CTNF 18/849,525 CTNF 87849 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority Acknowledgement is made of Applicant’s claim that the instant application is the National Stage of the International Patent Application No. PCT/JP2023/009780, filed on March 14, 2023, and claim of priority and the benefit under 35 U.S.C. 119 to Japanese Patent Application No. JP2022-055041, filed on March 30, 2022. Information Disclosure Statement The information disclosure statement (“IDS”) filed on 09/22/2024 was reviewed and the listed references were considered. Drawings The 9-page drawings have been considered and placed on record in the file. 12-151 AIA 26-51 12-51 Status of Claims Claims 1-16 are pending. Specification 06-11 AIA The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – 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 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. 07-30-04 AIA Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function. Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function. Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. 07-30-05 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. 07-30-06 This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “an acquisition unit that acquires …” , “a setting unit that sets …”, “a display control unit that generates …”, “a change unit that changes …”, and “a processing unit that uploads …” in Claims 1-14. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. Claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. Although Claim 16 recites “A program for causing a computer to function …”. Therefore, the claim is directed to a computer program, i.e., software per se. Computer programs, per se, are not in one of the statutory categories of invention because a computer program is merely a set of instructions capable of being executed by a computer - the computer program itself is not a process. MPEP § 2106. A computer program, at best, is a functional descriptive material per se. Descriptive material can be characterized as either "functional descriptive material" or "nonfunctional descriptive material." Both types of "descriptive material" are nonstatutory when claimed as descriptive material per se, 33 F.3d at 1360, 31 USPQ2d at 1759. When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) )(discussing patentable weight of data structure limitations in the context of a statutory claim to a data structure stored on a computer readable medium that increases computer efficiency) and >In re Warmerdam, 33 F.3d *>1354, 1360- 61,31 USPQ2d *>1754, 1759 (claim to computer having a specific data structure stored in memory held statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361,31 USPQ2d at 1760 (claim to a data structure per se held nonstatutory). See MPEP 2106.01. In order to overcome the above-described rejection of Claim 15, Applicant may, for example, amend the claim as: “A non-transitory computer-readable medium storing a program for causing a computer to function as: …”. Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-aia AIA The factual inquiries set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: a. Determining the scope and contents of the prior art. b. Ascertaining the differences between the prior art and the claims at issue. c. Resolving the level of ordinary skill in the pertinent art. d. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-21-aia AIA Claim s 1-6 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Urabe et al. (US 2020/0073546) . Consider Claim 1, Urabe discloses “An information processing system comprising: an acquisition unit that acquires a medical video captured by a medical image capturing device” (Urabe, Paragraphs 162 and 163, ceiling camera 5187, a surgery field camera 5189, and the endoscope 5113 acquiring imaging data inside the cavity of a patient) ; “a setting unit that sets a highlight scene that is a candidate to be preferentially uploaded to a storage on a basis of the medical video” (Urabe, Paragraph [0057] discloses the editing process and the scene selection, i.e., highlighting , of the portion of the moving image that is desirable, designated as in-point and out-point. Paragraph [0056] discloses that because of storage concern, a reduced file size of the proxy file is preferable to be handled. Paragraph [0062] discloses storing of the proxy file in the storage, which may be the proxy file with a reduced file size ; Paragraph [0112] discloses “edited moving image data is stored in the storage unit 107 of the imaging device 100 and is transmitted to another equipment or the like other than the terminal device 200 and the terminal device 200”) ; “a display control unit that generates a video of a first screen representing a range of an image included in the highlight scene on an arrangement screen in which images of frames at regular intervals in the medical video or images representative for each scene are arranged in chronological order” (Urabe, Paragraph [0063] discloses that the proxy file from the imaging device is transmitted to terminal 200; Paragraph [0112] discloses “edited moving image data is stored in the storage unit 107 of the imaging device 100 and is transmitted to another equipment or the like other than the terminal device 200 and the terminal device 200”; Fig. 2, shows that terminal 200 includes a display unit 206; Fig. 10:112 and 108 disclose that the information from the moving image editing unit is shown on display unit; and Fig. 7 shows that the selection may be made with frames taken at a regular intervals; ) ; “and a change unit that changes the highlight scene on a basis of a user operation” (Urabe, Fig. 4 and Paragraph [0081] disclose use of a scroll bar, a slider, and a decision button; Paragraph [0103] discloses “it is possible to intuitively change a time interval between frame images by reducing the time interval in accordance with a pinch-in operation to confirm details of a proxy moving image and enlarging the time interval in accordance with a pinch-out operation to confirm the entirety/wide range of the proxy moving image”; finally, Paragraph [0112] discloses “Since the edited moving image is a moving image obtained by extract ing only desired scenes by the user and combining the scenes, the moving image has a data size smaller than that of the original moving image data. Accordingly, it is possible to perform transmission and various processes in a shorter period of time than when the original moving image data itself is transmitted”, accordingly, it is Examiner’s interpretation that the user may select and highlight the portion of the moving image through a simple operation ) . Accordingly, before the effective date of the instant application, it would have been obvious to one of ordinary skill in the art to use different embodiments of Urabe in order to arrive at the limitations recited in Claim 1. One of ordinary skill in the art could have combined the above-described elements in order to create an editing machine that only stores pertinent and desirable segments of a moving image in order to save on memory space and processing time during display presentation. Therefore, it would have been obvious to combine different embodiments of Urabe to obtain the invention of Claim 1. Consider Claim 2, Urabe discloses “The information processing system according to The information processing system according to wherein the display control unit generates a video of a combined screen obtained by combining the first screen and a second screen for displaying the medical video” (Urabe, Fig. 14 and Paragraph [0171]) . Consider Claim 3, Urabe discloses “The information processing system according to The information processing system according to wherein the display control unit generates a video of a combined screen obtained by combining the first screen and a second screen that displays the medical video in real time captured by the medical image capturing device” (Urabe, Fig. 14 and Paragraph [0171] and Paragraph [0181], where the surgical region is displayed in real time) . Consider Claim 4, Urabe discloses “The information processing system according to The information processing system according to wherein the display control unit arranges the images of the frames or the image representative for each scene on the first screen by reduced images” (Urabe, Figs. 4-7) . Consider Claim 5, Urabe discloses “The information processing system according to The information processing system according to wherein the change unit changes the highlight scene on a basis of the user operation to change a range of the image included in the highlight scene on the first screen generated by the display control unit” (Urabe, Fig. 4 and Paragraph [0081] disclose use of a scroll bar, a slider, and a decision button; Paragraph [0103] discloses “it is possible to intuitively change a time interval between frame images by reducing the time interval in accordance with a pinch-in operation to confirm details of a proxy moving image and enlarging the time interval in accordance with a pinch-out operation to confirm the entirety/wide range of the proxy moving image”) . Consider Claim 6, Urabe discloses “The information processing system according to The information processing system according to wherein the display control unit displays a boundary line between the highlight scene and a non-highlight scene on the arrangement screen in the first screen” (Urabe, Fig. 7 and Paragraph [0106] disclose “When an operation of designating an in-point or an out-point is performed by the user, display for emphasizing the designated frame image is performed as shown in FIG. 7 A, and the designated state is held. The emphasis display may be any display, such as surrounding the frame image with a thick frame as shown in FIG. 7 A, blinking the frame image, highlighting the frame image, or changing the color of the frame image, as long as the user can recognize designation”) . Claim 15 recites a method with steps corresponding to the elements of the apparatus recited in Claim 1. Therefore, the recited steps of this claim are mapped to the proposed Urabe reference in the same manner as the corresponding elements in its corresponding apparatus claim. Additionally, the rationale and motivation to combine the teachings included in the Urabe reference, presented in rejection of Claim 1, apply to this claim. Claim 16 recites a computer program with programming instructions corresponding to the elements of the apparatus recited in Claim 1. Therefore, the recited instructions of this claim are mapped to the proposed Urabe reference in the same manner as the corresponding elements in its corresponding apparatus claim. Additionally, the rationale and motivation to combine the teachings included in the Urabe reference, presented in rejection of Claim 1, apply to this claim. Finally, Urabe discloses a program enabling a processor to fulfill the recited functions (see for example, Urabe, Paragraph [0227]) . Allowable Subject Matter Claims 7-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: the cited prior art does not provide a motivation to teach the ordered combination of the recited limitations in these dependent claims with the limitation recited in claims they are dependent from. Conclusion and Contact Information The prior art made of record and not relied upon are considered pertinent to Applicant’s disclosure: (a) Edward O. Clapper (US 6,925,602) discloses “A digital video editing system uses a graphical user interface which facilitates the selection of a video sequence of interest and its representation in a conveniently visualized form. Through the graphical user interface, the user may select a starting frame, a time interval, and a number of frames within the time interval which may be represented by thumbnail depictions of selected video frames. Once the video sequence is represented by a selected sequence of video frames over a selected interval, the user can then use editing techniques to manipulate the portions of the video sequence represented by the thumbnail depictions” (Abstract) ; and (b) Manami Hikosaka (US 2021/0280300) discloses “An image capturing control unit in a medical information processing apparatus acquires a medical image and related information, which are associated with each other, from a storage apparatus, such as a Picture Archiving and Communication Systems (PACS), in which the medical image obtained by capturing an image of a subject and the related information about the medical image are stored in association with each other, and the image capturing control unit limits an output of edited related information to the storage apparatus, in accordance with setting information set in the acquired related information” (Abstract) . Any inquiry concerning this communication or earlier communications from the examiner should be directed to Siamak HARANDI whose telephone number is (571)270-1832. The examiner can normally be reached Monday - Friday 9:30 - 6:00 ET. 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, Amandeep Saini can be reached on (571)272-3382. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Siamak Harandi/Primary Examiner, Art Unit 2662 Application/Control Number: 18/849,525 Page 2 Art Unit: 2662 Application/Control Number: 18/849,525 Page 3 Art Unit: 2662 Application/Control Number: 18/849,525 Page 4 Art Unit: 2662 Application/Control Number: 18/849,525 Page 5 Art Unit: 2662 Application/Control Number: 18/849,525 Page 6 Art Unit: 2662 Application/Control Number: 18/849,525 Page 7 Art Unit: 2662 Application/Control Number: 18/849,525 Page 8 Art Unit: 2662 Application/Control Number: 18/849,525 Page 9 Art Unit: 2662 Application/Control Number: 18/849,525 Page 10 Art Unit: 2662 Application/Control Number: 18/849,525 Page 11 Art Unit: 2662 Application/Control Number: 18/849,525 Page 12 Art Unit: 2662 Application/Control Number: 18/849,525 Page 13 Art Unit: 2662 Application/Control Number: 18/849,525 Page 14 Art Unit: 2662 Application/Control Number: 18/849,525 Page 15 Art Unit: 2662 Application/Control Number: 18/849,525 Page 16 Art Unit: 2662
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