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 .
DETAILED ACTION
1. The following Office action is in response to communications filed on 2/28/2025. Claims 1-15 are currently pending within this application.
Information Disclosure Statement
2. The information disclosure statement(s) (IDS) submitted on 2/28/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Foreign Priority
3. Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C 119(a-d) based on EP 22194776.5, filed on 9/9/2022.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1-4, 6-9, 14-15 are rejected under rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Independent claims 1 and 15 are a method and a controller which are recognized statutory categories of invention.
Step 2A, Prong One: The above mentioned independent claim(s) recites the abstract ideas of mental processes which are concepts performed in the human mind (including an observation, evaluation, judgement, and opinion). For example, to “analyze the image to (i) determine a first saliency value for the luminaire design in the image, and (ii) determine a second saliency value for the light effect in the image, wherein the second saliency value is different from the first saliency value; receive the user feedback on the image; associate the user feedback with the luminaire design and/or the light effect based on the first and second saliency values” encompasses observing an image/data and performing an evaluation/making a determination regarding the contents of the image which may be practically performed in the human mind using observation, evaluation, judgement, and opinion which falls within the “mental process” grouping of abstract ideas.
Step 2A, Prong Two: The abstract ideas, as claimed, are not integrated into a practical application and thus do not provide an inventive concept. The above mentioned independent claim(s) recite additional elements of “a controller” which is recited at a high level of generality and amount to no more than components that apply/execute the abstract ideas without limiting how they function and thus can be performed by any generic computer capable of applying the abstract ideas and are at best the equivalent of merely adding the words “apply it” to the judicial exception. Furthermore, to “provide an image of a scene, said image comprising an environment, the luminaire, said luminaire having the luminaire design and the light effect of the luminaire in the environment” is a mere data gathering and input/output activities recited at a high level of generality, thus is an insignificant extra-solution activity.
Step 2B: As explained in Step 2A, Prong Two above, the independent claims recite additional elements of “a controller” recited at a high level of generality such that they amount to no more than generic components to implement the abstract idea on a conventional computer, while “provide an image of a scene, said image comprising an environment, the luminaire, said luminaire having the luminaire design and the light effect of the luminaire in the environment” is insignificant extra-solution data gathering and input/output activities which are well-understood, routine, and conventional activities that even when considered in combination represent instructions to apply an exception and insignificant extra-solution activity which cannot provide an inventive concept. Even when considered in combination, the additional elements represent mere instructions to apply the judicial exceptions and insignificant extra-solution activities which cannot provide an inventive concept. The claim does not point to a specific improvement in computers in their communication role or provides a specific improvement in the way computers operate (See MPEP 2016.05(g), MPEP 2106.05(d), and Berkheimer Memo).
Therefore, based on the above analysis in conjunction with the 2019 Revised Patent Subject Matter Eligibility Guidance, it is determined that the independent claim(s) are directed towards ineligible subject matter of an abstract idea without significantly more.
Dependent claims 2-4, 6-9, and 14 are also rejected for being directed towards the abstract idea(s) of mental processes as well as insignificant pre-solution data gathering and post-solution data input/output activities that are ineligible subject matter of an abstract idea without adding significantly more than the judicial exceptions present within the independent claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 22 November 2005), Annex IV, reads as follows:
Descriptive material can be characterized as either "functional descriptive material" or "nonfunctional descriptive material." In this context, "functional descriptive material" consists of data structures and computer programs which impart functionality when employed as a computer component. (The definition of "data structure" is "a physical or logical relationship among data elements, designed to support specific data manipulation functions." The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).) "Nonfunctional descriptive material" includes but is not limited to music, literary works and a compilation or mere arrangement of data.
When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure stored on a computer readable medium that increases computer efficiency held statutory) and Warmerdam, 33 F.3d at 1360-61, 31 USPQ2d at 1759 (claim to computer having a specific data structure stored in memory held statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760 (claim to a data structure per se held nonstatutory).
In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program's functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
5. Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed towards non-statutory subject matter as follows.
Claim 14 is directed towards "a computer program product for a computing device” embodying functional descriptive material. However, the claim does not define a non-transitory computer-readable medium or memory and is thus non-statutory for that reason (i.e., "When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since us of technology permits the function of the descriptive material to be realized” – Guidelines Annex IV). This is, the scope of the presently claimed program can range from paper on which the program is written, to a program simply contemplated and memorized by a person.
Claim Objections
6. Claims 5 and 10-13 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.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S OSINSKI whose telephone number is (571) 270-3949. The examiner can normally be reached on Monday - Friday, 10:00am - 6:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oneal Mistry can be reached on (313) 446-4912. The fax phone number for the organization where this application or proceeding is assigned is (571)-273-8300.
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MO
/MICHAEL S OSINSKI/Primary Examiner, Art Unit 2674
9/4/2026
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