DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
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.
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.
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 limitation(s) is/are: “a first device that generates” and “a second device that generates” in claim 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 Objections
Claim 13 is objected to because of the following informalities: lines 2–3 recite “wherein the discriminator” but should instead recite “wherein the trained discriminator” according to the antecedent basis in claim 11. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: lines 1–2 refer to “first information,” “second information,” and “an object” but all of these limitations have had antecedent basis introduced in claim 1 from which claim 14 depends, and therefore, all of these limitations should be recited to refer back to the antecedent basis in claim by using “the.” Appropriate correction is required.
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 1–10, and 14–15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without a practical application or significantly more.
Regarding claims 1 and 15, these claims recite the following limitations which are found to be abstract ideas not reciting a practical application or significantly more, with claim 1 being exemplary:
acquires first information including an image regarding an object and second information including at least one of a character, a number, a chemical structure, and a spectrum regarding the object; predicts a plurality of characteristics of the object based on the acquired first information and the acquired second information (abstract idea as a mental process as a human mind is capable of looking at an image (receiving first information), and being provided with collected numeric data (second information), and making a prediction as to some qualities of the object shown in the image. For example, a human seeing a picture of a lead brick (the brick would appear grey and dull, and there would be contextual clues about it being lead such as it appearing within a spectroscopy lab as part of a shielding cave for a sensitive detector), then a human seeing the lead brick would be capable of determining that the brick is heavy (lead is heavy)).
Claims 1 and 15 further recite additional elements: claim 1 is directed towards a device comprising a hardware processor, and claim 15 is directed towards a non-transitory recording medium. While these limitations are additional elements, they are not sufficient to recite a practical application of the abstract ideas recited in claims 1 and 15 as they amount to mere generic computer elements and thus amount to no more than a recitation of the words "apply it" (or an equivalent) or are no more than mere instructions to implement an abstract idea or other exception on a computer. see MPEP §2106.05(f).
Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in combination, the above recited additional elements from claims 1 and 15 do not add significantly more (also known as an “inventive concept”) to the exception. Rather, the additional elements disclosed above perform well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d).
Therefore, independent claims 1 and 15 are directed towards an abstract idea without a practical application or significantly more.
Regarding claim 2, the limitations are merely directed towards further abstract ideas, specifically mental processes as the human mind is also practically capable of selecting information from various information presented, in order to predict characteristics of the object.
Regarding claims 3, 4, 5, 10 and 14, these claims all recite the additional elements that are insignificant extra-solution activity, which while not necessarily being abstract ideas, are nonetheless insignificant extra solution activity since they are merely data gathering and data output (see MPEP §2106.05(g)). Moreover, these elements amount to receiving and outputting data in a computer based system and are well understood, routine, conventional activity. See MPEP 2106.05(d), subsection II.
Further regarding claim 14, the “first device” and “second device” are not sufficient to recite a practical application of the abstract ideas recited in claims 1 and 15 as they amount to mere generic computer elements and thus amount to no more than a recitation of the words "apply it" (or an equivalent) or are no more than mere instructions to implement an abstract idea or other exception on a computer. see MPEP §2106.05(f).
Further, claim 14 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in combination, the above recited additional elements from claim 14 does not add significantly more (also known as an “inventive concept”) to the exception. Rather, the additional elements disclosed above perform well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d).
Regarding claims 6–7, these claims simply further limit the information that is processed, and since a human mind would be capable of receiving and interpreting/understanding/being able to use for prediction purposes, the types of data claimed in claims 6–7, these claims also do not recite significantly more or a practical application for the abstract ideas recited in claim 1.
Regarding claims 8–9, in the example given in claim 1 for how the human mind can practically perform mentally the steps recited in claim 1, the human mind predicts at least a weight characteristic for the hypothetical lead brick object, and therefore, the characteristic predicted includes a physical property (weight).
Finally, it is noted that as per MPEP 2106.04(d)(1), a practical application and thus subject matter eligibility can be found when the following two requirements are met per a two-step analysis: In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1–3, and 5–15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shun et al., WIPO Patent Application Publication No. WO 2023224012 A1 (with reference to the English language machine translation provided, herein “Shun”).
Regarding claims 1 and 15, with substantive differences between the claims noted in curly brackets {}, and with claim 1 as exemplary, Shun teaches {a prediction device comprising a hardware processor that – claim 1 / a non-transitory recording medium storing a computer readable prediction program for causing a computer to execute a process comprising: - claim 15} (Shun page 2, under Description of Embodiments section, ¶¶3–5 and 6, physical property prediction device 10 configured by a terminal device such as a personal computer, with a calculation unit 12 realized by hardware such as a graphics processing unit (GPU), the computer also including a storage unit 14 such as a hard disk storing programs necessary for calculations by the calculation unit):
acquires first information including an image regarding an object (Shun page 3, ¶3, input data into the calculation unit including image data of the composition (object)) and second information including at least one of a character, a number, a chemical structure, and a spectrum regarding the object (Shun page 3, ¶¶3 and 5, input data into the calculation unit also including measured values of the composition (object) including numerical values based on Raman spectroscopy); and
predicts a plurality of characteristics of the object based on the acquired first information and the acquired second information (Shun page 3, ¶¶3–4, calculation unit calculates physical property information of the composition, and chemical structure information from input multimodal data (based on the first and second acquired information)).
Regarding claim 2, Shun teaches wherein the hardware processor: selects the first information and the second information in accordance with the plurality of characteristics of the object to be predicted, and predicts the plurality of characteristics of the object based on the selected first information and the selected second information (Shun page 5, last full paragraph – page 6, 3rd full paragraph, physical structure information from the first neural network receiving image data (first information) is integrated with chemical structure information from the second neural network receiving spectra numerical data by digitizing the image data and converting it to numerical data (selecting first information), and features are extracted from the spectra numerical data (selecting second information), and the converted physical structure information and chemical structure information is integrated based on one-dimensional vector data, which is used by the calculation unit to generate physical property information (predicts the plurality of characteristics of the object)).
Regarding claim 3, Shun teaches wherein the image includes an image obtained by imaging the object using at least one of an imaging device, an X-ray Talbot-Lau device, an ultrasonic device, a fluorescent fingerprint measurement device, a hyperspectral camera, a millimeter wave imaging device, a scanning electron microscope, an atomic force microscope, a transmission electron microscope, a fluorescence microscope, and a multidimensional colorimeter (where the claim limits are satisfied under the broadest reasonable interpretation (herein BRI) by meeting one of the “at least one” listed items, Shun teaches on page 4, continuation of the last paragraph on page 3, the image data containing physical structure information is captured by a transmission electron microscope (TEM)).
Regarding claim 5, Shun teaches wherein the second information includes at least one of a character and a chemical structure representing a type of a substance contained in the object, and a number representing an amount of the substance contained in the object (where the claim limits are satisfied under the broadest reasonable interpretation (herein BRI) by meeting one of the “at least one” listed items, Shun teaches on page 3, ¶4, second material information input to the second neural network determines the chemical structure information (thus includes it), where the chemical structure information constitutes composition, type numbers and interactions of the composition (object)).
Regarding claim 6, Shun teaches wherein the second information includes at least one of an infrared absorption spectrum, a terahertz wave spectroscopy spectrum, a nuclear magnetic resonance spectrum, a Raman spectroscopy spectrum, an impedance spectroscopy spectrum, and an X-ray diffraction spectrum of the object (where the claim limits are satisfied under the broadest reasonable interpretation (herein BRI) by meeting one of the “at least one” listed items, Shun teaches on page 5, first full paragraph, second material information includes Raman spectroscopy).
Regarding claim 7, Shun teaches wherein the object is a mixture of a plurality of substances having chemical structures different from each other (Shun page 3, ¶4, the composition is composed of multiple substances, and the chemical structures determined are those of each substance constituting the composition, where page 9, ¶7 states a composition being an acrylic cured resin composite, known to have multiple chemical structures different from each other).
Regarding claim 8, Shun teaches wherein the plurality of characteristics include at least one of a physical property, quality, and a function of the object (where the claim limits are satisfied under the broadest reasonable interpretation (herein BRI) by meeting one of the “at least one” listed items, Shun teaches on page 3, ¶3, the calculation unit calculates physical property information of the composition).
Regarding claim 9, Shun teaches wherein the plurality of characteristics include at least one of a mechanical property, a physical property, a thermal characteristic, moldability, an electrical characteristic, durability, machinability, and combustibility of the object (where the claim limits are satisfied under the broadest reasonable interpretation (herein BRI) by meeting one of the “at least one” listed items, Shun teaches on page 3, ¶3, the calculation unit calculates physical property information of the composition).
Regarding claim 10, Shun teaches wherein the hardware processor causes an output section to output information regarding the plurality of predicted characteristics (Shun page 2, last paragraph, output unit 16 as a display device, and page 7, third full paragraph, teaching that the calculation unit controls the output unit to output the physical property information).
Regarding claim 11, Shun teaches wherein the hardware processor predicts the plurality of characteristics using a trained discriminator (Shun page 4, third full paragraph, unsupervised learning is performed on a generative adversarial network (GAN), as part of the neural network system that outputs physical property information, where the GAN includes a discriminator).
Regarding claim 12, Shun teaches wherein the hardware processor extracts a feature from each of the acquired first information and the acquired second information, and predicts the plurality of characteristics with the extracted features as inputs (Shun page 5, last full paragraph – page 6, 3rd full paragraph, physical structure information from the first neural network receiving image data (first information) is integrated with chemical structure information from the second neural network receiving spectra numerical data by digitizing the image data and converting it to numerical data and one-dimensional vector data (features), and features are extracted from the spectra numerical data (selecting second information), and the converted physical structure information and chemical structure information is integrated based on one-dimensional vector data, which is used by the calculation unit to generate physical property information (predicts the plurality of characteristics from the one-dimensional vector data/extracted features)).
Regarding claim 13, Shun teaches wherein the discriminator is subjected to machine learning with the features as input data and the plurality of characteristics as output data (Shun page 4, full paragraphs 3–4, the discriminator, part of the GAN within the first neural network, is trained based on the first material information, which is discussed above in the rationale for claim 12 as having its input image data be a one-dimensional vector (features), and where page 3, ¶4 teaches the first neural network outputting physical structure information (plurality of characteristics)).
Regarding claim 14, Shun teaches a prediction system comprising (Shun page 2, ¶¶4–7, physical property prediction system): a first device that generates first information regarding an object; a second device that generates second information regarding the object (Shun page 2, ¶4, page 3, ¶2, server device 20 that provides (generates) experimental data for the physical property prediction system via communication network, the experimental data used to train the neural networks that output physical property information, and where page 3, last full paragraph teaches the machine learning (neural network training) using image data of a composition (first information regarding an object) and page 4, last paragraph that continues onto page 5, teaches using numerical data of measured values of the compound (second information regarding the object) to train the neural network, where both the images and the numerical data are from (generated) service device 20); and the prediction device according to claim 1 (see rejection rationale above for claim 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shun, as set forth above regarding claim 1 from which claim 4 depends, further in view of Abdoo et al., US Patent Application Publication No. US 2019/0087966 A1 (herein “Abdoo”).
Regarding claim 4, Shun does not explicitly teach where Abdoo teaches wherein the image includes an image obtained by imaging a behavior of a person related to the object (Abdoo ¶¶80 and 83, within a work area, an imaging device captures images in a region where a work object is, and identifies the work object as well as a detected interaction (behavior) between the objects (related to the object) and a part or portion of a person’s body).
Therefore taking the teachings of Shun and Abdoo together as a whole, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the image being analyzed in Shun to include a person’s interaction with the subject object as disclosed in Abdoo at least because doing so would allow for detecting further properties and characteristics of an object, including whether an object is being disposed of, or is being used in a contextual process (cooking, inventory tracking). See Shun ¶¶82–83.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Di Stefano et al., US Patent Application Publication No. US 2023/0040619 A1, directed towards using a thermal camera image to assess physical qualities of a weld bead on a welded material.
Chono et al., US Patent Application Publication No. US 2020/0064193 A1, directed towards calculating characteristic indices of an object based on measurement data of an object.
Nipe et al., US Patent Application Publication No. US 2018/0365820 A1, directed towards determining characteristics of an object using a hyperspectral image.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE M KOETH whose telephone number is (571)272-5908. The examiner can normally be reached Monday-Thursday, 09:00-17:00, Friday 09:00-13:00, EDT/EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vincent Rudolph can be reached at 571-272-8243. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHELLE M. KOETH
Primary Examiner
Art Unit 2671
/MICHELLE M KOETH/Primary Examiner, Art Unit 2671
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