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 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 (1-5, 7, 12, 16-17) are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea without significantly more.
Claims (1-5, 7, 12, 16-17) are directed to the abstract idea of Mental processes – concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
“identify the acquired medical image and acquire a result of the identification; perform analysis of whether one or more predetermined motions are performed by a device that acquired the image, and acquire a result of the analysis; perform comparison of the result of the identification and the result of the analysis, and acquire a result of the comparison; and generate a weighting tag indicating weight of a degree of noncoincidence of the result of the identification and the result of the analysis, based on the result of the comparison.”
This judicial exception is not integrated into a practical application. The claims recite additional limitations such as “identify the acquired medical image and acquire a result of the identification; perform analysis of whether one or more predetermined motions are performed by a device that acquired the image, and acquire a result of the analysis; perform comparison of the result of the identification and the result of the analysis, and acquire a result of the comparison; and generate a weighting tag indicating weight of a degree of noncoincidence of the result of the identification and the result of the analysis, based on the result of the comparison.”. However, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims recite additional limitations which are “processor, acquire image, computer-readable recording medium”. However, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of Abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Therefore, since there are no limitations in the claims (1-5, 7, 12, 16-17) that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as a combination and as an ordered combination adds nothing that is not already present when looking at the elements taken individually, claims (1-5, 7, 12, 16-17) are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims (1-17) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (1-4, 9, 20-22, 26, 29-31) of U.S. Patent No. 12,175,664 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Instant application
US Patent
1. An information processing apparatus comprising: one or more processors comprising hardware, wherein the one or more processors are configured to: acquire an image; identify the acquired medical image and acquire a result of the identification; perform analysis of whether one or more predetermined motions are performed by a device that acquired the image, and acquire a result of the analysis; perform comparison of the result of the identification and the result of the analysis, and acquire a result of the comparison; and generate a weighting tag indicating weight of a degree of noncoincidence of the result of the identification and the result of the analysis, based on the result of the comparison.
1. An information processing apparatus comprising: one or more processors comprising hardware, wherein the one or more processors are configured to: acquire a medical image; perform identification of whether the medical image has a predetermined region; perform analysis of whether one or more predetermined motions is performed by a medical device that acquired the medical image; perform comparison of a result of the identification and a result of the analysis to determine one of: coincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image, and noncoincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image; generate one of a plurality of tags based on a result of the comparison; and impart the tag to the medical image.
16. An information processing method comprising: acquiring an image; identifying the acquired medical image and acquiring a result of the identification; performing analysis of whether one or more predetermined motions are performed by a device that acquired the image, and acquiring a result of the analysis; performing comparison of the result of the identification and the result of the analysis, and acquiring a result of the comparison; and generating a weighting tag indicating weight of a degree of noncoincidence of the result of the identification and the result of the analysis, based on the result of the comparison.
30. An information processing method comprising: acquiring a medical image; performing identification of whether the medical image has a predetermined region; performing analysis of whether one or more predetermined motions is performed by a medical device that acquired the medical image; performing comparison of a result of the identification and a result of the analysis to determine one of: coincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image, and noncoincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image; generating one of a plurality of tags based on a result of the comparison; and imparting the tag to the medical image.
17. A non-transitory computer-readable recording medium recording an information processing program, the information processing program causing one or more computers to execute: acquiring an image; identifying the acquired medical image and acquiring a result of the identification; performing analysis of whether one or more predetermined motions are performed by a device that acquired the image, and acquiring a result of the analysis; performing comparison of the result of the identification and the result of the analysis, and acquiring a result of the comparison; and generating a weighting tag indicating weight of a degree of noncoincidence of the result of the identification and the result of the analysis, based on the result of the comparison.
31. A non-transitory computer-readable recording medium recording an information processing program, the information processing program causing a computer to execute: acquiring a medical image; performing identification of whether the medical image has a predetermined region; performing analysis of whether one or more predetermined motions is performed by a medical device that acquired the medical image; performing comparison of a result of the identification and a result of the analysis to determine one of: coincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image, and noncoincidence of identification of the medical image as having the predetermined region and performance of the one or more predetermined motions by the medical device that captured the medical image; generating one of a plurality of tags based on a result of the comparison; and imparting the tag to medical image.
The instant application differs from the US Patent based on the underlined portion. However, the underlined portion is considered an obvious variation. Therefore, it would have been obvious to one of ordinary skills in the art to incorporate this obvious variation into the US Patent, in the manner as claimed and as taught by the instant application, for the benefit of optimizing the medical system. (Claims (2-15) have been analyzed and rejected w/r to claims (1-4, 9, 20-22, 26, 29)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Oosake (US 2020/0305698 A1) discloses an image processing device, endoscope system, image processing method.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEON FLORES whose telephone number is (571)270-1201. The examiner can normally be reached M-F 8am - 6pm.
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/LEON FLORES/Primary Examiner, Art Unit 2676 September 24, 2026
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