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 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.
DETAILED ACTION
Priority
This application is claims priority to 63/493896 filed 4/3/23 and PTC/CA2024/050424, filed 4/3/24.
Claim Objections
Claims 7 and 14 are objected to for the use of “the information.” There is insufficient antecedent basis for the term. The examiner believes there may be other antecedent basis issues and requests applicant’s assistance in addressing any additional antecedent basis concerns.
Claim Rejections - 35 USC § 112
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 7, 9, 14-16 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. In particular it is not clear that applicant has possession of how one “eliminate[s] interference,” use “trials of images [in] image processing and AI data to extract the information,” or how “microsensors extract information from objects to a collective information that is used to extract a required data.” The specification merely describes that the microsensors perform such a task, but give scant detail otherwise. It is not clear from the specification that applicant had knowledge or possession of how to perform these tasks. Further, the knowledge of one of ordinary skill in the art is not relevant to whether applicant had such knowledge and the disclosure is not sufficient to “reasonably convey to one skilled in the relevant art that the inventor … had possession of the claimed invention.”
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 7, 9, 14-16 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 7 and 14 recite “having at least two microsensors in a different part of an object.” Does this refer to a microsensor in one part of an object and a second in another part, two microsensors nearby (what is nearby?) on an object, an object having two microsensors. The use of “different part of an object” to modify the location of the two sensors is indefinite.
Claims 14-16 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. Claim 14 recites “wherein the sources are turned on and off frequently.” There is insufficient detail in the specification to determine what applicant intends to be frequent vs not frequent.
Claims 7, 9, 14-16 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. In particular, the limitations regarding “having at least two microsensors in a different part of an object” are unclear if they are reciting physical devices in a method claim.
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In Katz, a claim directed to “[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph). MPEP 2173.05(p).
Claims 7, 9, and 14-16 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 latter wherein clauses in claims 7 and 14 that discusses “sources and extracting information” (claim 7) or “sources and trails of images” (claim 14). It is unclear whether the steps are carried out in the method or intended use or physical recitations of items required in the method.
Claims 7, 9, 14-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. There does not appear to be any correspondence between the detection of differences and eliminating interference steps nor do the steps appear to “create environmental awareness using sources and microsensors.” Given the lack of disclosure in the specification, it is unclear which steps are missing or that applicant has support for said missing steps.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The elements of claim 16 are already incorporated into parent claim 14. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 7, 9, 14-16 as best understood are anticipated by US 2023/0258812, Suess et al.
7. A method to create environmental awareness using sources and microsensors, the method comprising:
having at least two microsensors in a different part of an object; (Suess fig 1, sensors)
detecting differences in signal patterns with the microsensors; and (Suess ¶21 preamble show different signal patterns between transmissions by other sensors)
eliminating interference, (Suess ¶21 disregard signals)
wherein the object is part of automotive transport or a robot and (Suess fig 1 automobile)
wherein the sources are off and only the microsensors extract the information from ambient or adjacent automotive transports. (it is noted that these wherein clauses do not appear to affect the method and are given little patentable weight; see also ¶17 automotive fleet)
9. The method of claim 7, wherein automotive transports as objects have multiple sources and multiple microsensors wherein further the microsensors extract information from objects to a collective information that is used to extract a required data. (Suess ¶17 automative fleet)
14. A method to create environmental awareness using sources and microsensors, the
method comprising:
having at least two microsensors in a different part of an object; (Suess fig 1, sensors)
detecting differences in signal patterns with the microsensors; and (Suess ¶21 preamble show different signal patterns between transmissions by other sensors)
eliminating the interference, (Suess ¶21 disregard signals)
wherein the object is part of automotive transport or a robot and (Suess fig 1 automobile)
wherein the sources are turned on and off frequently, and (Suess it is noted that these wherein clauses do not appear to affect the method and are given little patentable weight; ¶17 crosstalk)
there are trails of images with and without the sources and wherein further the trails of images are used in image processing and AI data to extract the information. (It is noted that these wherein clauses do not appear to affect the method and are given little patentable weight)
15. The method of claim 14, wherein automotive transports as objects have multiple sources and multiple microsensors wherein further the microsensors extract information from objects to a collective information that is used to extract a required data. (Suess ¶17 automative fleet)
16. The method of claim 14, wherein the sources are turned on and off frequently, and (Suess it is noted that these wherein clauses do not appear to affect the method and are given little patentable weight; ¶17 crosstalk)
there are trails of images with and without the sources and wherein further the trails of images are used in image processing and AI data to extract the information. It is noted that these wherein clauses do not appear to affect the method and are given little patentable weight)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ming Shui whose telephone number is (303)297-4247. The examiner can normally be reached on 7-5 Pacific Time, M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Morse can be reached on 571-272-3838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ming Shui/
Primary Examiner, Art Unit 2663
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