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 .
Claim Interpretation
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.
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) are: (…an image reading portion that reads a document containing personal information…; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion…in claim 1); (…the control portion performs as the anonymizing process a process of blacking out any character…in claim 2); (…the control portion performs as the anonymizing process…in claim 3); (…the control portion performs as the anonymizing process a process of replacing…in claim 4); (…wherein the control portion discriminates a delimiter in the character string constituting the personal name…in claim 5); (an output portion that performs an output process for the output image data…in claim 6). Because this/these claim limitation(s) is/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.
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.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of copending Application No. 19185372 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 are covered by claim 1 of the ‘372 application because though the applicatoin does not explicitly recite the last limitation, performing as the anonymization process a process of anonymizing the personal information in the target region by the method selected by the method selection operation is implied by making unrecognizable any character other than the initial character in a character string, defined in the other application. By way of illustration, consider the respective claim 1 from each disclosure:
Claim 1 of the instant application
Claim 1 of the ‘372 Patent
1. An image processing apparatus comprising: an image reading portion that reads a document containing personal information; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized, wherein when generating the output image data, the control portion extracts text data by an OCR process on the original image data, extracts from the text data a personal name as the personal information, recognizes as a target region a region of the original image data that contains the personal name, and performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region.
1. An image processing apparatus comprising: an image reading portion that reads a document containing personal information; a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized; and a operation/display portion that displays information and that accepts an operation, wherein the operation/display portion accepts an information selection operation for selecting the personal information to be anonymized and a method selection operation for selecting an anonymizing method for the personal information, when generating the output image data, the control portion extracts text data by an OCR process on the original image data, extracts the personal information from the text data, recognizes as a target region a region of the original image data that contains the personal information selected by the information selection operation, and performs as the anonymizing process a process of anonymizing the personal information in the target region by the method selected by the method selection operation.
Independent claim 1 of the instant application are substantially similar to independent claim 1 of the copending Application No. 19185372 (reference application) and are rejected for substantially similar reasons as discussed supra. Likewise, dependent claims 2-6 of the instant application are substantially similar to dependent claims 2-6 (respectively) of the copending Application No. 19185372 and are rejected for substantially similar reasons as discussed supra.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 101 (Abstract Idea)
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.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more analyzed according to 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). The claim recites inputting receiving events and comparing them with a case criteria, create a case criteria with data from the received event, assign a threat score to the case, match further events with the created case criteria and update it with further data and score and render the case on display if it meets another condition.
Step 1: The claim 1 does fall into one of the four statutory categories of method and system claims. Nevertheless the claim is still considered as abstract idea for the following prongs and reasons.
Step 2A: Prong 1: The limitation of claim 1 recites: an image reading portion that reads a document containing personal information; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized, wherein when generating the output image data, the control portion extracts text data by an OCR process on the original image data, extracts from the text data a personal name as the personal information, recognizes as a target region a region of the original image data that contains the personal name, and performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the human organized way and / or with pen and paper without a generic computer. There is nothing in the claim element precludes the step from practically being performed in human organized way and/or with pen and paper.
Dependent claims 2-6 which in turn recite anonymizing process of blacking out, replacing, discriminating a delimiter, performing output image data and are other steps that could be performed by human manually with/without need for a computer. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in an human organized way but for the recitation of generic computer components, then it falls within the “certain methods of organizing human activities” grouping of abstract ideas and can be done manually. Accordingly, the claim recites an abstract idea.
Prong 2: This judicial exception is not integrated into a practical application. In particular, the claims do not recite any additional element to perform beyond routine steps of: an image reading portion that reads a document containing personal information; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized, wherein when generating the output image data, the control portion extracts text data by an OCR process on the original image data, extracts from the text data a personal name as the personal information, recognizes as a target region a region of the original image data that contains the personal name, and performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore the claim is directed to an abstract idea.
Step 2B: The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, an image reading portion that reads a document containing personal information; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized, wherein when generating the output image data, the control portion extracts text data by an OCR process on the original image data, extracts from the text data a personal name as the personal information, recognizes as a target region a region of the original image data that contains the personal name, and performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region if it meets another condition amounts to no more than mere instructions to apply the exception using a generic computer terms. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible. Therefore all the corresponding dependent claims 2-6 are also rejected for the same rationale.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 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 skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Villanueva et al (Pub. No. US 20250209204) in view of Hmura (Pub. No. US 2024/0394466).
As per claim 1, Villanueva discloses an image processing apparatus (the steps of the automated anonymization are executed by one processor of a personal computer, a laptop, a tablet, a smartphone or any programmable device providing an interface to input/output documents, par. 63) comprising: an image reading portion that reads a document containing personal information; and a control portion that performs an anonymizing process on original image data acquired through reading of the document by the image reading portion, the control portion thereby generating output image data in which the personal information is anonymized (anonymization or pseudonymization request: Interaction of the user through a graphical user interface (GUI) or by using an application programming interface (API) to input/output a document ... (an entity in anonymization refers to any individual, group, object, or concept that can be distinctly identified. This is often a personal or sensitive piece of information that needs to be protected or anonymized. For example, in a text document, entities might include personal names, addresses, phone numbers, par.5); note that the GUI displays information and that accepts an operation, for example, inputting/outputting a document; Classification of the document to be anonymized according to its format; Conversion (into original image data acquired through reading of the document by the image reading portion); Application of optical character recognition (OCR); Extraction of the content from the document based on its type/format…par. 27-30; Application of a natural language processing (NLP) predictor model to detect personally identifiable information (PII); Redaction and Masking of the anonymized document; If the document is in image format, a previous step is added: a task of OCR that converts the document content into text through the mixed content plugin... the redaction plugin corresponding to the detected format, retrieves the original document and apply the corresponding modifications (masking, blacklining, tokenization, etc…The modified anonymized document is delivered to the user through the GUI, par. 32-34),
wherein when generating the output image data (the modified anonymized document is delivered to the user through the GUI, par.34), the control portion extracts text data by an OCR process on the original image data (Application of optical character recognition (OCR)…extraction of the content from the document based on its type/format, fig.1, par. 30-32), extracts from the text data a personal name as the personal information, recognizes as a target region a region of the original image data that contains the personal name (application of a natural language processing (NLP) predictor model to detect personally identifiable information (PII)… Redaction and Masking of the anonymized document (in a text document, entities might include personal names, addresses, phone numbers, par.5); If the document is in image format, a previous step is added: a task of OCR that converts the document content into text through the mixed content plugin... the redaction plugin corresponding to the detected format, par. 33-34).
Villanueva does not explicitly disclose performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region. However Hmura discloses performs as the anonymizing process a process of making unrecognizable any character other than an initial character in a character string constituting the personal name in the target region (there is a case in which text data representing a document described on the paper surface is associated with the data of the paper surface image acquired by the acquisition unit…the scanner may have an optical character recognition (OCR) function using an OCR technology…the OCR function is a function of recognizing a text from an image by using the OCR technology and generating text data including a text code representing the recognized text…there is a case in which text data including a text code of a text recognized from the paper surface image by the OCR function of the scanner is acquired by the acquisition unit in a state of being associated with the data of the paper surface image…the text refers to one to which a standardized text code such as a Unicode is assigned, and includes kana characters, Chinese characters, and alphabetical characters…the extraction unit analyzes the paper surface text data associated with the data of the paper surface image, and extracts, as masking candidates, words belonging to the following concealment target attributes from the paper text data… the concealment target attribute is decided depending on the word which is to undergo the masking process, and includes, but not limited to, a name, a place, a date, a company name, an occupation, a gender, a title, a telephone number, and the like when masking personal information as specific examples…the extraction unit extracts the word belonging to the concealment target attribute from the paper surface text data…the extraction model is a model that has the paper surface text data as an input and the word of the concealment target attribute extracted from the paper surface text data as an output…par. 30-34). Therefore one ordinary skill in the art would have found it obvious before the effective filling date of the claimed invention to use Hmura in Villanueva for including the above limitations because one ordinary skill in the art would recognize it would further improve the efficiency of the masking process to be performed on the document while suppressing the increase in the device load, par. 12-13
As per claim 2, the combination of Villanueva and Hmura discloses wherein if the personal name in the target region is composed of a Japanese character string, the control portion performs as the anonymizing process a process of blacking out any character other than an initial character in the Japanese character string constituting the personal name in the target region (Hmura: the OCR function is a function of recognizing a text from an image by using the OCR technology and generating text data including a text code representing the recognized text…the text refers to one to which a standardized text code such as a Unicode is assigned, and includes kana characters, Chinese characters, and alphabetical characters…the extraction unit analyzes the paper surface text data associated with the data of the paper surface image, and extracts, as masking candidates, words belonging to the following concealment target attributes from the paper text data… the concealment target attribute is decided depending on the word which is to undergo the masking process, and includes, but not limited to, a name, a place, a date, a company name, an occupation, a gender, a title, a telephone number, and the like when masking personal information as specific examples…the extraction unit extracts the word belonging to the concealment target attribute from the paper surface text data…the extraction model is a model that has the paper surface text data as an input and the word of the concealment target attribute extracted from the paper surface text data as an output…par. 30-34). The motivation for claim 2 is the same motivation as in claim 1 above.
As per claim 3, the combination of Villanueva and Hmura discloses wherein if the personal name in the target region is composed of a Japanese character string containing a Chinese character, the control portion checks whether the Chinese character is accompanied by a phonetic transcription, and if the Chinese character is accompanied by a phonetic transcription, based on the phonetic transcription the control portion recognizes an alphabetic character string obtained by Romanizing the Japanese character string constituting the personal name in the target region, and the control portion performs as the anonymizing process a process of replacing the Japanese character string constituting the personal name in the target region with a character string composed of an initial character in the alphabetic character string (Humra: there is a case in which text data representing a document described on the paper surface is associated with the data of the paper surface image acquired by the acquisition unit…the scanner may have an optical character recognition (OCR) function using an OCR technology…the OCR function is a function of recognizing a text from an image by using the OCR technology and generating text data including a text code representing the recognized text…there is a case in which text data including a text code of a text recognized from the paper surface image by the OCR function of the scanner is acquired by the acquisition unit in a state of being associated with the data of the paper surface image…the text refers to one to which a standardized text code such as a Unicode is assigned, and includes kana characters, Chinese characters, and alphabetical characters…the extraction unit analyzes the paper surface text data associated with the data of the paper surface image, and extracts, as masking candidates, words belonging to the following concealment target attributes from the paper text data… the concealment target attribute is decided depending on the word which is to undergo the masking process, and includes, but not limited to, a name, a place, a date, a company name, an occupation, a gender, a title, a telephone number, and the like when masking personal information as specific examples…the extraction unit extracts the word belonging to the concealment target attribute from the paper surface text data…the extraction model is a model that has the paper surface text data as an input and the word of the concealment target attribute extracted from the paper surface text data as an output…par. 30-34). The motivation for claim 3 is the same motivation as in claim 1 above.
As per claim 4, the combination of Villanueva and Hmura discloses wherein if the personal name in the target region is composed of an alphabetic character string, the control portion performs as the anonymizing process a process of replacing the alphabetic character string constituting the personal name in the target region with a character string composed of an initial character in the alphabetic character string (Hmura: see par. 30-34). The motivation for claim 4 is the same motivation as in claim 1 above.
As per claim 5, the combination of Villanueva and Hmura discloses wherein the control portion discriminates a delimiter in the character string constituting the personal name and recognizes as an initial character a first character of each of a plurality of character strings separated by the delimiter (Villanueva: see par. 34).
As per claim 6, the combination of Villanueva and Hmura discloses an output portion that performs an output process for the output image data, wherein the output portion is at least either a printing portion that, as the output process, prints an image based on the output image data on a sheet and a communication portion that, as the output process, transmits the output image data to an external device (Hmura: the output unit 15 executes, on the paper surface image, the masking process of masking the text in the masking area in the paper surface image, and outputs the paper surface image that has undergone the masking process to the display device…the output unit may cause the printer to print out the masked paper surface image by outputting the masked paper surface image to the printer…see par. 30-34, 40). The motivation for claim 6 is the same invention as in claim 1 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see PTO-form 892).
The following Patents and Papers are cited to further show the state of the art at the time of Applicant’s invention with respect to image processing apparatuses.
Peake, III (Pat. No. US 10949568); “Systems and Methods for Distributed, Stateless, and Persistent Anonymization with Variable Encoding Access”;
-Teaches controller may instantiate one or more anonymization agents…see col. 2 line 59-63…each anonymization agent may load at least one file into memory, may scan file for private, confidential, and/or restricted data types, may replace data for the private, confidential, and/or restricted data types with persistent anonymized data from database, and may output anonymized files comprising original unrestricted data from files and anonymized and/or deidentified data for restricted data from files…see col. 3 lines 28-35.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHAZAL B SHEHNI whose telephone number is (571)270-7479. The examiner can normally be reached Mon-Fri 9am-5pm PCT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached at 5712723951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GHAZAL B SHEHNI/Primary Examiner, Art Unit 2499
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