`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,876
`
`05/23/2013
`
`7932923
`
`1092/0101PUS1
`
`6419
`
`08/30/2013
`7590
`6449
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W.
`SUIIB 800
`WASHINGTON, DC 20005
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`08/30/2013
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`DINESH AGARWAL, P.C.
`
`5350 SHAWNEE ROAD
`
`SUITE 330
`
`ALEXANDRIA, VA 22312
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012.876.
`
`PATENT NO. 7932923.
`
`ART UN IT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,876
`
`Examiner
`ADAM BASEHOAR
`
`Patent Under Reexamination
`7932923
`
`Art Unit
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`bO This action is made FINAL.
`a!ZI Responsive to the communication(s) filed on 23 Mav2013.
`c!ZI A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g_ month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. 0 Notice of References Cited by Examiner, PTO-892.
`3. 0
`4. o_
`2. 0 Information Disclosure Statement, PTO/SB/08.
`
`Interview Summary, PTO-474.
`
`Part II SUMMARY OF ACTION
`[8J Claims 1-41 are subject to reexamination.
`1 a.
`1 b. 0 Claims __ are not subject to reexamination.
`2. 0 Claims __ have been canceled in the present reexamination proceeding.
`3. 0 Claims __ are patentable and/or confirmed.
`[8J Claims 1-41 are rejected.
`4.
`5. 0 Claims __ are objected to.
`6. 0 The drawings, filed on __ are acceptable.
`7. 0 The proposed drawing correction, filed on __ has been (7a)0 approved (7b)0 disapproved.
`8. 0 Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)D Some* c)D None
`of the certified copies have
`1 0 been received.
`20 not been received.
`
`30 been filed in Application No. __ .
`
`40 been filed in reexamination Control No. __
`
`50 been received by the International Bureau in PCT application No. __ .
`
`* See the attached detailed Office action for a list of the certified copies not received.
`9. 0 Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`10. 0 Other: __
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20130726
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION
`
`1.
`
`This Office action addresses claims 1-41 of United States Patent Number 7,932,923 B2
`
`(Lipton et al), for which it has been determined in the Order Granting Ex Parte Reexamination
`
`(hereafter the "Order") mailed 06/17/2013 that a substantial new question of patentability was
`
`raised in the Request for Ex Parte reexamination filed on 05/23/2013 (hereafter the "Request").
`
`This is a Non-Final Action.
`
`Reexamination
`
`2.
`
`The patent owner is reminded of the continuing responsibility under 37 CPR 1.565( a) to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
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`Patent No. 7,932,923 B2 throughout the course of this reexamination proceeding. The third
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`party requester is also reminded of the ability to similarly apprise the Office of any such activity
`
`or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
`
`and 2286.
`
`3.
`
`Extensions of time under 37 CPR l .136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CPR 1.136 apply only to "an applicant" and not to parties in a
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`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
`
`"will be conducted with special dispatch" (37 CPR l.550(a)). Extension of time in ex parte
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`reexamination proceedings are provided for in 37 CPR l.550(c).
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 3
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`4.
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`In order to ensure full consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response to
`
`this Office action. Submissions after the next Office action, which is intended to be a final
`
`action, will be governed by the requirements of 37 CPR 1.116, after final rejection and 37 CPR
`
`41.33 after appeal, which will be strictly enforced.
`
`References Submitted by Requester
`
`5.
`
`The following six references have been cited as establishing a substantial new question of
`
`patentability. See Order, mailed 06/17/2013.
`
`• Courtney '584 - (European Patent Application No. EP O 967 584 A2, published 12/29/1999)
`
`• Courtney '755 - (U.S. Patent No. 5,969,755, published 10/19/1999)
`
`• Brill - (U.S. Patent No. 6,628,835, published 09/30/2003)
`
`• Day-I- ("Object Oriented Conceptual Modeling of Video Data," Proceedings on the
`
`Eleventh International Conference on Data Engineering, IEEE, March 1995, pp. 401-408)
`
`• Day-II- ("Spatio-Temporal Modeling of Video Data for On-Line Object Oriented Query
`
`Processing," Proceedings of the International Conference on Multimedia Computing and
`
`Systems, IEEE, May 1995. p. 98-105)
`
`■ Shotton - ("Object Tracking and Event Recognition in Biological Microscopy Videos," Fifth
`
`International Conference on Pattern Recognition (ICPR 2000), September 2000)
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 4
`
`Priority Determination
`
`6.
`
`As described in more detail in the Order (see: Order, pp. 7-9), the specific reference to
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`earlier filed applications (i.e., U.S. Patent Application Ser. Nos. 09/987,707 and 09/694,712)
`
`found in the Lipton '923 patent is deficient for failing to indicate the proper relationship between
`
`the applications (e.g., continuation, continuation-in-part, divisional, etc.). Thus the benefit claim
`
`of the Lipton '923 patent does not appear to comply with 35 U.S.C. 120 and 37 CPR
`
`l.78(a)(2)(i). Therefore, for reexamination purposes, claims 1-41 of the Lipton '923 patent are
`
`considered to have an effective date of 09/29/2009, the filing date of the Lipton '923 patent.
`
`7.
`
`The following is a quotation of 35 U.S.C. l 12(f):
`
`Claim Interpretation
`
`(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.
`
`Use of the word "means" (or "step for") in a claim with functional language creates a
`
`rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. §
`
`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that§ 112(f) (pre-AIA § 112,
`
`sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure,
`
`material, or acts within the claim itself to entirely perform the recited function.
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 5
`
`Absence of the word "means" (or "step for") in a claim creates a rebuttable presumption
`
`that the claim element is not to be treated in accordance with 35 U.S.C. § l 12(f) (pre-AIA 35
`
`U.S.C. 112, sixth paragraph). The presumption that§ 112(f) (pre-AIA § 112, sixth paragraph) is
`
`not invoked is rebutted when the claim element recites function but fails to recite sufficiently
`
`definite structure, material or acts to perform that function.
`
`Claim elements in this application that use the word "means" ( or "step for") are presumed
`
`to invoke§ 112(f) except as otherwise indicated in an Office action. Similarly, claim elements
`
`that do not use the word "means" (or "step for") are presumed not to invoke § l 12(f) except as
`
`otherwise indicated in an Office action.
`
`The limitations of independent claims 9 and 30 that recite(s) "means for detecting",
`
`"means for detecting", "means for selecting", and "means for identifying" is/are not being
`
`treated in accordance with 112(f) because the claimed function is modified by structure that
`
`performs the function. In the instant case, the limitations are modified by sufficient structure in
`
`support for performing the recited function, such as, "from a single camera", "from said single
`
`camera", "are stored in memory", and "stored in memory" respectively.
`
`Claim Rejections
`
`9.
`
`The rejections below are confined to what has been deemed to be the best available art
`
`from the Request. However, prior to conclusion of this reexamination proceeding, claims must
`
`be patentable over all prior art cited in the order granting reexamination in order to be considered
`
`patentable or confirmed on the reexamination certificate.
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 6
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`Claim Rejections - 35 USC § 102
`
`10.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 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 -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`11.
`
`Claims 1-9, 13, 15-18, 20-30, 34, and 36-40 are rejected under pre-AIA 35 U.S.C. 102(b)
`
`as being anticipated by Day-I ("Object Oriented Conceptual Modeling of Video Data,"
`
`Proceedings on the Eleventh International Conference on Data Engineering, IEEE, March 1995,
`
`pp. 401-408).
`
`-Regarding claims 1-9, 13, 15-18, 20-30, 34, and 36-40, Day-I teaches each and every
`
`limitation of the claims (see pages 24-29 of the Request, and the claim charts on pages 1-47, 53,
`
`57-65, 67-122, 127-128, 132-141 of Attachment H, which are hereby incorporated by reference).
`
`12.
`
`Claims 1-7, 9-13, and 15-28 are rejected under pre-AIA 35 U.S.C. 102(b) as being
`
`anticipated by Courtney '755 (U.S. Patent No. 5,969,755, published 10/19/1999).
`
`-Regarding claims 1-7, 9-13, and 15-28, Courtney '755 teaches each and every limitation
`
`of the claims (see pages 36-40 of the Request, and the claim charts on pages 1-59 of Attachment
`
`L, which are hereby incorporated by reference).
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 7
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`13.
`
`Claims 1-7, 9-13, and 15-28 are rejected under pre-AIA 35 U.S.C. 102(b) as being
`
`anticipated by Shotton ("Object Tracking and Event Recognition in Biological Microscopy
`
`Videos," Fifth International Conference on Pattern Recognition (ICPR 2000), September 2000).
`
`-Regarding claims 1-7, 9-13, and 15-28, Shotton teaches each and every limitation of the
`
`claims ( see pages 41-46 of Request, and the claim charts on pages 1-68 of Attachment N, which
`
`are hereby incorporated by reference).
`
`Claim Rejections - 35 USC § 103
`
`14.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`15.
`
`Claims 14 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Day-I ("Object Oriented Conceptual Modeling of Video Data," Proceedings on the
`
`Eleventh International Conference on Data Engineering, IEEE, March 1995, pp. 401-408).
`
`-Regarding claims 14 and 35, Day-I in view of one of ordinary skill in the art teaches
`
`each and every limitation of the claims (see pages 29-31 of the Request, and the claim charts on
`
`pages 1-6 of Attachment I, which are hereby incorporated by reference).
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 8
`
`16.
`
`Claims 10, 19, 31, and 41 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Day-I ("Object Oriented Conceptual Modeling of Video Data," Proceedings
`
`on the Eleventh International Conference on Data Engineering, IEEE, March 1995, pp. 401-408)
`
`in view of Brill (U.S. Patent No. 6,628,835, published 09/30/2003).
`
`-Regarding claims 10, 19, 31, and 41, the combination of Day-I in view of Brill teaches
`
`each and every limitation of the claims ( see pages 31-33 of the Request, and the claim charts on
`
`pages 1-8 of Attachment J, which are hereby incorporated by reference).
`
`17.
`
`Claims 11, 12, 32, and 33 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Day-I ("Object Oriented Conceptual Modeling of Video Data," Proceedings
`
`on the Eleventh International Conference on Data Engineering, IEEE, March 1995, pp. 401-408)
`
`in view of Day-II (" Spatio-Temporal Modeling of Video Data for On-Line Object Oriented
`
`Query Processing," Proceedings of the International Conference on Multimedia Computing and
`
`Systems, IEEE, May 1995. p. 98-105).
`
`-Regarding claims 11 and 32, the combination of Day-I in view of Day-II teaches each
`
`and every limitation of the claims (see pages 33-36 of the Request, and the claim charts on pages
`
`1-12 of Attachment K, which are hereby incorporated by reference).
`
`-Regarding claims 12 and 33, the combination of Day-I in view of Day-II teaches each
`
`and every limitation of the claims (see the claim charts on pages 51-52 and 125-126 of
`
`Attachment H, which is hereby incorporated by reference).
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 9
`
`18.
`
`Claim 14 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Courtney '755 (U.S. Patent No. 5,969,755, published 10/19/1999).
`
`-Regarding claim 14, Courtney '755 in view of one of ordinary skill in the art teaches
`
`each and every limitation of the claim (see pages 40-41 of the Request, and the claim charts on
`
`pages 1-2 of Attachment M, which are hereby incorporated by reference).
`
`19.
`
`Claim 14 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Shotton
`
`("Object Tracking and Event Recognition in Biological Microscopy Videos," Fifth International
`
`Conference on Pattern Recognition (ICPR 2000), September 2000).
`
`-Regarding claim 14, Shotton in view of one of ordinary skill in the art teaches each and
`
`every limitation of the claim (see pages 46-47 of the Request, and the claim charts on pages 1-2
`
`of Attachment 0, which are hereby incorporated by reference).
`
`20.
`
`Claims 8 and 29-41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Shotton ("Object Tracking and Event Recognition in Biological Microscopy Videos," Fifth
`
`International Conference on Pattern Recognition (ICPR 2000), September 2000) in view of Brill
`
`(U.S. Patent No. 6,628,835, published 09/30/2003).
`
`-Regarding claims 8 and 29-41, the combination of Shotton in view of Brill teaches each
`
`and every limitation of the claims (see pages 47-55 of the Request, and the claim charts on pages
`
`1-88 of Attachment P, which are hereby incorporated by reference). By incorporating by
`
`reference the above noted pages in the Request and the corresponding claim charts, the Examiner
`
`is able to discern that Brill is being cited for the limitations of claims 8 and 29-41 that are not
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 10
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`present in claims 1-7, 9-13, and 15-28, for which an anticipation rejection over Shotton has been
`
`described above. Further, the Examiner notes that it would have been obvious to one of ordinary
`
`skill in the art at the time of the invention to modify the video analysis and content-based query
`
`and retrieval based system of Shotton (Shotton: Abstract: "video analysis and content-based
`
`video query and retrieval system"; Section 3, Paragraphs 3-5: "Once the metadata database has
`
`been built, the system allows the following types of query to be made concerning such videos")
`
`with the described features of the automated complex video event based detection system of
`
`Brill, because Brill taught that said described features provided the benefit of recognizing
`
`complex events in videos which thereby help filter out false positive determinations (Brill:
`
`column 1, lines 36-52: "recognize complex events an thus filter out false positive alarms").
`
`21.
`
`Claims 1-41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Courtney '584 (European Patent Application No. EP O 967 584 A2, published 12/29/1999) in
`
`view of Brill (U.S. Patent No. 6,628,835, published 09/30/2003).
`
`-Regarding claims 1-41, the combination of Courtney '5 84 in view of Brill teaches each
`
`and every limitation of the claims (see pages 55-60 of the Request, and the claim charts on pages
`
`1-303 of Attachment Q, which are hereby incorporated by reference). Further, the Examiner
`
`notes that the disclosure of Courtney '584 combined with Brill are likely to be obvious over one
`
`another in view of the fact that Figure 1 of both Courtney '584 and Brill disclose an identical
`
`video surveillance and monitoring system. More specifically, the Examiner notes that it would
`
`have been obvious to one of ordinary skill in the art at the time of the invention to modify the
`
`event based video monitoring system of Courtney '584 (Courtney '584: Paragraphs 69-71:
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 11
`
`"event selection box ... check for a specified event, and to indicate what action is to be taken if
`
`the specified event occurs") to include the described features of the automated complex video
`
`event based detection system of Brill, because Brill taught that said described features provided
`
`the benefit of recognizing complex events in videos which thereby help filter out false positive
`
`determinations (Brill: column 1, lines 36-52: "recognize complex events an thus filter out false
`
`positive alarms").
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 12
`
`22.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`https:/ i efs. uspto. rarov i efileimyportal/efs-registered
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`offers parties the opportunity to review the content of their submissions after the "soft scanning"
`process is complete.
`
`
`
`Application/Control Number: 90/012,876
`Art Unit: 3992
`
`Page 13
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`/Adam L Basehoar/
`
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/JDC/
`
`/ Alexander J Kosowski/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`