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 .
Response to Arguments in 5/11/2026 Pre-Appeal Conference Request
The examiner held a pre-appeal conference on May 11, 2026.
During that conference, it was agreed to reopen prosecution on the basis that while the claims should have been rejected under 35 USC 112, the claims should have been rejected differently.
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 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.
Claim 1 recites in part, “identify the targets detected by the fixed weapon system based on preset learning information, classify the targets according to preset data” and
“a learning device configured to receive the information about the unidentified target that is stored in the storage, determine whether the information about the unidentified target is within a learnable range for performing learning for identifying the unidentified target, and perform the learning based on the information.”
The specification fails to sufficiently explain how this function is performed.
That is, the specification does not show how to go from raw data to a system that can identify targets.
The steps/procedure taken to perform this function must be described with sufficient detail so that one or ordinary skill in the art would understand how the inventor intended the function to be performed. The examiner directs the Applicant to MPEP 2161.01(1).
See also,
MPEP 2163 – Guidelines for Written Description
V. ORIGINAL CLAIM NOT SUFFICIENTLY DESCRIBED
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
The applicant simply has not disclosed how raw training data can produce target identification, and that is the central function of the instant invention. While the examiner acknowledges that systems may exist that do this, the instant specification does disclose that core function.
This presents a problem. There are two possibilities:
If identifying targets using training data is old and well known then that implies that the basic function of in the instant invention is old and well-known.
If identifying targets using training data is a nontrivial task that is worthy of a patent, then the lack of a clear disclosure of how to do this is a serious defect of the disclosure.
Independent claims 12 and 19 suffer from similar deficiencies.
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.
Specifically, each of the independent claims recites a version of,
“an unidentified information search system configured to search for information about an unidentified target among the targets, that is not identified, based on the preset learning information; a storage configured to receive and store the information about the unidentified target from the unidentified information search system; and a learning device configured to receive the information about the unidentified target that is stored in the storage, determine whether the information about the unidentified target is within a learnable range for performing learning for identifying the unidentified target, and perform the learning based on the information.”
The problem here is that if a target is unidentified, there is by definition insufficient data to identify it.
The solution of the applicant seems to be to direct the learning algorithm to some vaguely defined further data sources.
In other words, the solution to a lack of data on the target is simply to “get more data.”
It is obvious that one needs more data if the data is lacking, but if that data existed, it would have been used to train the model in the first place.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL A HESS whose telephone number is (571)272-2392. The examiner can normally be reached Monday through Friday, from 9 AM to 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Lee can be reached at (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL A HESS/Primary Examiner, Art Unit 2876
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