NON-FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 11,699,293
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 3
2. ADDITIONAL TERMS 3
3. REISSUE PROCEDURAL REMINDERS 4
4. OTHER PROCEEDINGS 5
5. STATUS OF CLAIMS 5
6. PRIORITY AND AIA STATUS 6
7. INFORMATION CONSIDERED 7
8. OWNERSHIP 8
9. DECLARATION 8
10. DRAWINGS 9
11. SPECIFICATION 10
12. CLAIM OBJECTIONS 10
13. BROADEST REASONABLE INTERPRETATION (BRI) 11
14. CLAIM REJECTIONS – 35 USC § 251 11
14.1. Original Patent Requirement 11
14.1.1. Pertinent Authorities 12
14.1.2. Analysis 13
14.2. Defective Declaration 16
15. CLAIM REJECTIONS – 35 USC § 112(a) 16
16. ALLOWABLE SUBJECT MATTER 19
17. CONCLUSION 19
ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 19/267,406 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 11 July 2025 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 11,699,293 (“Patent Under Reissue” or “'293 Patent”) titled “NEURAL NETWORK IMAGE PROCESSING APPARATUS.”
An application for the Patent Under Reissue was filed on 22 February 2022 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 17/677,320 (“Base Application” or “'320 Application”) and issued on 11 July 2023 with claims 1–20 (“Originally Patented Claims”).
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
OTHER PROCEEDINGS
Based upon the Examiner’s independent review of the Patent Under Reissue itself and its prosecution history, the Examiner cannot locate any concurrent proceedings before the Office, ongoing litigation, previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction regarding the Patent Under Reissue.
STATUS OF CLAIMS
Claims 1–21, as set forth in the preliminary amendment filed on the Actual Filing Date, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1–20 are rejected under 35 USC § 112(a).
Claims 1–21 are rejected under 35 USC § 251.
Claim 21 is objected to.
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e) to parent application no. 16/780,775 (“Parent Application”).
Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 USC § 112(a) or the first paragraph of pre-AIA 35 USC § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the Parent Application fails to provide adequate support or enablement in the manner provided by 35 USC § 112(a) or pre-AIA 35 USC § 112, first paragraph for one or more claims of the Originally Patented Claims. Particularly, the Parent Application fails to provide adequate support or enablement in the manner provided by 35 USC § 112(a) for the following claim limitations:
(1) “inputting the first eyelid opening value and the second eyelid opening value into a third neural network” (recited by claim 1; and similarly recited by claims 16–17); and
(2) “receiving, from the third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value” (recited by claim 1; and similarly recited by claims 16–17).
Accordingly, the Examiner finds the effective filing date of the Originally Patented Claims to be 22 February 2022, i.e., the Base Application Filing Date.
In view of the above, and the factual findings with respect to 35 USC § 112(a), infra, the Examiner additionally finds the '320 Application repeats a substantial portion of the prior Parent Application, and adds disclosure (in the form of original claims) not presented in the prior Parent Application. Because the '320 Application names the inventor or at least one joint inventor named in the prior Parent Application, it may constitute a continuation-in-part of the prior Parent Application.
AIA Status. Because the Instant Application does not contain a claim having an effective date before March 16, 2013, the AIA provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC §§ 102 and 103 is incorrect, any correction of the statutory basis 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.
INFORMATION CONSIDERED
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or “of record” in the original prosecution of the Patent Under Reissue. Applicant is reminded that a listing of the information cited or “of record” in the original prosecution of the Patent Under Reissue has been considered in the Instant Application and need not be resubmitted.
OWNERSHIP
The Statement Under 37 CFR § 3.73(c) filed on the Actual Filing Date is objected to as not complying with MPEP § 1410.02, 37 CFR § 1.172, and 37 CFR § 3.73(c). Particularly, the Examiner finds that the Statement Under 37 CFR § 3.73(c) does not identify the patent to which it pertains in the “Application No./Patent No.” field of the PTO/AIA /96. The Examiner notes that Applicant should identify the Patent Under Reissue (U.S. Patent No. 11,699,293) and/or the Base Application (U.S. Application No. 17/677,320) in the “Application No./Patent No.” field and the issue date or date filed, respectively, in the “Filed/Issue Date” field of the PTO/AIA /96. The Examiner finds that the showing of ownership is otherwise in compliance.
For the above reasons, the Applicant is required to file a new showing of ownership correcting the above noted error.
DECLARATION
The reissue declaration filed with this application (“July 2025 Reissue Declaration”) is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR § 1.175 and MPEP § 1414.
Applicant is respectfully reminded, “the oath/declaration must specifically identify an error” and “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414 II.C. (emphasis added).
The reissue declaration states “Assignee is seeking to broaden at least independent claim 1. New independent claim 21 is presented and is intended to broaden original patent claim 1. In addition, Assignee intends to claim currently unclaimed embodiments disclosed within the specification.”
Therefore, while the reissue declaration does identify an error by reference to a specific claim (i.e., claim 1), the reissue declaration does not identify the error by reference to specific claim language wherein lies the error. Accordingly, the reissue declaration does not comply with 37 CFR § 1.175.
A reissue declaration, properly identifying at least one error which is relied upon to support the reissue application, is required in response to this Office action.
DRAWINGS
The drawings are objected to under 37 CFR § 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “inputting the first eyelid opening value and the second eyelid opening value into a third neural network; and receiving, from the third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value,” as recited by, e.g., claim 1, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR § 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. If the changes are not accepted by the Examiner, the Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR § 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
“inputting the first eyelid opening value and the second eyelid opening value into a third neural network; and receiving, from the third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value,” as recited by, e.g., claim 1.
CLAIM OBJECTIONS
37 CFR § 1.173(c) states:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
Based upon a review of the preliminary claim amendment filed on the Actual Filing Date, and the accompanying remarks, and in light of 37 CFR § 1.173(c), the Examiner finds Applicant has failed to provide a sufficient explanation of support for changes made to the patent claims via new claim 21. Appropriate explanation of support in accordance with Rule 1.173(c) is required in response to this Office action.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
CLAIM REJECTIONS – 35 USC § 251
The following is a quotation of the appropriate paragraphs of 35 USC § 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Original Patent Requirement
Claim 21 is rejected as failing to satisfy the original patent requirement of 35 USC § 251.
Pertinent Authorities
MPEP § 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP § 1412.01 further provides guidelines for determining whether reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
More recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. Forum US Inc. v. Flow Valve LLC (decided: June 17, 2019).
Analysis
First, method claims 1–15, as patented, recite an invention that comprises, among other things, “[1] inputting the first eye region into a first neural network and the second eye region into a second neural network; [2] receiving a first feature vector from the first neural network and a second feature vector from the second neural network; [3] determining a first eyelid opening value based at least in part on the first feature vector and a second eyelid opening value based at least in part on the second feature vector; […] and [4] receiving, from [a] third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value.” Moreover, media claim 16 and system claims 17–20 recite similar features of the same general invention.
Upon comparison of new method claim 21 to original method claim 1, as presented in the preliminary amendment filed on the Actual Filing Date, the Examiner finds that new method claim 21 broadens original method claim 1 by (1) not including limitation [1], supra, (2) not including limitation [2], supra, (3) not including the “based at least in part on the first feature vector” aspect of the “determining a first eyelid opening value,” of limitation [3], supra, (4) not including the “based at least in part on the second feature vector” aspect of the “determining […] a second eyelid opening value,” of limitation [3], supra, and (5) not including the “third neural network” from the “receiving […] a gaze yaw value or a pitch value,” of limitation [4], supra.
However, the Examiner does not find an unequivocal disclosure in the '293 Patent for the broader invention, as discussed above in the preceding paragraph, represented by new method claim 21. For example, the Examiner finds that the '293 Patent discloses only a single general embodiment, as shown in, e.g., FIGS. 4–5, of which FIG. 4 is reprinted below.
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Figure 4 of the '293 Patent
The Examiner further finds that FIG. 4 shows first and second eye regions 27L/27R being input to a first and a second neural network 40L/40R, respectively; first and second feature vectors 42L/42R received from the first and the second neural network 40L/40R, respectively; a first eyelid value output from 44L based on the first feature vector 42L and a second eyelid value output from 44R based on the second feature vector 42R; and an output from a third neural network 46 based on the concatenation of 42L/42R. See '293 Patent at C5:L17–48. Furthermore, the Examiner finds that the Abstract of the '293 Patent discloses the same general invention, i.e., “Each identified eye region is fed to a respective first and second convolutional neural network, each network configured to produce a respective feature vector. Each feature vector is fed to respective eyelid opening level neural networks to obtain respective measures of eyelid opening for each eye region. The feature vectors are combined and to a gaze angle neural network to generate gaze yaw and pitch values substantially simultaneously with the eyelid opening values.”
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Upon careful review of new claim 21 pending and examined herein with respect to the claims as patented in the '293 Patent, the Examiner finds the new scope of this claim covers a new invention not unequivocally disclosed on the face of the '293 Patent, i.e., the Examiner does not find an unequivocal disclosure or a discussion of the new method invention excluding limitations both disclosed and claimed in the original patent, as discussed above. Rather, the only disclosure of an invention includes such aspects now excluded from new claim 21. Thus, the Examiner concludes new claim 21 presented in this reissue application fails the original patent requirement and thus is rejected under 35 USC § 251.
The Examiner further finds this situation is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors. Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and description all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the '293 Patent here does not clearly and unequivocally disclose the broader method of claim 21 that broadens original method claim 1 by (1) not including limitation [1], supra, (2) not including limitation [2], supra, (3) not including the “based at least in part on the first feature vector” aspect of the “determining a first eyelid opening value,” of limitation [3], supra, (4) not including the “based at least in part on the second feature vector” aspect of the “determining […] a second eyelid opening value,” of limitation [3], supra, and (5) not including the “third neural network” from the “receiving […] a gaze yaw value or a pitch value,” of limitation [4], supra. Thus, to broaden the claims in this manner and to permit Applicant to claim such an invention runs afoul of the original patent requirement in the same manner as at issue in Forum.
Defective Declaration
Claims 1–21 are rejected as being based upon a defective reissue declaration under 35 USC § 251 as set forth above. See 37 CFR § 1.175.
The nature of the defects in the declaration is set forth in the discussion above in this Office action.
CLAIM REJECTIONS – 35 USC § 112(a)
The following is a quotation of 35 USC § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1–20 are rejected under 35 USC § 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claims 1–20 are clearly directed to a computer-implemented invention, and include such computer-implemented features as “inputting the first eyelid opening value and the second eyelid opening value into a third neural network; and receiving, from the third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value.” See, e.g., claim 1.
For computer-implemented inventions, Applicant is reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 USC 112(a) or pre-AIA 35 USC 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01 I. Phrased another way, “[i]t is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding ‘whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved’).” MPEP 2161.01 I (last paragraph).
The Examiner finds that the '293 Patent does not provide any disclosure of how the inventor intends to achieve “inputting the first eyelid opening value and the second eyelid opening value into a third neural network; and receiving, from the third neural network, a gaze yaw value or a pitch value associated with the first eyelid opening value or the second eyelid opening value,” as claimed, such that a POSITA would understand the inventor possessed the invention including how to program the disclosed computer to perform these claimed computer-implemented features. For example, FIG. 4 of the '293 Patent shows first and second eyelid opening values output from neural networks 44L/44R, respectively, infra.
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Figure 4 of the '293 Patent
Furthermore, the '293 Patent discloses that these values are integers. See C5:L43–45 (“The output layer each network 44L, 44R comprises an integer corresponding to number of pixels indicating a level of opening of a given eye.”). However, the inventor did not disclose how it was intended, via the disclosed invention, to input these integers into a third neural network (i.e., network 46) to receive a gaze yaw or pitch, as claimed. Figure 4, supra, and its disclosure at best show that a feature vector 42 (not eyelid values from 44L/44R) is input to a third neural network to receive a gaze yaw/pitch. Thus, the Examiner concludes the '293 Patent provides insufficient written description for claims 1–20.
ALLOWABLE SUBJECT MATTER
Though rejected on other grounds, claims 1–21 are found allowable over the prior art of record.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of this proceeding may be obtained from the USPTO’s Patent Center. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (in USA or Canada) or 571-272-1000.
General inquiries may also be directed to the Central Reexamination Unit customer service line at (571) 272-7705.
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/YUZHEN GE/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights