DETAILED ACTION
I. 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 .
II. Priority
A. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 365(c) or 386(c) is acknowledged.
B. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) as well as of the filing of the certified copies of papers required by 37 CFR 1.55.
III. Claim Interpretation
Generally, claims in an application are given their broadest reasonable interpretation
using the plain meaning of the claim language in light of the specification as it would be
understood by one of ordinary skill in the art. However, the broadest reasonable interpretation of
a claim limitation is limited by the description in the specification when 35 U.S.C. 112(f) is invoked. Pursuant to 35 U.S.C. 112(f), “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
As explained in MPEP § 2181 (I), claim limitations that meet the following three-prong
test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term "means" or "step" or a term used as a substitute for
"means" that is a generic placeholder (also called a nonce term or a non-structural term
having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language,
typically, but not always linked by the transition word "for" (e.g., "means for") or another
linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient
structure, material, or acts for performing the claimed function.
Absence of the word "means" (or "step") in a claim creates a rebuttable presumption that
the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption
that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely
perform the recited function.
A. The functional claim limitation, image capturing unit, does not invoke interpretation under 35 U.S.C. 112(f)
Claim 17 recites the limitation, “image capturing unit configured to acquire at least one calibration image…and at least one object image.” The examiner submits that this limitation satisfies prongs (A) and (B) above because it recites a generic placeholder (unit) followed by a transition phrase (configured to) linking the “unit” to the image acquisition function. Although the limitation is also not expressly modified by sufficient structure for performing the image acquisition function, the examiner nevertheless submits that the image capturing unit does not invoke 112(f) interpretation because the prior art evidences a denotation of structure. According to MPEP 2181 (I), to determine whether a word, term, or phrase coupled with a function denotes structure, examiners may check whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and/or (3) the prior art provides evidence that the term is an art-recognized structure to perform the claimed function. Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (Bd. Pat. App. & Int. 2009) (precedential). Here, the prior art routinely uses terms like image sensing unit/element, image capturing unit/element, and imaging element to refer to a digital image sensor like a CCD or CMOS sensor, an art-recognized structural device used to convert light to electrical image signals.
Of note, claim 17 and claim 36 also recite an illumination unit. However, in claim 17, the unit is not specifically associated with a function. Claim 17 recites that it includes a light source associated with a function of providing illumination light, and in claim 36, the function of providing illumination light is not required in any context.
B. The functional claim limitation, image correction unit, invokes interpretation under 35 U.S.C. 112(f) and is indefinite
Claim 17 recites the limitation, image correction unit, associated with the functions of determining depth information (claim 17), determining correction for the object image taking into account a location dependency (claim 17) or a distance dependency (claim 17) of illumination light intensity in accordance with the depth information, determining correction based on an inverse power of length of a light path generally (claim 25) and of a light path between the image capturing unit and the object (claim 26), determining correction including an absorption correction (claim 27), determining correction based on determined spatial or spectral properties of the illumination light (claim 30), and determine depth based on stereo reconstruction (claim 32). The examiner submits that these limitations satisfy prongs (A) and (B) above because they recite a generic placeholder (unit) followed by a transition phrase (configured to) linking the “unit” to one of the various respective functions identified above. Furthermore, they satisfy prong (C) because they are not modified by any structure that is sufficient to perform any of the functions identified above. Therefore, the examiner submits that the claimed image correction unit invokes 112(f) interpretation.
Accordingly, the image correction is interpreted as its corresponding structure, material, or acts described in the specification and equivalents thereof. Moreover, the examiner submits that the image correction unit is a special-purpose, computer-implemented limitation requiring an algorithm as the structure corresponding to its claimed functions. See MPEP 2181 (II)(B). See section IV (A) below for further analysis.
IV. Claim Rejections - 35 U.S.C. § 112
The following are quotations of 35 U.S.C. 112:
(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.
(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.
A. 112(b): indefiniteness due to lack of corresponding structure
Claims 17-34 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, the claim limitation “image correction unit” invokes 35 U.S.C. 112(f) as detailed above in section III. However, the written description fails to disclose the corresponding structure, material, or acts for performing functions associated with this unit and to clearly link the structure, material, or acts to those functions. The following table lists the functions associated with the image correction unit and whether the written description discloses corresponding structure.
Image correction unit function
Corresponding structure disclosed?
determining depth information
No
determining correction for the object image taking into account a location dependency in accordance with depth information (claim 17)
No
determining correction for the object image taking into account a distance dependency with depth information (claim 17)
Yes
determining correction based on an inverse power of length of a light path generally (claim 25)
Yes
determining correction based on an inverse power of length of a light path between the image capturing unit and the object (claim 26)
Yes
determining correction including an absorption correction (claim 27)
Yes
determining correction based on determined spatial or spectral properties of the illumination light (claim 30), and
Yes
determine depth information based on stereo reconstruction (claim 32)
No
After reviewing the specification, the examiner has been unable to clearly link an algorithm (disclosed structure required for a special-purpose, computer-implemented limitation) to the functions of determining depth information, determining correction for the object image taking into account a location dependency in accordance with depth information, and determining depth information based on stereo reconstruction. Therefore, claims 17 and 34 are indefinite and are rejected under 35 U.S.C. 112(b). Claims 18-33 are rejected as indefinite because they depend on claim 17 and fail to remedy its indefiniteness.
1. Determining depth information
The specification states, on p. 34, lines 30-32, that the “image correction unit 426 is configured to determine a depth map 432, 434 from each of the two calibration images 422, 423. A stereo reconstruction algorithm is used for this purpose.” This is the only passage the examiner could identify that describes the manner in which depth information is obtained. However, the passage only describes the type of algorithm used to determine the depth information, not the specifics of the algorithm itself.
2. Determining correction for the object image taking into account a location dependency of illumination light intensity in accordance with depth information
Claim 17 recites that the image correction takes into account either a location dependency or a distance dependency of illumination light intensity. The examiner has identified the equation on p. 33 of the specification as the principal equation used in determining the correction for the object image, and this equation has a distance dependency of illumination light intensity (e.g., d0, d1). Therefore, the specification discloses and clearly links an algorithm to the function of object image correction taking into account distance dependency. However, the claim alternately requires image correction taking into account location dependency, for which the specification fails to disclose a corresponding equation or algorithm. On p. 8, lines 24-34, the specification discusses how correction can be performed by assigning spatial coordinates to image pixels and implementing a corrective function dependent on those coordinates. However, the specification does not describe what that function is, how the value of that function at some spatial location produces correction information, or whether or how that function is related to the equation on p. 33. The examiner also notes that claim 18 limits location dependency to distance dependency. Presumably, however, this distance dependency provides a different basis for image correction than the distance dependency recited in claim 17. Otherwise, the alternative nature of the image correction in claim 17 would not make sense.
3. Applicant’s options to overcome this rejection generally
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be
interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it
expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such
that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(d) Amending the written description of the specification such that it
expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material,
or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
4. Examiner feedback on overcoming this rejection
The examiner submits that since the specification discloses a processor that may execute program code (see specification, p. 38), it supports some structure that performs the image correction steps of claim 17. However, note that the specification does not expressly support that processor being part of the medical imaging device. Apart from the processor, the examiner has been unable to identify any other structural embodiments of the image correction unit. One possibility to overcome this rejection is to limit the image correction to distance dependency. However, this amendment would then limit image correction to the algorithm/equation on p. 33. Alternatively, Applicant may frame the invention exclusively as a method and/or a computer-readable medium.
B. 112(d): failure to further limit
Claims 25-29 are rejected under 35 U.S.C. 112(d) 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. Specifically, since the scope of image correction in claim 17 encompasses the equation on p. 33 due to 112(f) interpretation and the limitations of claims 25-29 are part of that equation, the limitations of claims 25-29 fail to limit claim 17. As discussed on p. 34, lines 1-9 of the specification, the equation includes the inverse power (α) of claimed lengths (d0, d1) and exponential attenuation/absorption factors (
e
μ
λ
0
,
d
1
,
e
μ
λ
1
d
1
).
V. 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.
Claim 37 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, the claim does not fall within at least one of the four categories of patent eligible subject matter because it recites software per se. According to MPEP 2106.03 (I), “[n]on-limiting examples of claims that are not directed to any of the statutory categories include…[p]roducts that do not have a physical or tangible form, such as…a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations.” Here, the preamble of claim 37 recites program code, which the examiner submits is software per se. Although the claim further recites that the code is executed in a processor, this does not make it eligible under 35 U.S.C 101. The claim is not directed to the processor, and all software is executed by some sort of processor. To overcome this rejection, the examiner suggests amending claim 36 to a non-transitory computer-readable medium that stores the processor-executable code as described on p. 38 of the specification.
VI. Claim Objections
Claim 17 is objected to because of the following informalities: The comma on line 9 of the claim should be deleted.
VII. Claim Rejections - 35 U.S.C. § 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)(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 35 and 36 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bouvier et al. (US # 11,743,596 B1).
As to claim 35, Bouvier et al. teaches a method (Fig. 4) for medical imaging (Figs. 1A and 1B; col. 1, lines 14-16), comprising the steps of:
providing a medical imaging device (Fig. 2, endoscope system “200”), the medical imaging device comprising an illumination unit having at least one light source (Fig. 2A, light source “202”); an image capturing unit (Fig. 2A, photodetector “212”); and an image correction unit (Fig. 2A, controller “220”; col. 2, line 67 – col. 3, line 5; Fig. 4);
providing an illumination light (Fig. 4, “401”) for illuminating an object to be imaged (Fig. 2A, object in scene “206”);
capturing at least one calibration image of the object to be imaged (Fig. 4, “407”; col. 6, lines 56-59);
capturing at least one object image of the object to be imaged (Fig. 4, “403”);
determining depth information from the calibration image (Fig. 4, “409”);
determining a correction for the object image (Fig. 4, “411”), wherein the correction comprises taking into account a location dependency of a light intensity of illumination light or a distance dependency of a light intensity of object light in accordance with the depth information (col. 7, lines 25-28); and
generating a corrected object image in accordance with the correction (col. 8, lines 1-6).
As Bouvier discloses controller-executable software instructions for accomplishing the method of Fig. 4 (col. 10, lines 17,18, and 35-48), the examiner submits that this disclosure as well as the cited passages of Bouvier et al. in the rejection of claim 35 above satisfy the limitations of claim 36.
VIII. Additional Prior Art Discussion
Bouvier et al. additionally notes that illumination light drops off by a square of the distance from the object surface to the illumination source (col. 9, lines 64-67) as well as an alternate embodiment in which the scene depth is captured using a stereo camera arrangement (Fig. 3). Juergens (US 2022/0079427 A1) discloses an endoscope that corrects a captured fluorescence signal based on the distance from an excitation light source to the area of the tissue containing excitable material. Wang et al. (US 2019/0365212 A1) discloses a capsule comprising a camera and processor that measures distance information to the GI tract and adjusts intensity of captured images using the distance information, where color planes of the captured image are individually corrected using the distance information. Themelis (US 2017/0237958 A1) teaches an endoscope that corrects a captured image signal based on illumination inhomogeneities.
IX. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J DANIELS whose telephone number is (571)272-7362. The examiner can normally be reached M-F 9:00 AM - 5:00 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, Sinh Tran can be reached at 571-272-7564. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J DANIELS/Primary Examiner, Art Unit 2637
9/26/2026
