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 .
Clarity of the Record – Contingent Limitations
The claims have been reviewed for contingent limitations in view of MPEP 2111.04 (II) and 2143.03, specifically with regards to the differences in handling method and system claim limitations.
Specific to this application, method claims 11-12 contain contingent limitations. In claim 11, there are no limitations that are not contingent outside of the preamble. Note that the first ‘causing’ limitation has been addressed by prior art in an effort to facilitate compact prosecution, but that consideration of prior art or the determination of allowability need not be made for either limitation as they are contingent, and beyond that their contingencies are not readily related, so there is a method claim in which neither step is needed to be performed. Claim 12 continues the issue, again with a contingent limitation and an unrelated contingency established. In order to achieve patentable weight, the conditions for the processing must be clearly established and the active operating condition of the processing, not stated as potential contingencies. For each limitation in claims 11-12 the ‘in response to’ and ‘in a case’ limitations each create a contingency and given that an event exists that is simply not the stated contingency, the method is thereby performable without any of the claimed limitations.
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, 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 12, 14, 15 and 17 of U.S. Patent No. 12249111. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the previously patented claims encompasses the scope of the current claim limitations.
Claim 1 is encompassed by claims 1 and 3 of the ‘111 patent
Claim 11 is encompassed by claims 12 and 14 of the ‘111 patent
Claim 13 is encompassed by claims 15 and 17 of the ‘111 patent
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.
(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 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiraishi (herein after Shi)(US Pub 20210004644).
Re claim 11, Shi discloses an information processing method executed by a computer (Fig 10 el 150-154 and 170, Par 94-95, 98; Fig 12, Par 103; Fig 17 Par 112-116), the method comprising:
causing a learning model that is used to extract a region of interest from an input image (Fig 10 el 150-154 and 170, Par 94-95, 98; Fig 12, Par 103; Fig 17 Par 112-116 – extractions of product regions), to perform learning in response to an input of a pseudo image (Fig 10 el 150-154 and 170, Par 94-95, 98; Fig 12, Par 103; Fig 17 Par 112-116 – modified image) generated in a case in which a pixel value of at least a part of an original image obtained by imaging a subject is changed (Fig 10 el 150-154 and 170, Par 94-95, 98; Fig 12, Par 103; Fig 17 Par 112-116 – pixel value changes from original imaging), as data for learning (Fig 10 el 150-154 and 170, Par 94-95, 98; Fig 12, Par 103; Fig 17 Par 112-116 – generated learning image) [note this limitation is contingent and ultimately not required to perform the method, see the detailed clarification on contingent claims, the specifics of these contingent claims, and the associated MPEP sections as detailed above]; and
causing the learning model to perform re-learning in response to a re-input of a pair of the pseudo image and information indicating the region of interest included in the pseudo image, as the data for learning, in a case in which the learning model fails to extract the region of interest from the input pseudo image (The merits of these limitations are contingent, and are thereby rejected in light of the rejection through the Shi art as applied above, see the detailed clarification on contingent claims, the specifics of these contingent claims, and the associated MPEP sections as detailed above).
Re claim 12, Shi discloses the information processing method executed by a computer according to claim 11, the method further comprising: causing the learning model, to perform learning in response to an input of a pair of the pseudo image and information indicating a region of interest included in the pseudo image, as the data for learning (The merits of these limitations are contingent, and are thereby rejected in light of the rejection through the Shi art as applied above, see the detailed clarification on contingent claims, the specifics of these contingent claims, and the associated MPEP sections as detailed above).
Allowable Subject Matter
Claims 2-10 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to anticipate or render obvious the limitations of the above cited claims. Re claims 2-10 and 14, none of these limitations are subject to the double patenting rejection as the scope of the rejection requires the inclusion of a previously dependent claim. The specifics of the limitations as they relate to prior art are moot in light of the only rejection of the related independent claims being from that of non-statutory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R NEFF whose telephone number is (571)270-1848. The examiner can normally be reached Mon-Fri 5:30am-2:00pm.
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/MICHAEL R NEFF/ Primary Examiner, Art Unit 2631
