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 § 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 2,3,6,7,10, 13, 14-20 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.
The term “may” in claims 2, 3 is a relative term which renders the claim indefinite. The term “may” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “preferably” in claims 2, 3,13,18,19,20 is a relative term which renders the claim indefinite. The term “preferably” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “optionally” in claims 3,6,14 is a relative term which renders the claim indefinite. The term “optionally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “typically” in claims 7 is a relative term which renders the claim indefinite. The term “typically” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
“Means for sending” (claim 12) is interpreted under 112(f) and is supported in the specification in paragraph [0037, 0055].
“Means for monitoring/monitoring means” (claim 12, 19) is interpreted under 112(f) despite the presence of “optical detector“ because the mere mention of an optical detector does not describe sufficient structure to perform the entire claimed function of “detecting display of said visual verification information on said screen”. An optical detector has the basic function of detecting light, but does not inherently perform the entire function of detecting display of visual verification information. “Means for monitoring/monitoring means” is supported in the specification in paragraph [0040, 0048, 0051, 0057].
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.
Claim 1, 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 6 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5, 9 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 8 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,176,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader than the parent patent claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 2019/0075370).
Regarding claim 1, Kim discloses A method of verifying display of primary visual information on a screen of an electronic visual display device, the method comprising: sending at least one input signal to said electronic visual display device, said at least one input signal comprising data for causing said electronic visual display device to display said primary visual information on said screen (fig. 9, [0102-0105]), said at least one input signal further including data for causing said electronic visual display device to display visual verification information on said screen (fig. 1(111) Visual verification data is displayed on the corner of the screen along with the primary visual information) simultaneously with said primary visual information (fig. 9(110)); and monitoring said screen using at least one optical detector to detect display of said visual verification information on said screen (fig. 10, [0110-0113] Optical detector is used to detect the visual verification data).
Regarding claim 2, Kim discloses displaying said visual verification information at least one verification location on a display area of said screen, and monitoring said at least one location using said at least one optical detector, and wherein said at least one verification location may be located at a peripheral part of said display area, preferably at a corner or side of said display area, and wherein said at least one verification location occupies a portion of said display area, preferably less than 5% of said display area ([0090], fig. 9,10).
Regarding claim 3, Kim discloses wherein said at least one input signal comprises data representing said primary visual information, wherein said primary visual information may comprise any one or more of: text; one or more image; one or more animation; one or more video, and wherein said at least one input comprises data representing said visual verification information, said visual verification information comprising any visual information, preferably comprising a colour, pattern and/or a tone, or a sequence of colours, patterns and/or tones, that may be displayed on the screen and be detectable by said at least one optical detector, and wherein, optionally, said data representing said visual verification information is included in, added to, or associated with, data representing said primary visual information ([0066,00067]).
Regarding claim 4, Kim discloses verifying display of said primary visual information by determining that said visual verification information is detected on said screen by said at least one optical detector ([0112]).
Regarding claim 5, Kim discloses wherein said monitoring includes processing an output signal of said at least one optical detector to determine if said output signal includes information representing said visual verification information ([0114-0116]).
Regarding claim 6, Kim discloses extracting current visual information from said output signal and comparing in real time the extracted current visual information with the visual verification information intended for current display, and determining if the extracted current visual information matches the intended current visual verification information, and wherein said comparing optionally involves using one or more adjustable similarity threshold ([0069-0071]).
Regarding claim 7, Kim discloses wherein said visual verification information comprises a sequence of multiple parts, said method including sending one part at a time for display on said electronic visual display device, and wherein said comparing in real time the extracted current visual information with the visual verification information intended for current display, and determining if the extracted current visual information matches the intended current visual verification information is performed after one part is sent and before the next part is sent, and wherein each part typically comprises data representing a colour, a pattern or a tone ([0094, 0095, 0105]).
Regarding claim 8, Kim discloses determining that the extracted current visual information matches the intended visual verification information if in at least one of said instances there is deemed to be a match, or if in at least a threshold number of said instances there is deemed to be a match, or if in at least a threshold percentage of said instances there is deemed to be a match ([0116-0119]).
Regarding claim 9, Kim discloses performing multiple instances of said comparing in real time the extracted current visual information with the visual verification information intended for current display, and said determining if the extracted current visual information matches the intended current visual verification information in succession, and determining from said multiple instances if the extracted current visual information matches the intended visual verification information, and wherein a number of said multiple instances is adjustable ([0191]).
Regarding claim 10, Kim discloses adjusting the position and/or size of said at least one verification location on said display area of said screen to match the location of said at least one optical detector ([0106,0190]).
Regarding claim 11, Kim discloses wherein said at least one input signal includes data for causing said visual verification information to be displayed on said screen as foreground visual information, optionally overlying a portion of said primary visual information, and/or wherein said at least one input signal includes data for causing said visual verification information to be displayed on said screen separately from said primary visual information ([0068, 0144, 0175]).
Regarding claim 12, Kim discloses A system for verifying display of primary visual information on a screen of an electronic visual display device, the system comprising: means for sending ([0066-0068]) at least one input signal to said electronic visual display device(fig. 9, [0102-0105]), said at least one input signal comprising data for causing said electronic visual display device to display said primary visual information on said screen(fig. 9(110)), said at least one input signal further including data for causing said electronic visual display device to display visual verification information(fig. 9(111)) on said screen simultaneously with said primary visual information; and means for monitoring said screen to detect display of said visual verification information on said screen, said monitoring means comprising at least one optical detector(fig. 10, [0110-0113]).
Regarding claim 13, Kim discloses wherein said at least one optical detector comprises one or more photodetector or other optoelectronic device, and wherein, preferably, said at least one optical detector is a colour sensor, a greyscale sensor, or a binary (e.g. black and white) sensor, or wherein said at least one optical detector comprises an image sensor or a digital camera ([0107]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0075370) in view of Fukuda (US 2017/0168304).
Regarding claim 14, Kim discloses wherein said monitoring means comprises an optical detection assembly for mounting on said screen, the optical detection assembly comprising a first portion on which said at least one optical detector is provided (fig. 9, [0108-0112]).
Kim does not specifically disclose a second portion on which other electrical and/or electronic circuitry is provided, the first and second portions being mechanically and electrically connected by a flexible intermediate portion, said intermediate portion preferably being non-resiliently flexible, and wherein said other circuitry optionally comprises any one or more of: wired or wireless communication circuitry, signal processing circuitry and/or optical detection circuitry.
However, Fukuda discloses a second portion on which other electrical and/or electronic circuitry is provided, the first and second portions being mechanically and electrically connected by a flexible intermediate portion, said intermediate portion preferably being non-resiliently flexible (fig. 10(8)), and wherein said other circuitry optionally comprises any one or more of: wired or wireless communication circuitry, signal processing circuitry and/or optical detection circuitry (fig. 1, 10, [0048, 0065]). It would have been obvious before the filing date of the invention to incorporate the flexible detector of Fukuda into the system of Kim in order to provide the viewer with flexibility in how they want to place the detector.
Regarding claim 15, Fukuda discloses wherein said intermediate portion comprises a flexible circuit ([0048]).
Regarding claim 16, Fukuda discloses wherein said first portion, said second portion and said intermediate portion are provided integrally by a flexible circuit ([0048] of Fukuda).
Regarding claim 17, Fukuda discloses wherein said optical detection assembly comprises a flexible electronic assembly ([0048, 0065]).
Regarding claim 18, Kim discloses wherein said at least one optical detector is adhered to said screen, preferably to a display area of said screen, by at least one adhesive fixing ([0109, 0110]).
Regarding claim 19, Kim discloses wherein said monitoring means comprises an optical detection assembly for mounting on said screen, the optical detection assembly comprising a first portion on which said at least one optical detector is provided, and wherein said first portion of the optical detection assembly is adhered to said screen, preferably to a display area of said screen, by at least one adhesive fixing (fig. 9, 10, [0109, 0110]).
Regarding claim 20, Kim discloses An optical detection assembly for mounting on a screen, the optical detection assembly comprising a first portion on which at least one optical detector is provided (fig. 9, 10, [0106-0110]).
Kim does not specifically disclose a second portion on which other electrical and/or electronic circuitry is provided, the first and second portions being mechanically and electrically connected by a flexible intermediate portion, said intermediate portion preferably being non-resiliently flexible.
However, Fukuda discloses a second portion on which other electrical and/or electronic circuitry is provided, the first (fig. 1(6)) and second portions (fig. 1(4)) being mechanically and electrically connected by a flexible intermediate portion (fig. 1(8)), said intermediate portion preferably being non-resiliently flexible(fig. 1, 10, [0048, 0065]). It would have been obvious before the filing date of the invention to incorporate the flexible detector of Fukuda into the system of Kim in order to provide the viewer with flexibility in how they want to place the detector.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL HYUN HONG whose telephone number is (571)270-1553. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nasser Goodarzi can be reached at (571)272-4195. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL H HONG/Primary Examiner, Art Unit 2426