration fails to state applicant’s intent to broaden this patent claim.
Claim Interpretation – BRI Standard
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
Claim Interpretation – Means-Plus-Function Exception to BRI Standard
An exception to the BRI standard occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 U.S.C. 112(f), formerly 35 U.S.C. 112, 6th paragraph. See MPEP 2181.
Do the claims invoke 35 U.S.C. 112(f)?
I.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Egenara, Inc. v. Cisco Systems, Inc.
Altiris Inc. v. Symantec Corp.
Ex Parte Smith (informative)
Ex parte Erol (informative)
Ex parte Marc E. Davis et al. (instructive)
I.B. Do system claims 15-21 recite computer-implemented functional claim limitations?
Claims 15-21 require that the claimed system has a “processor configured to execute processor executable instruction stored in a non-transitory computer-readable medium configured to cause the processor to” (claim 15, ll. 12-13) perform the functions listed in the following table:
Function #1
(claim 15)
Determine the insect pupa has passed the first secondary channel
Function #2
(claim 15)
Receive a sensor signal from the sensor
Function #3
(claim 15)
Cause the insect pupa to travel into holding tank of the storage system based at least in part on the sensor signal from the sensor
Function #4
(claim 16)
Receive the sensor signal when the insect pupa passes the first secondary channel
Function #5
(claim 17)
Cause the outlet to close after determining the insect pupa has passed the first secondary channel
Function #6
(claim 18)
Cause the outlet to open after sensing the insect pupa
Function #7
(claim 19)
Causing the insect pupa to travel into the holding tank comprises sorting the insect pupa based on a pupa characteristic that comprises at least one of male, female, larva, and waste
Function #8
(claim 20)
Cause a fluid inlet to add fluid at the outlet when more than one insect pupa passes the first secondary channel
Function #9
(claim 21)
Cause selective closure of the outlet to position the insect pupa for sensing
Since claims 15-21 recite functional claim limitations, it must be determined whether such limitations are implemented by a computer(s). Claim 15 explicitly requires implementation by a computer by reciting that the claimed system has a “processor configured to execute processor executable instruction stored in a non-transitory computer-readable medium” (ll. 12-13). Further, applicant’s disclosure states that:
The claimed system has one or more computers configured to perform particular operations by virtue of having software, firmware, hardware, or a combination thereof. See col. 1, ll. 39-43.
The isolation and sorting systems may be automated and performed or operated by a computing device. See col. 4, ll. 2-5.
A computing device 292 outputs a signal to close the valve 254 when the pupae detection system 288 detects or determines that a single pupa has passed the intersection 124g, thereby positioning the pupa for identification using object recognition techniques or image recognition techniques based on input from the optical sensor (i.e., camera) 258. See col. 9, l. 43 to col. 10, l. 7.
The computing device/system 292 actuates each valve 254, 262, 264, 266, 268, 270 and 284 by an appropriate signal, e.g., a logical ‘0’ or ‘1’ to fully open or close the valve, or by sending an analog voltage to set any desired position between fully open and fully closed. See col. 10, ll. 62-67.
The computer device/system 292 is any suitable electronic device configured to execute computer-executable instructions to perform operations and including a processor, e.g., personal computer, hand-held device, server computer, server cluster, virtual computer, etc. See col. 10, l. 67 to col. 11, l. 5.
The computer device/system 292 determines that a first insect pupa has passed the intersection 124g (based on input from the pupae detection system 288). See col. 16, ll. 15-19.
The computer device/system 292 closes the outlet 112 (by operating valve 254) in response to detecting that the first pupa has passed the intersection 124g. See col. 16, ll. 20-24.
The computer device/system 292 controls the diaphragm 282 or inlet 286 (i.e., valve 284) in concert with the valves 262, 264, 266, 268 and 270 to finely adjust the position of the insect for imaging by the optical sensor (i.e., camera) 258. See col. 16, ll. 25-54.
Following the capturing of an image of the insect by the optical sensor 258, the computer device/system 292 identifies the insect using any number of identifying techniques based on size or imaging. See col. 16, ll. 55-64.
After identifying an insect type, the computer device/system 292 opens a valve 262, 264, 266, 268 or 270 associated with a sorting tank corresponding to a trait by which the insect pupa is sorted. See col. 16, l. 65 to col. 17, l. 14.
Accordingly, claims 15-21 are considered to recite computer-implemented functional claim limitations.
I.C. Do computer-implemented system claims 15-21 invoke 35 U.S.C. 112(f), i.e., do these claims (i) define the invention in terms of functions to be performed, but (ii) fail to recite sufficient structure for performing all of the claimed functions?
Claims 15-21 require that the claimed processor executes computer instructions stored in non-transitory computer-readable medium to perform the computer-implemented functions identified above. Since claims 15-21 define the invention in terms of functions to be performed, the question becomes whether these claims recite sufficient structure for performing all of the claimed functions.
Claims 15-21 do not define the claimed processor (or associated computer system) as having specific structure or a specific arrangement of structural components. These claims fail to provide POSITA with an understanding of the structural elements/arrangements necessary to carry out the claimed functions.
Further, applicant’s computer device/system 292 is not disclosed as having specific structure or a specific arrangement of structural components. Thus, applicant’s disclosure does not support a finding that the claimed processor constitutes sufficient structure for performing all of the claimed functions.
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that:
An ordinary, off-the-shelf computer system is structure. Thus, in reciting a general-purpose, computer-implemented “processor”, claims 15-21 recite some structure for performing the claimed functions. The question is whether this structure is sufficient for performing all of the claimed functions.
The hardware components of a computer system that includes a processor are old and well known.
Based upon the special functions required by claims 15-21, and based upon the description provided by applicant’s disclosure, the claimed “processor” is necessarily implemented using a computer system having a particular configuration.7 That is, a general purpose computer system must be specially equipped, i.e., provided with special programming (i.e., the claimed processor executable instructions), in order to transform it into a special-purpose computer system for performing the specific functions and achieving the intended outcomes described in applicant’s disclosure and recited in the claims.
Based on the above findings, applicant’s claimed invention is not only a computer-implemented invention, but primarily a software-implemented invention. That is, the distinctive features of the invention arise from the special programming instructions that are necessarily required to be executed by a special-purpose computer processor in order to implement the claimed computer-implemented invention and perform the special functions required by the claims.
Accordingly, a general-purpose, computer-implemented “processor”, as recited generically in claims 15-21, does not constitute sufficient structure for performing all of the claimed functions since it lacks the special programming required. Further, while claim 15 requires “processor executable instructions”, the actual algorithm or step-by-step instructions are not recited in claims 15-21.
Conclusion: Independent computer-implemented system claims 15-21 invoke 35 U.S.C. 112(f) because these claims:
(i) Recite Function #1 to Function #9 and, therefore, define the invention in terms of functions to be performed.
(ii) Fail to recite sufficient structure for performing all of the claimed functions because the claimed “processor”, i.e., general-purpose computer processor that lacks special programming, is not capable of performing all of the claimed functions.
For claims that invoke 35 U.S.C. 112(f), does the specification disclose adequate corresponding structure to perform all of the claimed functions?
II.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology
Ex Parte Smith
Ex parte Erol
II.B. For computer-implemented system claims 15-21, does the specification disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform all of the claimed functions?
Based upon a review of the applicant’s original disclosure, the examiner finds that the closest structure disclosed as corresponding to the claimed “processor” is the processor that forms part of the disclosed computer device/system 292.
In the case of computer-implemented inventions that rely upon special software (special programming) to execute the claimed functions, the structure disclosed in the specification must be more than a general-purpose computer or processor. Rather, the “corresponding structure” is an algorithm(s) for performing the claimed functions. This may be may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure. Regardless of the manner in which it is expressed, the algorithm(s), by definition, must constitute a finite sequence of specific logic steps for performing a particular task.
There is a distinction between language that simply describes the function to be performed and the required disclosure of an algorithm(s) by which it is performed. In other words, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of a specific algorithm(s) that describes how the claimed function(s) is performed.
Further, it is not sufficient for the applicant to simply state or later argue that POSITA could theoretically write the necessary algorithm(s) and/or would know what software to employ to accomplish the claimed function(s), i.e., to show that the enablement requirement of 35 U.S.C. 112(a) is met. The inquiry is whether one skilled in the art would understand the patent specification itself to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithm(s) used by applicant for performing the claimed function(s).
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that:
Function #1, which pertains to evaluating a signal(s) from a sensor of a pupae detection system to determine that a pupa has passed a channel, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to process sensor inputs and carry out the claimed determination.
Function #3 and Function #7, which pertain to directing a pupa into a holding tank based on a pupa characteristic determined from a signal(s) from a sensor, are not relatively basic computer-implemented functions. Rather, complex algorithms are required in order to (i) process a signal(s) from a sensor to determine a pupa characteristic, and (ii) direct a pupa to a holding tank based on the determined characteristic.
Function #4, which pertains to receiving sensor input after determining the pupa has passed a channel, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to time the receipt of the sensor input based on the determination that the pupa has passed a channel.
Function #5 and Function #9, which pertain to selectively closing an outlet to position the pupa for sensing after determining the pupa has passed a channel, are not relatively basic computer-implemented functions. Rather, a specific algorithm(s) is required in order to time the closing of the outlet based on the determination that the pupa has passed a channel.
Function #6, which pertains to selectively opening an outlet after sensing the pupa, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to time the opening of the outlet based on the conclusion of the sensing of the pupa.
Function #8, which pertains to controlling a fluid inlet to add fluid at the outlet based on a determination that more than one pupa passes a channel, is not a relatively basic computer-implemented function. Rather, complex algorithms are required in order to (i) process inputs so as to determine that more than one pupa passes a channel, and (ii) time the control of the fluid inlet to add fluid based on the presence of more than one pupa.
With respect to the algorithms required for performing Function #1 and Function #3 to Function #9, the examiner finds that the disclosure contains language that describes the functions to be performed, but it fails to include the required disclosure of an algorithm(s) by which the functions are performed. That is, applicant merely discloses desired results or intended outcomes while failing to disclose the means of achieving those results/outcomes in the form of specific algorithms that describe how the claimed functions are performed.
Accordingly, applicant has failed to disclose algorithms or step-by-step processes for performing each of the claimed functions. It is not enough that POSITA could theoretically write the necessary algorithms and/or would know what software to employ; rather, the specification must explain applicant’s “corresponding structure”, i.e., the necessary algorithms used by applicant for performing the claimed functions.
Conclusion: For computer-implemented system claims 15-21, the specification fails to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithms or step-by-step processes, used by applicant for performing each of the claimed functions, i.e., Function #1 and Function #3 to Function #9.
III. Lack of Compliance with 35 USC 112
Due to the failure to disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform claimed Function #1 and Function #3 to Function #9, a rejection under 35 USC 112(b) is set forth below.
IV. How to Prevent Invoking 35 U.S.C. 112(f)
If applicant does not intend to have the above-discussed limitations of claims 27-52 invoke 35 U.S.C. 112(f), applicant may amend the claims so they will clearly not invoke 35 U.S.C. 112(f).
Moreover, if applicant believes the claimed “processor” of claims 15-21 to have a structural meaning known to POSITA, applicant should expressly state on the record that this limitation has a structural meaning known to POSITA and provide appropriate evidence in support thereof (e.g., a prior art U.S. patent). Additionally, in order to show that the above-discussed limitations of the claims do not invoke 35 U.S.C. 112(f), applicant must also state on the record and provide evidence in support thereof that the claimed structure can perform the claimed functions in their entirety.
Applicant is reminded that, should the applicant amend a claim limitation so that it does not invoke 35 U.S.C. 112(f) or successfully argue that the limitation does not invoke 35 U.S.C. 112(f), elements from the specification (including any algorithms) will not be read into the claims since the Federal Circuit has repeatedly and clearly held that it will not read unstated limitations into claim language.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. 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.
GROUND 1: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
GROUND 2: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is explained above.
GROUND 3: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). See also MPEP 1412.02.
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Step 1: Claims 1-10, 12-21 and 28-35 of the instant reissue application are broader in scope than patent claims 1-35 at least because the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. See the further explanation above.
Step 2: During the original prosecution (Application No. 16/924,885), the previous examiner initially rejected claims 1-22 and 24-35 based upon prior art while indicating that dependent claim 23 would be allowable if rewritten in independent form. See the Office action mailed on December 17, 2021. In the response filed on April 13, 2022, applicant responded to the rejections by narrowing the scope of the claims as follows and arguing that these limitations defined over the prior art:
Claim 1 was amended to require (i) a first secondary channel that intersects a primary channel at a first intersection between an inlet and outlet of the primary channel, and (ii) the claimed optical sensor is positioned between the first intersection and the outlet.
Claim 8 was amended to require (i) providing the claimed (first) flow of fluid at an inlet of a primary channel toward an outlet of the primary channel, (ii) providing the claimed second flow of fluid through a first secondary channel and at a first intersection with the primary channel, and (iii) capturing the claimed image of the individual pupa using an optical sensor positioned between the first intersection and the outlet.
Claim 15 was amended to require (i) a first secondary channel intersecting a primary channel at a first intersection between an inlet and outlet, and (ii) the claimed optical sensor is positioned between the first intersection and the outlet.
Claim 23 was canceled and its subject matter was incorporated into claim 22.
Claim 29 was amended to require (i) adjusting a first flow of liquid in the claimed first channel by introducing a second flow of liquid via a second channel to position an individual pupa in an imaging portion of the first channel, and (ii) capturing the claimed image of the individual pupa using an optical sensor positioned between the second channel and a first and second pupae outlet.
Because of the amendments and arguments filed on April 13, 2022, the previous examiner withdrew the prior art rejections and issued the Notice of Allowability on May 10, 2022. The examiner’s reasons for allowance cited the subject matter added to claims 1 and 22. The claims were renumbered, upon allowance, in the same order presented. Thus, independent claims 1, 8, 15 and 22 became patent claims 1, 8, 15 and 22, respectively, while independent claim 29 was renumbered as patent claim 28.
The broader aspects of reissue claims 1-10, 12-21 and 28-35 relate to subject matter surrendered in the original prosecution because these claims fail to recite subject matter that was added to patent claims 1, 8, 15 and 28 and argued for patentability during the earlier-concluded examination. Also, claims 1-10, 12-21 and 28-35 are broader in certain respects than the surrendered versions of claims 1, 8, 15 and 29 filed in Application No. 16/924,885 on July 9, 2020.
Overlooked Aspects Inquiry: When an examiner determines in Step 2 that the broadening aspects of reissue claims relate to subject matter that applicant previously surrendered during the prosecution of the original application, the overlooked aspects inquiry may be applicable. See MPEP 1412.01, subsection II, and MPEP 1412.02, subsection II.B. The term “overlooked aspects” refers to claims to separate inventions/embodiments/species that were never presented (i.e., were not claimed) in the original application. Since overlooked aspects were never claimed, they were never surrendered. Thus, claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application.
In this case, the subject matter of reissue claims 1-10, 12-21 and 28-35 does not constitute “overlooked aspects” because the patent claims recite the pupae detection system that is now covered by the reissue claims. For example, patent claim 4 recites a pupa detection system for detecting when a single insect pupa passes the first intersection. Also, patent claim 8 recites the step of determining that an individual pupa has passed the first secondary channel (which method step is performed using the pupae detection system according to the patent specification). Further, patent claim 13 recites a laser gate as one form of a pupa detection system. In addition, patent claim 15 recites a processor that executes instructions to determine the insect pupa has passed the first secondary channel (which function is performed based on input from the pupae detection system according to the patent specification).
Step 3: First, the reissue claims must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. See In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
In this case, reissue claims 1-10, 12-21 and 28-35 violate the recapture rule because they are broader in scope than the surrendered versions of claims 1, 8, 15 and 29 filed in Application No. 16/924,885 on July 9, 2020 due to:
The omission from claim 1 of the requirements of an optical sensor positioned proximate the outlet of the isolation device to capture images of pupae from the third flow of liquid, and a storage unit system into which insect pupae of a first type are directed based at least in part on the captured images.
The omission from claim 8 of the requirements of capturing an image of the individual pupa, determining a pupa type of the individual pupa based on the image, and sorting the individual pupa based on the pupa type.
The omission from claim 15 of the requirements of an optical sensor to capture an image of an insect pupa, a processor configured to execute instructions so as to receive an image of the insect pupa from the optical sensor, determine a pupa characteristic based on the image, and cause the insect pupa to travel into a holding tank based at least in part on the pupa characteristic.
The omission from claim 28 of the requirements of adjusting the flow of liquid to position an individual pupa in an imaging portion of the first channel, capturing an image of the individual pupa, determining a pupa type of the individual pupa based on the image, and providing a flow of fluid to sort the individual pupa into a first pupae outlet or a second pupae outlet based on the pupa type.
Second, it must be determined whether the reissue claims omit or broaden any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. See Pannu v. Storz Instruments Inc., 258 F.3d at 1371-72, 59 USPQ2d at 1600. However, if the patentee modifies the added or argued limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. See In re Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4.
In this case, reissue claims 1-10, 12-21 and 28-35 violate the recapture rule because:
Claims 1-10 and 12-21 completely omit the requirement of an optical sensor positioned between the second channel and a first and second pupae outlet while substituting a requirement that reads on the sensor of the disclosed pupae detection system 288 rather than on the originally-claimed optical sensor 258. Thus, claims 1-10 and 12-21 completely omit limitations that were added to the claims and/or argued for patentability in order to secure allowance.
Claims 28-32 completely omit the requirement of an optical sensor positioned between the second channel and a first and second pupae outlet while substituting a requirement that reads on the disclosed pupae detection sensor 612 rather than on the originally-claimed optical sensor 606. Thus, claims 28-32 completely omit limitations that were added to the claims and/or argued for patent