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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/16/2024, 11/06/2025, 02/06/2026 was filed and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
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.
Claim Rejections - 35 USC § 101
Claims are non-statutory under the most recent interpretation of the Interim Guidelines regarding 35 U .S.C.101 because: the computer-readable recording medium claimed is not positively disclosed in the specification as a statutory only embodiment (claim 8 cites only a computer-readable recording medium). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2. To overcome this rejection, claim 8 may be amended to recite "a non-transitory computer-readable recording medium".
Claim(s) 1-8 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The limitations, under their broadest reasonable interpretation, cover mental process (concept performed in a human mind, including as observation, evaluation, judgment, opinion, organizing human activity and mathematical concepts and calculations). The claim(s) recite(s) a method, an apparatus, a CRM for image inspection. This judicial exception is not integrated into a practical application because the steps do not add meaningful limitations to be considered specifically applied to a particular technological problem to be solved .The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such except for the generic computer elements at high level of generality (i.e., processor, memory).
According to the USPTO guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claims 1, 7, 8 are directed to an abstract idea as shown below:
STEP 1: Do the claims fall within one of the statutory categories? YES. Claim(s) 1, 7, 8 are directed to a method, i.e. process, an apparatus and a computer-readable recording medium, i.e., a system.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? YES, the claims are directed toward a mental process (i.e. abstract idea).
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The apparatus in claim 1 (method in claim 7 and computer-readable recording medium in claim 8) comprise a mental process that can be practicably performed in the human mind (or generic computers or components configured to perform the method) and, therefore, an abstract idea.
Regarding Claim(s) 1, 7, 8: the method recites the steps (functions) of:
executing inspection of the image formed on the recording medium based on the reference image (mental process including observation and evaluation, and can be done mentally in the human mind; a human can visually compare the reference image with the image formed on the recording medium);
receiving inspection region designation information indicating designation of an inspection region for which inspection is executed and/or designation of an inspection exclusion region for which inspection is not executed (mental process including observation and evaluation, and can be done mentally in the human mind; a human mind can determine what regions to look at and what regions to not look at);
receiving the designation before generation of the reference image is completed (mental process including observation and evaluation, and can be done mentally in the human mind; a human mind can decide what regions to look at (and regions to not inspect) before generating the reference image).
These limitations, as drafted, is a simple process that, under their broadest reasonable interpretation, covers performance of the limitations in the mind or by a human. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? NO, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim(s) 8 does/do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. Claim(s) 8 recite(s) the further limitations of:
A computer-readable recording medium storing an image inspection program for causing a computer to execute processing (generic computers or components configured to perform the method);
generating a reference image to be used for inspection of an image formed on a recording medium; (insignificant pre/post-solution extra activity of generating data) OR (generic computers or components configured to perform the method; a human may create a reference image using a generic computer or components);
These limitations are recited at a high level of generality (i.e. as a general action or change being taken based on the results of the acquiring step) and amounts to mere post solution actions, which is a form of insignificant extra-solution activity. Further, the claims are claimed generically and are operating in their ordinary capacity such that they do not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? NO, the claims do not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim(s) 1, 7, 8 does/do not recite any additional elements that are not well-understood, routine or conventional. The use of a computer to generating, executing, and receiving , as claimed in Claim(s) 1, 7, 8 is a routine, well-understood and conventional process that is performed by computers.
Thus, since Claim(s) 1, 7, 8 is/are: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that Claim(s) 1, 7, 8 is/are not eligible subject matter under 35 U.S.C 101.
Regarding claim 2: the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process. The limitation(s): receives the designation before the generation of the reference image or during the generation of the reference image (mental process including observation and evaluation, and can be done mentally in the human mind) OR (mathematical concepts, mathematical relationships, mathematical formulas or equations, mathematical calculations) OR (organizing of human activity) OR (insignificant pre/post-solution extra activity of generating data) OR (generic computers or components configured to perform the method).
Regarding claim 3: the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process. The limitation(s): an image former that forms an image on the recording medium based on a document image (mental process including observation and evaluation, and can be done mentally in the human mind) OR (insignificant pre/post-solution extra activity of generating data) OR (generic computers or components configured to perform the method); a controller that performs control so as to transmit the document image to the hardware processor and the image former (mathematical concepts, mathematical relationships, mathematical formulas or equations, mathematical calculations) OR (insignificant pre/post-solution extra activity of generating data) OR (generic computers or components configured to perform the method); the controller transmits the inspection region designation information that has been received to the hardware processor (generic computers or components configured to perform the method).
Regarding claim 4: the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process. The limitation(s): wherein the controller causes the hardware processor and the image former to perform, in parallel, the generation of the reference image and formation of the image on the recording medium (generic computers or components configured to perform the method).
Regarding claim 5: the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process. The limitation(s): wherein the hardware processor acquires the inspection region designation information of the reference image that is currently generated during the generation of the reference image (mental process including observation and evaluation, and can be done mentally in the human mind; a digital note or email could have the inspection region designation that a human reads) OR (generic computers or components configured to perform the method).
Regarding claim 6: the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process. The limitation(s): wherein the hardware processor sets the inspection region designation information that has been acquired in the reference image (mental process including observation and evaluation, and can be done mentally in the human mind; a human mind can verify, or set in the mind, the region to inspect) OR (generic computers or components configured to perform the method).
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Azuma (US 2023/0328186 A1, 2022 using Foreign Priority, as cited in IDS filed 11/06/2025).
Regarding claims 1, 7, 8, Azuma teaches An image inspection apparatus (Azuma, see nearest image below: “inspection apparatus”) comprising a hardware processor that (Azuma, see nearest image below, “register a reference image”, which shows a hardware processor was used), generates a reference image (Azuma, see nearest image below: “In such inspections, a method is employed where a printed matter is compared with an image including no defect that is registered as a reference image”. Which shows a reference image is generated) to be used for inspection of an image formed on a recording medium (Azuma, [0002-0007], reproduced below:
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. “register a reference image in an inspection apparatus”. The registered reference image is being interpreted as involving image formed on a recording medium)
executes inspection (Azuma, see nearest image above, “A print job to be inspected in an inspection apparatus will be referred to as an inspection job”) of the image formed on the recording medium based on the reference image (Azuma, see nearest image above, “comparing an actual printed matter with the registered reference image”); and
receives inspection region designation information (Azuma, see nearest image above, “setting a detection region in which a defect is to be detected in a main print job,”) indicating designation of an inspection region for which inspection is executed (Azuma, see nearest image above, “setting a detection region in which a defect is to be detected in a main print job,”) and/or designation of an inspection exclusion region for which inspection is not executed (Azuma, see nearest image above, “setting a detection region in which a defect is to be detected in a main print job”. Which shows that the non-selected detection regions are excluded), wherein
the hardware processor receives the designation (Azuma, see nearest image below, “registering an inspection region” is being interpreted as involving “designation”) before generation of the reference image is completed (Azuma, [0111], reproduced below:
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. “registering an inspection region and an inspection level without designating a reference image”. “Without designating a reference image” is being interpreted as involving “before generation of the reference image is completed”).
Regarding claim 2, Azuma teaches The image inspection apparatus according to claim 1, wherein the hardware processor receives the designation before the generation of the reference image (Azuma, [0111], reproduced below:
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. “registering an inspection region and an inspection level without designating a reference image”. “Without designating a reference image” is being interpreted as involving “before generation of the reference image is completed”) or during the generation of the reference image (Azuma, [0090]: “If the inspection apparatus 0108 receives a print job for which ‘New registration’ is set in the inspection setting, the inspection apparatus 0108 displays a reference image received on the display unit 0245 within an inspection setting screen 1101 displayed on the display unit 0245”. “Inspection setting” is being interpreted as involving “designation”. Which shows the designation occurs during the generation of the reference image).
Regarding claim 3, Azuma teaches The image inspection apparatus according to claim 1, further comprising:
an image former that forms an image on the recording medium (Azuma, [0061]: “A printed matter that is a sheet printed by the printing apparatus 0101 is subjected to image capturing executed by the inspection unit 0106 to obtain image data”. “Image capturing” is being interpreted as involving “an image former”. “A printed matter” is being interpreted as involving “the recording medium”) based on a document image (Azuma, [0062]: “In the above-described manner, the reference image registration method in the scan inspection registers image data obtained by scanning of a printed matter in the inspection apparatus 0108 as the reference image”. The scanned image that is now registered is being interpreted ad involving “a document image”); and
a controller that performs control so as to transmit the document image to the hardware processor and the image former (Azuma, [0061]: “A printed matter that is a sheet printed by the printing apparatus 0101 is subjected to image capturing executed by the inspection unit 0106 to obtain image data”. Which is being interpreted as involving hardware processor and image former to scan and transmit the scanned image), wherein
the controller transmits the inspection region designation information that has been received to the hardware processor (Azuma, [0090]: “If any of “Preset 1” to “Preset 10” is selected, the inspection apparatus 0108 performs inspection based on a region and a level that are preliminarily-designated for the reference image”. “Inspection based on a region” is being interpreted as involving “inspection region designation information”. Which is being interpreted as involving a controller that transmits the region information that was received to the hardware processor.).
Regarding claim 4, Azuma teaches The image inspection apparatus according to claim 3, wherein the controller causes the hardware processor and the image former to perform, in parallel, the generation of the reference image (Azuma, see nearest image below, “sheet printed…is subjected to image capturing…to obtain image data…registers image data as a reference image”) and formation of the image on the recording medium (Azuma, [0061-0062], reproduced below:
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. “sheet printed…is subjected to image capturing…to obtain image data”. Which shows the reference image and image formation occur in parallel as they are happening at the same time).
Regarding claim 5, Azuma teaches The image inspection apparatus according to claim 1, wherein the hardware processor acquires the inspection region designation information of the reference image that is currently generated during the generation of the reference image (Azuma, [0090]: “If the inspection apparatus 0108 receives a print job for which ‘New registration’ is set in the inspection setting, the inspection apparatus 0108 displays a reference image received on the display unit 0245 within an inspection setting screen 1101 displayed on the display unit 0245”. “Inspection setting” is being interpreted as involving “designation”. Which shows the designation occurs during the generation of the reference image).
Regarding claim 6, Azuma teaches The image inspection apparatus according to claim 5, wherein the hardware processor sets the inspection region designation information that has been acquired in the reference image (Azuma, [0090]: “If the inspection apparatus 0108 receives a print job for which ‘New registration’ is set in the inspection setting, the inspection apparatus 0108 displays a reference image received on the display unit 0245 within an inspection setting screen 1101 displayed on the display unit 0245”. “Inspection setting” is being interpreted as involving “designation”. When the inspection setting is selected, then it is “set” by the hardware processor).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ukishima (US 2021/0114368 A1, 2021) discloses printed matter defect detection using reference data.
Nohdomi (US 2024/0364821 A1, Apr 2023) discloses printed matter defect detection using reference data (interpreted from master image), with user interface.
Wang et al (“Local Defect Detection and Print Quality Assessment”, 2016) discloses designation information (interpreted from candidate region selection) for automated printed matter defect detection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHNNY B DUONG whose telephone number is (571)272-1358. The examiner can normally be reached Monday - Thursday 10a-9p (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Bella can be reached at (571)272-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.B.D./Examiner, Art Unit 2667 /MATTHEW C BELLA/Supervisory Patent Examiner, Art Unit 2667
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