FINAL REJECTION
Examiner’s Remarks
Regarding the amendment filed 3/27/2026:
The amendments to claims 1-3 and 5-18 are acknowledged and accepted.
The addition of new claims 19 and 20 is acknowledged and accepted.
The amendment to the specification is acknowledged and accepted.
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 .
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/27/2026 was filed after the mailing date of the Non-Final office action on 1/7/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 recites “the processing determination unit” followed by multiple “determines” steps. It is suggested that there be a colon after “the processing determination unit”, i.e. “the processing determination unit:”.
Appropriate correction is required.
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:
“an acquisition unit that acquires a detection signal of the workpiece by a detection sensor, conveyor information including a conveyance speed of the conveyor, and installation information...” in claims 1, 17 and 18
“a recognition unit that recognizes a conveyance state of the workpiece...” in claims 1, 17 and 18
“a processing determination unit that determines a control parameter...” in claims 1, 17 and 18
“a communication unit that transmits the control parameter...” in claims 1, 17 and 18
“an illumination control unit that controls an illumination unit...” in claims 17 and 18
“a dimension measurement unit that detects workpiece information...” in claim 20
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 17 and 18 recite “a posture of the workpiece on the conveyor” and “a conveyance position of the workpiece on the conveyor”. It is unclear as to a difference between the “a posture of the workpiece” and “a conveyance position of the workpiece” since both are with respect to the workpiece being on the conveyor. Please clarify.
Regarding claims 1, 17 and 18, the claim limitations “an acquisition unit that acquires a detection signal of the workpiece by a detection sensor, conveyor information including a conveyance speed of the conveyor, and installation information...”, “a recognition unit that recognizes a conveyance state of the workpiece...”, “a processing determination unit that determines a control parameter...”, and “a communication unit that transmits the control parameter...”, and in claims 17 and 18 the claim limitation “an illumination control unit that controls an illumination unit...” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification recites that these elements are hardware of the controller, software of the controller, and the like, and the controller may be a microcomputer. The “and the like” is indefinite in that it is not clear what “and the like” encompasses. There is no way to determine the metes and bounds of these limitations, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown. Furthermore, the specification does not disclose a corresponding algorithm associated with a computer or microprocessor. As stated in MPEP 2181(II)(B), “a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. For example, in Advanced Ground Information Systems, Inc. v. Life360, Inc., 830 F.3d 1341, 119 USPQ2d 1526 (Fed. Cir. 2016)”
Claim 20 also recites “a dimension measurement unit that detects workpiece information...”. The specification is devoid of adequate structure to perform the claimed functions . There is no way to determine the metes and bounds of these limitations, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which mechanical structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims not specifically addressed are indefinite due to their dependency.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As described above, the disclosure does not provide adequate structure to perform the claimed function of acquiring a detection signal of the workpiece by a detection sensor, conveyor information including a conveyance speed of the conveyor, and installation information...., claimed function of recognizing a conveyance state of the workpiece..., claimed function of determining a control parameter..., claimed function of transmitting a control parameter..., claimed function of controlling an illumination unit..., and claimed function of detects workpiece information. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Because there is inadequate disclosure of the claimed invention, the inventor has also not provided sufficient disclosure to show possession of the invention. Correction is required.
Claims not specifically addressed fail to comply with the written description requirement due to their dependency.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hanada et al. (US 2026/0057203).
With respect to claim 1, Hanada et al. discloses a controller connected to one or a plurality of cameras that generate images based on reflected light from a code attached to a workpiece conveyed on a conveyor and a decoder that executes decoding processing of the code attached to the workpiece based on images output from the one or plurality of cameras ([0100]), the controller comprising:
an acquisition unit that acquires a detection signal of the workpiece by a detection sensor, conveyor information including a conveyance speed of the conveyor, and installation information indicating a position and a posture of each camera of the one or plurality of cameras in a conveyor coordinate system ([0131], [0169], [0172], [0182]);
a recognition unit that recognizes a conveyance state of the workpiece including at least one of a conveyance speed of the workpiece, dimensions of the workpiece, or a posture of the workpiece on the conveyor based on the detection signal and the conveyance speed ([0132]);
a processing determination unit that determines a control parameter corresponding for each camera, the control parameter corresponds to a conveyance position of the workpiece on the conveyor for each camera and is based on the conveyance state of the workpiece and the installation information of each camera ([0134]); and
a communication unit that transmits the control parameter determined by the processing determination unit to each corresponding camera ([0143]).
With respect to claim 2, Hanada et al. discloses the processing determination unit determines a capturing cycle for each camera based on the conveyance state of the workpiece and the installation information of each camera, and the communication unit transmits the capturing cycle determined by the processing determination unit to each corresponding camera ([0144]).
With respect to claim 3, Hanada et al. discloses the controller is connected to a plurality of illumination units, each illumination unit corresponding to the plurality of cameras each corresponding camera via the communication unit, the processing determination unit generates a reference signal that defines a basic cycle common to each camera and each illumination unit, and determines a capturing cycle and an illumination cycle based on the basic cycle for each camera and each illumination unit, and the communication unit transmits the capturing cycle determined by the processing determination unit to each corresponding camera, and transmits the illumination cycle determined by the processing determination unit to each corresponding illumination unit ([0115], [0138], [0139], [0144]).
With respect to claim 4, Hanada et al. discloses the capturing cycle and the illumination cycle are constituted by one or a plurality of the basic cycles ([0139]).
With respect to claim 5, Hanada et al. discloses the processing determination unit determines offset amounts by which start timings of the capturing cycle and the illumination cycle are offset from the reference signal for each camera and each illumination unit based on the conveyance state of the workpiece and the installation information of each camera ([0140]).
With respect to claim 6, Hanada et al. discloses wherein the one or plurality of cameras capture a portion above a conveyance surface of the conveyor, and capture different workpiece surfaces ([0099]).
With respect to claim 7, Hanada et al. discloses an acceptance unit capable of accepting, from a user, a combination of a camera and an illumination unit that are desired to prevent interference among the one or plurality of cameras and the plurality of illumination units connected to the controller, wherein the processing determination unit generates a plurality of groups for each combination accepted by the acceptance unit, and determines the offset amount for each group ([0133], [0140], [0141], [0289]).
With respect to claim 8, Hanada et al. discloses the controller is connected to a plurality of bottom-surface cameras that of the one or plurality of cameras, which read the code attached to a bottom surface of the workpiece through a common gap of a conveyor from below a conveyance surface of the conveyor and a plurality of illumination units corresponding to the plurality of bottom-surface cameras, and causes the plurality of illumination units to emit illumination light rays at overlapping timings ([0095], [0097], [0142]).
With respect to claim 9, Hanada et al. discloses the processing determination unit determines in advance the control parameter corresponding to the conveyance position of the workpiece on the conveyor based on the conveyance state of the workpiece and the installation information of each camera before the workpiece reaches the conveyance position, and the communication unit transmits the corresponding control parameter to each camera after the corresponding control parameter is determined.
With respect to claim 10, Hanada et al. discloses the one or plurality of cameras include a first camera and a second camera, the processing determination unit: determines a first capturing cycle for the first camera based on the conveyance state of the workpiece and a first installation information of the first camera, determines a second capturing cycle for the second camera based on the conveyance state of the workpiece and a second installation information of the second camera, determines, as the control parameter, a first reading region of the first camera based on the conveyance state of the workpiece and the first installation information of the first camera for the first capturing cycle, and determines, as the control parameter, a second reading region of the second camera based on the conveyance state of the workpiece and a second installation information of the second camera for the second capturing cycle ([0136]).
With respect to claim 11, Hanada et al. discloses the processing determination unit determines, as the control parameter, a code to be read based on the conveyance state of the workpiece and the installation information of each camera ([0136]).
With respect to claim 12, Hanada et al. discloses the processing determination unit determines, as the control parameter, a time limit of decoding processing based on the conveyance state of the workpiece and the installation information of each camera (read result output timeout) ([0135]).
With respect to claim 13, Hanada et al. discloses the processing determination unit determines, as the control parameter, whether or not a captured image is output based on the conveyance speed ([0137]).
With respect to claim 14, Hanada et al. discloses the detection sensor includes a dimension measurement function that further detects workpiece information including at least one of a position of the workpiece in a conveyor width direction or a height of the workpiece, the acquisition unit further acquires a width of the conveyor as the conveyor information, and the processing determination unit determines the control parameter corresponding to the conveyance position of the workpiece on the conveyor in the conveyor width direction based on the workpiece information ([0131]).
With respect to claim 15, Hanada et al. discloses the processing determination unit determines, as the control parameter, a mask region for which decoding processing is not executed based on the conveyance state of the workpiece, the workpiece information, and the installation information of each camera ([0157]).
With respect to claim 16, Hanada et al. discloses the one or plurality of cameras include an image sensor in which a plurality of pixels are arrayed in a matrix and the number of pixels in a column direction is larger than the number of pixels in a row direction, and the processing determination unit determines, as the control parameter, a region where only pixels arrayed in some rows of the image sensor are partially read based on the conveyance state of the workpiece and the installation information of each camera ([0105]).
With respect to claim 17, Hanada et al. discloses a controller connected to one or a plurality of code readers, each of the code readers including an illumination control unit that controls an illumination unit that irradiates a workpiece conveyed on a conveyor, a camera that generates images based on reflected light from a code attached to the workpiece, and a decoder that executes decoding processing of the code attached to the workpiece based on the images output from the camera, and the controller controlling the code reader ([0008], [0104], [0112], [0115], [0123]), the controller comprising:
an acquisition unit that acquires a detection signal of the workpiece by a detection sensor, conveyor information including a conveyance speed of the conveyor, and installation information indicating a position and a posture of each camera of the one or plurality of cameras in a conveyor coordinate system ([0131], [0169], [0172], [0182]);
a recognition unit that recognizes a conveyance state of the workpiece including at least one of a conveyance speed of the workpiece, dimensions of the workpiece, or a posture of the workpiece on the conveyor based on the detection signal and the conveyance speed ([0132]);
a processing determination unit that determines a control parameter corresponding for each camera, the control parameter corresponds to a conveyance position of the workpiece on the conveyor for each camera and is based on the conveyance state of the workpiece and the installation information of each camera ([0134]); and
a communication unit that transmits the control parameter determined by the processing determination unit to each corresponding camera ([0143]).
With respect to claim 18, Hanada et al. discloses a code reader system that reads a code attached to a workpiece downstream of a detection sensor that detects the workpiece conveyed on a conveyor based on a detection signal from the detection sensor ([0119]), the code reader system comprising:
one or a plurality of code readers each including an illumination control unit that controls an illumination unit that irradiates the workpiece, a camera that generates images based on reflected light from the workpiece, and a decoder that executes decoding processing of the code attached to the workpiece based on the images generated by the camera ([0008], [0104], [0112], [0115], [0123]); and
a controller that an acquisition unit that acquires the detection signal, conveyor information including a conveyance speed of the conveyor, and installation information indicating a position and a posture of each camera of the one or plurality of cameras in a conveyor coordinate system ([0131], [0169], [0172], [0182]), a recognition unit that recognizes a conveyance state of the workpiece including at least one of a conveyance speed of the workpiece, dimensions of the workpiece, or a posture of the workpiece on the conveyor based on the detection signal and the conveyance speed ([0132]), a processing determination unit that determines a control parameter corresponding for each camera, the control parameter corresponds to a conveyance position of the workpiece on the conveyor for each camera and is based on the conveyance state of the workpiece and the installation information of each camera ([0134]); and a communication unit that transmits the control parameter determined by the processing determination unit to each corresponding camera ([0143]).
With respect to claim 19, Hanada et al. discloses controller is connected to a first illumination unit that irradiates the workpiece with a first illumination light and is connected to a second illumination unit that irradiates the workpiece with a second illumination light, the first illumination unit corresponding to the first camera, the second illumination unit corresponding to the second camera, the first camera includes a first image sensor, the second camera includes a second image sensor, the first camera exposes the first image sensor while the first illumination unit irradiates the workpiece with the first illumination light and does not expose the first image sensor while the second illumination unit irradiates the workpiece with the second illumination light, and the second camera exposes the second image sensor while the second illumination unit irradiates the workpiece with the second illumination light and does not expose the second image sensor while the first illumination unit irradiates the workpiece with the first illumination light ([0136], [0150]).
With respect to claim 20, Hanada et al. discloses a dimension measurement unit that detects workpiece information including at least one of a position of the workpiece in a conveyor width direction or a height of the workpiece, wherein the acquisition unit further acquires a width of the conveyor as the conveyor information, and the processing determination unit determines the control parameter corresponding to the conveyance position of the workpiece on the conveyor in the conveyor width direction based on the workpiece information ([0117]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot in view of new grounds of rejection in view of the amendments to claims 1, 17, 18 and new claim 20.
Applicant's arguments have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections based on the 112(f) interpretation, the applicant argues “The interpretations set forth in the Office Action with regard to these terms set forth in the claims are terms that would be understood by those skilled in the art. The applicant believes that such limitations would not be interpreted under 35 U.S.C. § 112(f) given their understood meaning in the art.”.
If the applicant does not want to invoke the 112(f) interpretation, then Applicant is required to: (1) present a sufficient showing to establish that the claim limitation recites sufficient structure to perform the claimed function so as to avoid interpretation under 35 U.S.C. 112(f); or (2) amend the claim limitation in a way that avoids interpretation under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function).
The applicant has not presented a sufficient showing to establish that the claim limitation recites sufficient structure to perform the claimed function so as to avoid interpretation under 35 U.S.C. 112(f), nor amended the claim limitation in a way that avoids interpretation under 35 U.S.C. 112(f). As such the 35 U.S.C. 112(f) interpretation is maintained.
The amendment to the specification, adding in para. [0058] “As a specific configuration example of the controller 100, for example, a configuration example including a microcomputer including a processor (having a function as a central processing unit) and the like can be exemplified. The acquisition unit 101, the recognition unit 102, the acceptance unit 103, the processing determination unit 104, the communication unit 105, the input and output interface 106, the control unit 107, the display processing unit 108, and the output unit 109 are constituted by hardware included in the controller 100, software executed by the controller 100, and the like.” is noted.
However, “For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).” (see MPEP 2181). A general processor/microcomputer is not considered a special purpose computer. According to the MPEP 2181(II)(B), “To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. § 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.” The specification merely describes a controller, and not a special purpose computer programmed to perform a disclosed algorithm (The specification does not describe an algorithm). As such, the controller having the various units is not considered sufficient structure for performing the claimed function. Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting "software" without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239; Finisar, 523 F.3d at 1340-41, 86 USPQ2d at 1623.
When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See MPEP § 2181(IV) and MPEP § 2163.03(VI).
As such, the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Telephone/Fax Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUEZU ELLIS whose telephone number is (571)272-2868. The examiner can normally be reached Monday - Friday, 11:00 am - 7:00 pm EST.
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/SUEZU ELLIS/Primary Examiner, Art Unit 2876
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