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 .
1. This Office Action is in response to a communication filed on 4/18/2025.
2. This is a Non-Final Office Action on the merit. Claims 1-20 are currently pending and are addressed below.
3. Examiner notes that the fundamentals of the rejection are based on the broadest reasonable interpretation of the claim language. Applicant is kindly invited to consider the reference as a whole. References are to be interpreted as by one of ordinary skill in the art rather than as by a novice. See MPEP 2141. Therefore, the relevant inquiry when interpreting a reference is not what the reference expressly discloses on its face but what the reference would teach or suggest to one of ordinary skill in the art.
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, 8-10, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more (i.e., at most, applicant claims about using a generic computer/camera to practice a mental process of changing a predetermined route).
101 Analysis - Step 1: Claims 1, and 14 are directed to an apparatus, a method, and a program,; therefore, they are within at least one of the four statutory categories.
Claim 20 is rejected under 35 USC 101 because it may require just a software program per se; it is suggested to follow an USPTO format of “A non- transitory computer readable storage medium configured to store instructions of a program that when executed cause a processor to perform ...”.
Remarks: Non-transitory refers to computer-readable media that stores data only for short periods of time and/or only in the presence of power, such as a memory device or Random Access Memory (RAM). The United States Patent and Trademark Office (USPTO) first used the term “non-transitory” in August 2009 as part of their training material regarding patentability. The USPTO stated that transitory matter is non-patentable. To overcome this limitation, the USPTO enacted a policy in January 2010 stating that patent applications should direct software claims to non-transitory computer-readable media.
Non-transitory media is computer-readable media that stores data for a short period of time and/or in the presence of another power such as a memory device or Random Access Memory (RAM).
Computer media claims for patents that include transitory media are often rejected by the USPTO.
As transitory media is not patentable, applicants are advised to submit non-transitory claim limitations.
There is a great deal of controversy regarding what is patentable and what is not when it comes to intellectual property in the technology and computer software field. In the 1995 case of Beauregard, the court ruled that certain types of computer-readable media are patentable under certain circumstances. Simply put, as long as the material is stored in a tangible form, such as on a compact disk, it can be patented.
The Federal Circuit made another landmark decision regarding software patent claims in the case of In re Neuijten that took place in 2007. In re Neuijten contradicted Beauregard by stating that transitory propagating signals are not patent-eligible. In other words, wireless transmissions, also known as “radio waves,” were deemed unpatented, even if they were uniquely created for a specific purpose.
On January 26, 2010, David Kappos, the director of the USPTO, offered a strategy to avoid patent rejection based on the In re Neuijten ruling. The official guidance stated that as long as you use language in your claims mentioning “non-transitory storage media” or “non-transitive,” it is possible to patent some forms of computer-readable media.
101 Analysis - Step 2A, Prong I:
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Representative claim 1 includes limitation(s) that recites an abstract idea (emphasized below with bold-face types):
An information processing apparatus comprising:
an acquisition unit that acquires vibration information regarding vibration generated in a camera mounted on a mobile body (with insignificant data – because of gathering data on a mobile unit - the vibration information being based on a video image captured by imaging performed by the camera); and
a generation unit that generates control information to be used for (e.g., a certain intent of use) damping the vibration, on a basis of the vibration information acquired by the acquisition unit (this is a very broad limitation to control output information).
As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all." 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("“[M]ental processes .. and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Accordingly, applicant claims a concept with an abstract idea.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of using a unit/computer/camera or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (i.e., there is no “significant more” in those pending claims, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception
(MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the claimed abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis — Step 2A, Prong II
According to the 2019 PEG, the claim is to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application (e.g., a generic computer with display). As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a generic computer/processor to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a specific practical application.
101 Analysis - Step 2B
Regarding Step 2B of the 2019 PEG, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application (i.e., merely generate better/clearer information). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps amounts to nothing more than applying the exception (e.g., using a generic computer component). Generally applying an exception using a generic computer cannot provide an inventive concept. And as discussed above, the additional limitations discussed above are insignificant extra-solution activities.
The additional limitations of receiving/obtaining data, comparing, and outputting estimated data are well-understood, routine and conventional activities because the background recites that these claimed activities are all conventional, and the specification does not provide any indication that the processor is anything other than a conventional computer. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data for a ship is a well-understood, routine, and conventional function when it is claimed in a merely generic manner from the Federal Circuit in Trading Techs. Int'l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere pre/post-solution activity is a well understood, routine, and conventional function.
5. Independent claims 19, and 20 include insignificant generic components to practice the invention (i.e., using processors/camera, and a program to implement an abstract concept of claim 1), having similar claimed limitations in the claimed bodies, they are analyzed and are rejected as above “apparatus” claim 1.
6. Dependent claims 2-4, 8-10, and 18 are rejected under 35 USC § 101 because they are also directed to non-statutory subject matter by incorporating their independent claim deficiencies; those claims are also ineligible under 35 USC 101 because they do not indicate a specific practical application (e.g., including a significant further) for the claimed features.
7. In summary, claims 1-4, 8-10, and 18-20 are ineligible under 35 USC 101.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An 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.
8. The claims in this application are given their broadest reasonable interpretation (BRI) 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. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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 “...a memory is configured to store...” or “...the processor is configured to...”.
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
9. 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
10. Claims 8-10 in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
11. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “...semi-active vibration damping mechanism.....” (see pending ”apparatus” claim 8 line 4, and lines 8-9).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
12. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
13. If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 USC. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained. notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary in the art to which the claimed invention pertains. Patentability shall not be negated by the manner m which the invention was made.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
14. Claims 1, and 18-20 are rejected under 35 U.S.C. 102 Maruhashi over (US Pat. 10887522 B2). or in the alternative, are rejected under 35 U.S.C. 103 as being unpatentable over Maruhashi ((US Pat. 10887522 B2).
A. Per claims 1, and 18: Maruhashi teaches an information processing apparatus/”mobile” camera, comprising:
an acquisition unit that acquires vibration information regarding vibration generated in a camera mounted on a mobile body (i.e., a ship), the vibration information being based on a video image captured by imaging performed by the camera (see Maruhashi col. 1lines 13-30); and
a generation unit that generates control information to be used for damping the vibration, on a basis of the vibration information acquired by the acquisition unit (see Maruhashi col. 8, lines 51-59).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement Maruhashi to reduce vibration in acquired information in order to obtain clearer images while moving – which task has been a successful expectation (see Maruhashi col.8 lines 36-59).
15. Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Maruhashi, in view of Okura et al (US Pub. 20230211505 A1).
The rationales and reference for a rejection of claim 1 are incorporated.
Per dependent claim 2: Maruhashi fails to disclose that a magnitude of the vibration does not satisfy a requirement/predetermined criterion; however, Okura et al suggest that requirement (see Okura et al. para. [0021], [0053]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement Maruhashi with Okura et al to clearly require a certain condition before doing next step – which task has been a successful expectation.
Per dependent claim 3: The rationales and references for a rejection of claim 2 are incorporated.
Okura et al suggest that the magnitude of the vibration includes a magnitude of an amplitude (see Okura et al. para. [0053]), and Maruhashi indicates different vibration levels, wherein the magnitude of the vibration not satisfying the predetermined criterion includes the magnitude of the amplitude not being smaller than a predetermined value (see Maruhashi, Figs. 3A-3C, and Fig. 4 step S404).
Per dependent claims 4-5, 7: The rationales and references for a rejection of claim 3 are incorporated.
Okura et al suggest that when the magnitude of the amplitude is not smaller than the predetermined value, the generation unit generates the control information for changing a speed of the mobile body (e.g., changing a moving speed to reduce vibrations “to reduce the vibration of camera 400 caused by moving robot 200 at a relative high speed” see Okura et al. para. [0021], [0053]).
Per dependent claim 6: The rationales and references for a rejection of claim 5 are incorporated.
Maruhashi already suggests that the relationship between the magnitude of the amplitude and the frequency includes a resonance frequency at which the magnitude of the amplitude is not smaller than the predetermined value (see Maruhashi, Figs. 3A-3C, and Fig. 4 step S404).
16. Claims 11-12, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Maruhashi, in view of Okura et al, and further in view of Nakai (US 20220221857 A).
A. Per claims 11, and 16: The rationales and references for a rejection of claim 3 are incorporated.
Maruhashi fails to disclose a relationship between each area of a plurality of areas included in map information about an environment in which the mobile body is moving and the magnitude of the vibration, the generation unit generates the control information indicating a moving route of the mobile body: however, Nakai suggests a solution to reduce an issue of using camera in combination with a navigation map (e.g., to gather better/clearer information, see Nakai,para.[0002], [0026], [0105][,0143]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to icombine Maruhashi, Okura et al, and Nakai to obtain better photo by using different available routes to avoid issues that effect a mobile camera – which task has been an alternate expectation.
B. Per claims 12-13: The rationales and references for a rejection of claim 11 are incorporated.
Nakai also suggests a generation unit generates the control information indicating the moving route of the mobile body (e.g., to gather clearer/better photo images, see Nakai, FIG. 5 ST205).
17. Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Maruhashi,in view of Okura et al, and further in view of Nakai (US 20220221857 A).
The rationales and references for a rejection of claim 3 are incorporated.
Okura et al also suggests that a camera is movable and is controllable (e.g., a mobile body may be a vehicle see Okura, para. [0151]).
It has been well-known that a moving unit (such as a wheel of a vehicle) is an interfacing between a route surface and a shock absorber to a vehicle with a mounted camera so that a generation unit generates the control information to be used for reducing/damping the vibration; therefore, this claimed limitation is insignificant due to an overall damping effort from extra controlling a mounted camera.
Conclusion
18. Pending claims 1-20 are rejected.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cuong H Nguyen whose telephone number is (571) 272-6759 (email address is cuong.nguyen@uspto.gov). The examiner can normally be reached on M - F: 9:30AM- 5:30PM. Examiner interviews are available via telephone, 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, BENDIDI RACHID can be reached on (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only, For more information about the PAIR system, see https//ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll- free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 or 571-272-1000.
/CUONG H NGUYEN/Primary Examiner, Art Unit 3664
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