`
`UNITED STATES 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.
`
`
`
`
`CONFIRMATIONNO.
`
`90/012,876
`
`05/23/2013
`
`7932923
`
`1092/0101PUS1
`
`6419
`
`6449
`
`7590
`
`08/30/2013
`
`ROTHWELL, FIGG, ERNST & MANBECK, PC.
`607 14th Street, N.W.
`SUITE 800
`WASHINGTON,DC 20005
`
`BASEHOAR, ADAM L
`
`3992
`
`MAIL DATE
`
`08/30/2013
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
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`Canon Ex. 1015 Page 1 of 15
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`Canon Ex. 1015 Page 1 of 15
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`
`
` UNITED STATES PATENTAND TRADEMARK OFFICE
`
`Corarnissioner for Patents
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA 22313-1440
`wunUSPTO.gow
`
`DO NOT USEIN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`DINESH AGARWAL,P.C.
`
`5350 SHAWNEE ROAD
`
`SUITE 330
`
`ALEXANDRIA, VA 22312
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012,876.
`
`PATENT NO. 7932923.
`
`ART UNIT 3992.
`
`Enclosedis a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timeforfiling 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)
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`Canon Ex. 1015 Page 2 of 15
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`Canon Ex. 1015 Page 2 of 15
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`
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`10. [J] Other: cc: Requester (if third party
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,876
`
`Examiner
`ADAM BASEHOAR
`
`Patent Under Reexamination
`7932923
`
`Art Unit
`3992
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
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`bL_] This action is made FINAL.
`aX] Responsive to the communication(s)filed on 23 May 2073 .
`cB] A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortenedstatutory period for response to this action is set to expire 2 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 issuanceof an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (80) days, a response within the statutory minimum ofthirty (30) days
`will be considered timely.
`
`Part]
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. | Notice of References Cited by Examiner, PTO-892.
`2. | Information Disclosure Statement, PTO/SB/08.
`4.
`
`3. C]
`C]
`
`Interview Summary, PTO-474.
`.
`
`Part I|
`
`SUMMARY OF ACTION
`
`Claims 7-47 are subject to reexamination.
`
`Claims sare not subject to reexamination.
`
`Claims shave been canceledin the present reexamination proceeding.
`
`Claims _____s are patentable and/or confirmed.
`
`Claims 7-47 are rejected.
`
`Claims __s are objectedto.
`
`The drawings, filed on
`are acceptable.
`The proposed drawing correction, filedon____——_s has: been (7a)L] approved (7b)L_] disapproved.
`
`Acknowledgment is made ofthe priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`XI
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`O O O X O O O O
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`ta.
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`1b.
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`2.
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`3 4 5
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`.
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`6 7
`
`8
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`a)X All b) Some* c)[] None
`iL] been received.
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`of the certified copies have
`
`2c] not been received.
`3L] been filed in Application No.
`4c] been filed in reexamination Control No.
`5L_] 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. L] Since the proceeding appearsto 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.
`
`U.S. Patent and Trademark Office
`
`requester)
`
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20130726
`Canon Ex. 1015 Page 3 of 15
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`Canon Ex. 1015 Page 3 of 15
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`
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 2
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`DETAILED ACTION
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`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 owneris reminded of the continuing responsibility under 37 CFR 1.565(a) to
`
`apprise the Office of anylitigation activity, or other prior or concurrent proceeding, involving
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`Patent No. 7,932,923 B2 throughoutthe course of this reexamination proceeding. The third
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`party requester is also remindedof the ability to similarly apprise the Office of any such activity
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`or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
`
`and 2286.
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`3.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and notto parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
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`"will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of time in ex parte
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`reexamination proceedings are provided for in 37 CFR 1.550(c).
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`Canon Ex. 1015 Page 4 of 15
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`Canon Ex. 1015 Page 4 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 3
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`4.
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`In order to ensure full consideration of any amendments, affidavits or declarations, or
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`other documentsas evidence of patentability, such documents must be submitted in response to
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`this Office action. Submissionsafter the next Office action, which is intended to be a final
`
`action, will be governed by the requirements of 37 CFR 1.116, after final rejection and 37 CFR
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`41.33 after appeal, which will bestrictly enforced.
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`References Submitted by Requester
`
`5.
`
`The following six references have been cited as establishing a substantial new question of
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`patentability. See Order, mailed 06/17/2013.
`
`= Courtney ‘584 - (European Patent Application No. EP 0 967 584 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)
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 4
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`Priority Determination
`
`6.
`
`Asdescribed in more detail in the Order (see: Order, pp. 7-9), the specific reference to
`
`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 CFR
`
`1.78(a)(2)(4). 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. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be expressed
`as a meansor step for performing a specified function withoutthe 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 elementin a claim for a combination may be expressed as a meansor 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 elementis 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.
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`Canon Ex. 1015 Page 6 of 15
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`Canon Ex. 1015 Page 6 of 15
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`
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 5
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`Absenceof the word “means” (or “step for’’) in a claim creates a rebuttable presumption
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`that the claim elementis not 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
`
`not invoked is rebutted when the claim elementrecites 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 § 112(f) except as
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`otherwise indicated in an Office action.
`
`The limitations of independent claims 9 and 30 that recite(s) “meansfor detecting”,
`
`“means for detecting’’, “means for selecting”, and “meansfor 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
`
`We
`camera”,
`
`66
`
`“are stored in memory”, and “stored in memory” respectively.
`
`Claim Rejections
`
`9.
`
`The rejections below are confined to what has been deemedto be the best available art
`
`from the Request. However, prior to conclusion of this reexamination proceeding, claims must
`
`be patentable overall prior art cited in the order granting reexamination in order to be considered
`
`patentable or confirmed on the reexaminationcertificate.
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`Canon Ex. 1015 Page 7 of 15
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`Canon Ex. 1015 Page 7 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 6
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`Claim Rejections - 35 USC § 102
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`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 personshall be entitled to a patent unless —
`
`(b) the invention waspatented or described in a printed publication in this or a foreign countryor in
`public use or onsale in this country, more than one year priorto the date of applicationfor patentin the
`United States.
`
`11.
`
`Claims1-9, 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).
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`Canon Ex. 1015 Page 8 of 15
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`Canon Ex. 1015 Page 8 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 7
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`13.
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`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 formsthe basis forall
`
`obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained thoughthe inventionis not identically disclosed or described as set
`forth in section 102 of thistitle, 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 obviousat 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 AttachmentI, which are hereby incorporated by reference).
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`Canon Ex. 1015 Page 9 of 15
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`Canon Ex. 1015 Page 9 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 8
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`16.
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`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
`
`AttachmentH, which is hereby incorporated by reference).
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`Canon Ex. 1015 Page 10 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 9
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`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 O, 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
`
`Canon Ex. 1015 Page 11 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`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 obviousto 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 andretrieval 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 therebyhelp filter out false positive determinations (Brill:
`
`column 1, lines 36-52: “recognize complex events an thusfilter 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 0 967 584 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 °584 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. Morespecifically, 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
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`event based video monitoring system of Courtney “584 (Courtney ‘584: Paragraphs 69-71:
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`Canon Ex. 1015 Page 12 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 11
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`“event selection box...check for a specified event, and to indicate what action is to be taken if
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`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: column1, lines 36-52: “recognize complex events an thusfilter out false
`
`positive alarms’’).
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`Canon Ex. 1015 Page 13 of 15
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`Canon Ex. 1015 Page 13 of 15
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 12
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`22.
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`All correspondencerelating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mailto:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAXto:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By handto:
`
`Customer Service Window
`Randolph Building
`401 DulanySt.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Registered users of EFS-Web may alternatively submit such correspondencevia the
`electronic filing system EFS-Web, at
`
`https://etsuspto.gov/efile/myportal/efs-registered
`
`EFS-Weboffers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissionsare “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 submissionsafter the “soft scanning”
`process is complete.
`
`Canon Ex. 1015 Page 14 of 15
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`
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`Application/Control Number: 90/012,876
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`Art Unit: 3992
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`Page 13
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`Any inquiry concerning this communication or earlier communications from the
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`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 Basehoatr/
`
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/JDC/
`
`/Alexander J Kosowski/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`Canon Ex. 1015 Page 15 of 15
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`Canon Ex. 1015 Page 15 of 15
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`