DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Acknowledgement is made of Applicant’s claim of priority and benefit based on continuation to U.S. Application No. 18/388,375, filed on November 9, 2023, now abandoned, which claims priority based on continuation to several US applications and patents, and claims priority and benefit of Japanese Application Nos. JP2010-001903, JP2010-001901, and JP2010-001902, all dated January 7, 2010 (for the list of US and international applications and US patents, to which this application claims priority based on continuation, please refer to Applicant’s specification Paragraph [0000]).
Information Disclosure Statement
The information disclosure statement (“IDS”) filed on 01/02/2025 was reviewed and the listed references were noted.
Drawings
The 12 page drawings have been considered and placed on record in the file.
Status of Claims
Claim 1 is pending.
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.
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.
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 limitations are “an acquisition unit that acquires …” and “a communications unit that communicates …” in Claim 1.
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
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 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (an abstract idea without significantly more). The claims recites a device for communicating a subject’s abnormal status to an external device based on monitoring of the subject and his size in the image data. With respect to analysis of Claim 1:
Step 1:
With regard to Step 1, the instant claim is directed to a device or a machine; and therefore, the claim is directed to one of the statutory categories of invention.
Step 2A, Prong One:
With regard to 2A, Prong One, the limitation of “detect information about a size of the subject person based on the first image data”; “determine a state of the subject person based on the detected information about the size”; “and set a first criteria according to which information to be transmitted to an external device is limited and a second criteria according to which the information to be transmitted to the external device is not limited”5, as drafted, recites an abstract idea, such as a process that, under its broadest reasonable interpretation, covers performance of the limitation manually or in the mind of a person. That is, a person in charge of monitoring an environment may inspect the image data and make the determination of the status of the subject person based on the detected size of the person, i.e., height/width, or size of the head of the person shown in images. This is the concept that falls under the grouping of abstract ideas mental processes, i.e., a concept perform in the human mind, evaluation, judgement, and/or opinion of a technician.
Step 2A, Prong Two:
The 2019 PEG defines the phrase “integration into a practical application” to require an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception. In the instant case, the additional elements/limitations in the claims, i.e., the elements of “an acquisition unit that acquires first image data in which a subject person is imaged, the first image data being generated by an imaging unit that comprises a plurality of pixels” and “a communication unit that communicates with the external device according to the first criteria or the second criteria when the state of the subject person is determined to be abnormal” are merely regarded as adding insignificant extra-solution activities of input or output to the judicial exception, and do not apply, rely on, or use the judicial exception as an indication of integration of the judicial exception into a practical application. In addition, the recited processor in the claim is simply regarded as addition of a generic computing component. Accordingly, the above-mentioned additional elements/limitations do not integrate the abstract idea into a practical application; and therefore, the claim recites an abstract idea.
Step 2B:
Because the claims fail under Step 2A, the claims are further evaluated under Step 2B. The claims herein do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as discussed above with respect to integration of the abstract idea into practical application, the additional elements/limitations to perform the steps, amount to no more than insignificant extra-solution activities. Mere instructions to apply an exception using generic components cannot provide an inventive concept. Therefore, Claim 1 is not patent eligible.
Double Patenting
Claims 1-20 of this application are patentably indistinct from their counterpart claims of Application No. 18/388,337, i.e., the sister application. Pursuant to 37 CFR 1.78(f) or pre-AIA 37 CFR 1.78(b), when two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on provisional double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Accordingly, Claim 1 of the instant application is rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims, 1 of U.S. Patent No. 11,854,288.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al. (US 2003/0058111 - IDS) in view of Choi et al. (US 2011/0085035).
Consider Claim 1, Lee discloses “An electronic device” (Lee, Paragraph [0024], the monitoring system) “comprising: an acquisition unit that acquires first image data in which a subject person is imaged, the first image data being generated by an imaging unit that comprises a plurality of pixels” (Lee, Paragraph [0030], the camera-based system and Paragraph [0035]; and Fig. 1, camera 102 acquiring images of a subject person 106); “a processor” (Lee, Fig. 1:110) “programmed to: detect information about a size of the subject person based on the first image data” (Lee, Paragraph [0065], where the object size and shape is determined); “determine a state of the subject person based on the detected information about the size” (Lee, Paragraph [0065], the state of a person, such as being upright, lying down, or falling is determined from analyzing images); “and set (Lee, Paragraph [0015], where an alarm signal is transmitted to a central station in the event of detection of abnormal state, and alternatively, a portion of the image data is transmitted. This information is transmitted in an unlimited basis). Lee is not relied on to disclose “set a first criteria according to which information to be transmitted to an external device is limited”. However, in an analogous field of endeavor, Choi discloses protecting privacy information of surveillance image by masking of the face or the like of the person before transmitting the information (Choi, Paragraph [0014]). Accordingly, the masking of the face before transmission of the image data is interpreted as the first criteria of according to which information to be transmitted to an external device is limited.
Accordingly, at the time of the invention, it would have been obvious to a person of ordinary skill in the art to combine Lee with the teachings of Choi to set a first criteria according to which information to be transmitted to an external device is limited. One of ordinary skill in art would have combined the elements of Lee and Choi as claimed by known methods to fulfill the task of transmission of images based on the preset privacy or non-privacy selection of the users. Accordingly, the combination of Lee and Choi discloses the invention of Claim 1.
Conclusion
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.
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/Siamak Harandi/Primary Examiner, Art Unit 2662
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