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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/16/2025 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 1 is objected to because of the following informalities: Line 3 recites “comprising memory” which Examiner suggests amending to “comprising a memory”. Line 25 recites “the image that is determined to be a non-conforming image” which Examiner suggests amending to “the image of the plurality of images that is determined to be the non-conforming image”. Line 26 recites “the image from its respective section” which Examiner suggests amending to “the image of the plurality of images from its respective section”. Line 29 recites “the placeholder cell” which Examiner suggests amending to “the generic placeholder cell”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Line 1 recites “each respective protocol” which Examiner suggests amending to “each respective predefined protocol”. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: Lines 1-2 recite “the image is a non-conforming image” which Examiner suggests amending to “the image of the plurality of images is the non-conforming image”. Line 3 recites “based on output” which Examiner suggests amending to “based on an output”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: Line 1 recites “a image” which Examiner suggests amending to “an image”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Line 1 recites “comprising memory” which Examiner suggests amending to “comprising a memory”. Line 23 recites “the image that is determined to be a non-conforming image” which Examiner suggests amending to “the image of the plurality of images that is determined to be the non-conforming image”. Line 24 recites “the image from its respective section” which Examiner suggests amending to “the image of the plurality of images from its respective section”. Line 27 recites “the placeholder cell” which Examiner suggests amending to “the generic placeholder cell”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: Lines 1-2 recite “each respective protocol” which Examiner suggests amending to “each respective predefined protocol”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: Line 2 recite “the image is a non-conforming image” which Examiner suggests amending to “the image of the plurality of images is the non-conforming image”. Line 4 recites “based on output” which Examiner suggests amending to “based on an output”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: Line 2 recites “a image” which Examiner suggests amending to “an image”. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: Line 21 recites “the image that is determined to be a non-conforming image” which Examiner suggests amending to “the image of the plurality of images that is determined to be the non-conforming image”. Line 22 recites “the image from its respective section” which Examiner suggests amending to “the image of the plurality of images from its respective section”. Line 25 recites “the placeholder cell” which Examiner suggests amending to “the generic placeholder cell”. Appropriate correction is required.
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.
Claim 1 recites the limitations "the user" in Line 16, “for each respective predefined protocol of the plurality of predefined protocols” in Lines 18-19, “the respective predefined protocol” in Lines 30-31, and “the captured portion” in Line 31. There is insufficient antecedent basis for these limitations in the claim as it is unclear as to which user is being referred to (since Line 1 of claim 1 and Line 7 of claim 1 both recite a user) and there is no earlier mention of a plurality of predefined protocols, a respective predefined protocol corresponding to a captured portion of the body part or a captured portion of the body part. Examiner suggests amending the limitation “a user” in Line 7 of claim 1 to “the user”, the limitation “for each respective predefined protocol of the plurality of predefined protocols” in Lines 18-19 to “for each respective predefined protocol” (deleting “of the plurality of predefined protocols”), the limitation “the respective predefined protocol” in Lines 30-31 to “a respective predefined protocol”, and the limitation “the captured portion” in Line 31 to “a captured portion” and has interpreted the limitations as such.
Examiner notes that claim 6 also recites “the user” and would have the same insufficient antecedent basis issue as disclosed above for claim 1. Examiner has interpreted the limitation in the same way as in claim 1.
Claims 2-5, 8, and 9 depend on claim 1 and thus are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claim 6 recites the limitations "the user resubmitted image" in Line 2 and “the non-conformity” in Line 2. There is insufficient antecedent basis for these limitations in the claim as there is no earlier mention of a user resubmitted image (only a resubmitted image) or a non-conformity (only a non-conforming image). Examiner suggests amending the limitations to “the resubmitted image” (deleting “user”) and “a non-conformity”, respectively, and has interpreted the limitations as such.
Claim 7 depends on claim 6 and thus is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claim 10 recites the limitations "the user" in Line 14, “for each respective predefined protocol of the plurality of predefined protocols” in Lines 16-17, “the respective predefined protocol” in Lines 28-29, and “the captured portion” in Line 29. There is insufficient antecedent basis for these limitations in the claim as it is unclear as to which user is being referred to (since Line 2 of claim 10 and Line 5 of claim 10 both recite a user) and there is no earlier mention of a plurality of predefined protocols, a respective predefined protocol corresponding to a captured portion of the body part or a captured portion of the body part. Examiner suggests amending the limitation “a user” in Line 5 of claim 10 to “the user”, the limitation “for each respective predefined protocol of the plurality of predefined protocols” in Lines 16-17 to “for each respective predefined protocol” (deleting “of the plurality of predefined protocols”), the limitation “the respective predefined protocol” in Lines 28-29 to “a respective predefined protocol”, and the limitation “the captured portion” in Line 29 to “a captured portion” and has interpreted the limitations as such.
Examiner notes that claim 15 also recites “the user” and would have the same insufficient antecedent basis issue as disclosed above for claim 10. Examiner has interpreted the limitation in the same way as in claim 10.
Claims 11-14, 17, and 18 depend on claim 1 and thus are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claim 15 recites the limitations "the user resubmitted image" in Lines 2-3 and “the non-conformity” in Line 3. There is insufficient antecedent basis for these limitations in the claim as there is no earlier mention of a user resubmitted image (only a resubmitted image) or a non-conformity (only a non-conforming image). Examiner suggests amending the limitations to “the resubmitted image” (deleting “user”) and “a non-conformity”, respectively, and has interpreted the limitations as such.
Claim 16 depends on claim 15 and thus is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claim 19 recites the limitations "the user" in Line 12, “for each respective predefined protocol of the plurality of predefined protocols” in Lines 14-15, “the respective predefined protocol” in Lines 26-27, and “the captured portion” in Line 27. There is insufficient antecedent basis for these limitations in the claim as it is unclear as to which user is being referred to (since Line 1 of claim 19 and Line 3 of claim 19 both recite a user) and there is no earlier mention of a plurality of predefined protocols, a respective predefined protocol corresponding to a captured portion of the body part or a captured portion of the body part. Examiner suggests amending the limitation “a user” in Line 3 of claim 19 to “the user”, the limitation “for each respective predefined protocol of the plurality of predefined protocols” in Lines 14-15 to “for each respective predefined protocol” (deleting “of the plurality of predefined protocols”), the limitation “the respective predefined protocol” in Lines 26-27 to “a respective predefined protocol”, and the limitation “the captured portion” in Line 27 to “a captured portion” and has interpreted the limitations as such.
Examiner notes that claim 20 also recites “the user” and would have the same insufficient antecedent basis issue as disclosed above for claim 19. Examiner has interpreted the limitation in the same way as in claim 19.
Claim 20 recites the limitations "the user resubmitted image" in Line 2 and “the non-conformity” in Line 2. There is insufficient antecedent basis for these limitations in the claim as there is no earlier mention of a user resubmitted image (only a resubmitted image) or a non-conformity (only a non-conforming image). Examiner suggests amending the limitations to “the resubmitted image” (deleting “user”) and “a non-conformity”, respectively, and has interpreted the limitations as such.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-12, and 14-17 of U.S. Patent No. 12,243,206. Although the claims at issue are not identical, they are not patentably distinct from each other.
With regards to claim 1, it is met by claim 1 of U.S. Patent 12,243,206.
With regards to claim 2, it is met by claim 2 of U.S. Patent 12,243,206.
With regards to claim 3, it is met by claim 10 of U.S. Patent 12,243,206.
With regards to claim 4, it is met by claim 4 of U.S. Patent 12,243,206.
With regards to claim 5, it is met by claim 5 of U.S. Patent 12,243,206.
With regards to claim 6, it is met by claim 6 of U.S. Patent 12,243,206.
With regards to claim 7, it is met by claim 7 of U.S. Patent 12,243,206.
With regards to claim 8, it is met by claim 8 of U.S. Patent 12,243,206.
With regards to claim 9, it is met by claim 9 of U.S. Patent 12,243,206.
With regards to claim 10, it is met by claim 11 of U.S. Patent 12,243,206.
With regards to claim 11, it is met by claim 12 of U.S. Patent 12,243,206.
With regards to claim 12, it is met by claim 10 of U.S. Patent 12,243,206.
With regards to claim 13, it is met by claim 14 of U.S. Patent 12,243,206.
With regards to claim 14, it is met by claim 15 of U.S. Patent 12,243,206.
With regards to claim 15, it is met by claim 6 of U.S. Patent 12,243,206.
With regards to claim 16, it is met by claim 7 of U.S. Patent 12,243,206.
With regards to claim 17, it is met by claim 8 of U.S. Patent 12,243,206.
With regards to claim 18, it is met by claim 9 of U.S. Patent 12,243,206.
With regards to claim 19, it is met by claim 16 of U.S. Patent 12,243,206.
With regards to claim 20, it is met by claim 17 of U.S. Patent 12,243,206.
Allowable Subject Matter
Claims 1, 10, and 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the non-statutory double patenting rejection set forth in this Office action.
With regards to claims 1, 10, and 19, Gupta et al. (US 2013/0190600) discloses receiving a plurality of images, each of the images capturing a portion of a body part, determining that an image is non-conforming or conforming to a respective predefined protocol and displaying an optimal image frame. However, there is no mention of generating for display a graphical interface to the user, the graphical interface comprising: for each respective predefined protocol of the plurality of predefined protocols, a respective section comprising a description of the respective predefined protocol and an area for an image corresponding to the respective predefined protocol, for each of the other ones of the plurality of images that conform to their respective predefined protocols, a copy of the respective image in its respective area of its respective section, and for the image that is determined to be a non-conforming image, omitting the image from its respective section and instead including a generic placeholder cell in its respective area that excludes any retinal image, and replacing the placeholder cell with a resubmitted image responsive to determining that the resubmitted image conforms to the respective predefined protocol corresponding to the captured portion of the body part. Schwartz et al. (US 2014/0029828) discloses receiving a plurality of images, each image corresponding to a respective predefined protocol, and determining that an image is conforming or non-conforming to its respective predefined protocol, however, there is no mention of generating for display a graphical interface to the user, the graphical interface comprising: for each respective predefined protocol of the plurality of predefined protocols, a respective section comprising a description of the respective predefined protocol and an area for an image corresponding to the respective predefined protocol, for each of the other ones of the plurality of images that conform to their respective predefined protocols, a copy of the respective image in its respective area of its respective section, and for the image that is determined to be a non-conforming image, omitting the image from its respective section and instead including a generic placeholder cell in its respective area that excludes any retinal image, and replacing the placeholder cell with a resubmitted image responsive to determining that the resubmitted image conforms to the respective predefined protocol corresponding to the captured portion of the body part. Niwa et al. (US 2013/0141462) discloses displaying a graphical interface to the user comprising layout rules, however, there is no mention of the rest of the limitations of the claim. Thus, while different prior arts disclose parts of the claim, none of the prior arts disclose or have reasonable motivation to combine to disclose all of the limitations of the claim as a whole.
Claims 2-9, 11-18, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the non-statutory double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With regards to claims 2-9, they are dependent on claim 1.
With regards to claims 11-18, they are dependent on claim 10.
With regards to claim 20, it is dependent on claim 19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicants are directed to consider additional pertinent prior art included on the Notice of References Cited (PTOL 892) attached herewith.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROL W CHAN whose telephone number is (571)272-5766. The examiner can normally be reached 9:30-3:30 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sumati Lefkowitz can be reached at (571) 272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAROL W CHAN/Primary Examiner, Art Unit 2672
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