www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,056
`
`12/15/2017
`
`6959293
`
`1361
`
`Byrne Poh LLP / IPT
`ll Broadway
`Suite 760
`New York, NY 10008
`
`BANANKHAH, MAJID A
`
`3992
`
`09/07/2018
`
`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)
`
`IPT Ex-2008, p. 0001
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
` MARC PENSABENE
`O'MELVENY & MYERS LLP
`7 TIMES SQUARE
`NEW YORK, NY 10036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,056.
`
`PATENT UNDER REEXAMINATION 6959293 .
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`IPT Ex-2008, p. 0002
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 2
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`DETAILED EX PARTE REEXAMINATION OFFICE ACTION
`
`Introduction
`
`1.
`
`Claim 1 of United States Patent No. 6,959,293 to Pirim (the “Pirim” patent) is
`
`currently under reexamination in this ex parte reexamination proceeding 90/014,056. An
`
`Order Granting ex parte reexamination (the “Order’), mailed January 26, 2018, found
`
`that a substantial new question of patentability (“SNQ”) was raised in the request for ex
`
`parte reexamination, December 15, 2017 (the "Request"), as to claim 1. A non-final
`
`Office action was mailed on March 26, 2018 rejecting claim 1 to which the Patent Owner
`
`responded on June 26, 2018 (the "Response"). Included with the Response were
`
`declarations from Dr. A. C. Bovik (the "Bovik Declaration"). Claim 1
`
`is not amended in
`
`the Response.
`
`For the reasons to be explained below, the arguments and evidence presented in
`
`the Responseareinsufficient to distinguish over the prior rejections in Ground#1 and
`
`Ground#2. Thus,the rejections of those two grounds repeated below andthis Office
`
`action is made final.
`
`Issues Raised in the Request
`
`2.
`
`The following printed publication, as clted and applied in said Order, form a basis
`
`for prior claim rejections sel forth below.
`
`a.
`
`b.
`
`C.
`
`International Patent Publication WO 99/36893 (“Pirim PCT”), published
`July 22, 1999.
`Siegel, Howard J, elal, “PASM: A Partiionable SIMED/MIMD System far
`image Processing and Paiterm Recognition,” IEEE Transactions on
`Computers, Val 6-30, No. 12 (Decernber 1981} (Siegel”)
`U.S. Patent No. 6,118,895 (“Hirota”), filed March 5, 1996, issued
`September 12, 2000
`
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 3
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`Claim Interpretation
`
`Means-Plus Function
`
`3.
`
`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
`
`35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 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.
`
`Absenceof the word “means”(or “step for’) in a claim creates a rebuttable
`
`presumption 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 35 U.S.C. 112(f)
`
`(pre-AlA 35 U.S.C. 112, sixth paragraph) is not invokedis rebutted when the claim
`
`element recites function but fails to recite sufficiently definite structure, material or acts
`
`to perform that function.
`
`Claim elementsin this application that use the word “means”(or “step for’) are
`
`presumedto invoke 35 U.S.C. 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 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
`
`In accordance with MPEP 2181,
`
`Prong (A) requires:
`
`(A) the claim limitation uses the term "means"or "step" or a term used as a substitute
`for "means"that is a generic placeholder (also called a nonce term or a non-structural
`term having no specific structural meaning) for performing the claimed function
`Prong (B) requires:
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`Page 4
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`the term "means"or "step" or the generic placeholder is modified by functional
`(B)
`language, typically, but not always linked by the transition word "for" (e.g., "means for")
`or another linking word or phrase, such as "configured to" or "so that"...
`
`Prong (C) requires:
`
`the term "means"or "step" or the generic placeholder is not modified by sufficient
`(C)
`structure, material, or acts for performing the claimed function.
`
`After a claimed phrase has been shownto invoke 35 U.S.C. § 112 sixth
`
`paragraph, the next step is to determine the corresponding structure, material, or acts
`
`as described in the specification. MPEP § 2181. Il.
`
`The claims being reexamined are replete with the phrase “is configured to”. E.g.,
`
`claim 36 recites “the secure web browser processis configured to execute on the at
`
`least one electronic data processor, and comprises ... .” Claim 53 recites “portable
`
`computer based system is configured such that the at least one second protected web
`
`browser process...”
`
`The Examiners notes that claim 1 recites:
`
`at least two histogram calculation units for the treatmentof the at least one
`
`parameter,
`
`the histogram calculation units being configured to form a histogram
`
`representative of the parameter as a function of a validation signal and to determine by
`
`classification a binary classification signal resulting from a comparison of the parameter
`
`and a selection criterion C, wherein the classification signal is sent to the time
`
`coincidences bus, and wherein the validation signal is produced from time coincidences
`
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`Page 5
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`signals from the time coincidence bus so that the calculation of the histogram depends
`
`on the classification signals carried by the time coincidence bus....
`
`Examiners determine herein that the above functional language meets the three
`
`prong test and thus will be interpreted as a means-plus-function limitation under 35
`
`U.S.C. §112(sixth ¥) for this claim.
`
`FL #1: “the histogram calculation units being configured to form ...” (Claim 1)
`
`Asto Prong (A), it is noted that “histogram calculation unit” is a generic
`
`placeholder or nonce term equivalent to “means”. Additionally, because the term “unit”
`
`does not convey any particular structure and further “histogram calculation” only implies
`
`further function without any further structure. Examiners have further reviewedthe prior
`
`art of record and find that, to one of ordinary skill in this particular art, “histogram
`
`calculation unit” does not denote a particular structure (either expressly or inherently).
`
`Examinersfind nothing in the specification, prosecution history or the prior art to
`
`construe “histogram calculation unit’ in functional language recited above as the name
`
`of a sufficiently definite structure for performing the functions recited in FL #1 so asto
`
`take the overall claim limitation out of the ambit of §112(6th 4). See Williamson v. Citrix
`
`Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
`
`In light of the above, the Examiners conclude that the term “histogram calculation
`
`unit” is a generic placeholder having no specific structure associated therewith.
`
`Because “histogram calculation unit” is merely a generic placeholder having no specific
`
`IPT Ex-2008, p. 0006
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`Application/Control Number: 90/014,056
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`Page 6
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`structure associated therewith, the Examiners conclude that the functional language
`
`recited above, meets invocation Prong (A).
`
`Asto Prong (B), the recited functional language meets invocation prong (B)
`
`becauseit recites the function “to form a histogram representative of the parameter as a
`
`function of a validation signal and to determine byclassification a binary classification
`
`signal resulting from a comparison of the parameter and a selection criterion C, wherein
`
`the classification signal is sent to the time coincidences bus, and wherein the validation
`
`signal is produced from time coincidences signals from the time coincidence bus sothat
`
`the calculation of the histogram depends on the classification signals carried by the time
`
`coincidence bus.”
`
`As to Prong (C), the recited functional language meets invocation prong (C)
`
`because the functional language does notrecite sufficient structure for performing the
`
`claimed function. Based upon a review of claim 1, Examinersfind that functional
`
`language recited aboverecites verylittle (if any) structure for performing the function.
`
`In view of the Examinersfindings above that functional language in claim 1
`
`meets invocation prongs (A)-(C), the Examiners concludethat, the at least two
`
`histogram calculation units, in claim 1 invokes interpretation under 35 U.S.C. §112 (6th
`
`{).
`
`IPT Ex-2008, p. 0007
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`Application/Control Number: 90/014,056
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`Page 7
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`Corresponding Structure
`
`4.
`
`After a claimed phrase has been shownto invoke 35 U.S.C. §112 (sixth 4), as
`
`found above, the next step is to determine the corresponding structure or material as
`
`described in the specification for performing the recited function. See MPEP §2181 (Il).
`
`Based upona review of the specification, the Examiners find that the
`
`corresponding structures are those structures necessary to perform the functions cited
`
`above. Specifically, the Examiners find that the corresponding structures for calculating
`
`
`
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`
`‘293 Patent FIG. 3
`
`a histogram are generally shown in FIG. 3, reprinted above, which is a histogram
`
`calculation unit 1 as part of a processing chip (shownin ‘293 Patent FIG. 32) with
`
`elements multiplexers 105 and 106, memory 100, at least 1 register 102r anda
`
`IPT Ex-2008, p. 0008
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`Application/Control Number: 90/014,056
`Art Unit: 3992
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`Page 8
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`comparator, register 101r and a comparator, and an incrementor 107. The structures
`
`for determining “by classification a binary classification signal resulting from a
`
`comparison of the parameter and a selection criterion C, wherein the classification
`
`signal is sent to the time coincidences bus’is the classifier 101 comprising a
`
`register/memory 101r and a comparator which is connected to the time coincidences
`
`bus 111 (See ‘293 Patent col. 9, lines 28-37). The structures for producing “a validation
`
`signal” from the “time coincidences signals from the time coincidences bus”is the time
`
`coincidences unit 102 shownin FIG. 22 of the ‘293 Patent comprising at least a register
`
`102r and a comparator which outputs the validation signal (See ‘293 Patentcol. 9, lines
`
`42-50, col. 10, lines 53-57 and col. 16, line 66 to col. 17, line 8). Finally, the structures
`
`for calculation of the histogram depending “on the classification signals carried by the
`
`time coincidences bus” are the incrementation enabling unit 107 comprising a controlled
`
`adder(See ‘293 Patent col. 9, lines 19-21). As noted by the PO in his remarks
`
`(Remarks at, 10) the test unit 103 and analysis output register 104 are not usedfor the
`
`functions claimed in claim 1.
`
`In view of these findings, pursuant to 35 U.S.C. §112 (sixth 4), the at least two
`
`histogram calculation units in claim 1 will be limited to these noted corresponding
`
`structures and equivalents thereof.
`
`Il. THE REJECTIONS
`
`A. Summary of Rejections
`
`' This is all disclosed in the specification of the ‘293 patent for the corresponding structure and/or algorithm to
`perform the entire claimed function for the claimed term "histogram calculation units”.
`
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 9
`
`The following is the summary of the ground of rejections raised in the Request:
`
`is obvious under 35 U.S.C. § 103(a) over Pirim
`Ground#1. Requested claim 1
`PCT in view of Siegel.
`
`is obvious under 35 U.S.C. § 103(a) over Pirim
`Ground#2. Requested claim 1
`PCT in view of Hirota.
`
`B. Claim Rejections
`
`1. Relevant Statutes - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousnessrejections 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 ofthis 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 obviousat the time the
`invention was madeto a person having ordinaryskill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`2. The factualinquiries
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AlA 35 U.S.C. 103(a) are summarized as follows:
`
`a
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence presentin the application indicating
`obviousness or nonobviousness.
`
`C. Detail Analysis
`
`a. Ground #1
`
`Ground#1. Requested claim 1
`view of Siegel.
`
`is obvious under 35 U.S.C. § 103(a) over Pirim PCTin
`
`IPT Ex-2008, p. 0010
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 10
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`While the PO agreesthatall of the elements of claim 1 are present in Pirim PCT
`
`(Remarks at, 20), but the Examiner points to the corresponding structure in Pirim PCT
`
`for completeness. In Pirim PCT, the corresponding structures for calculating a
`
`histogram are generally shownin FIG. 14, reprinted below, which is a histogram
`
`calculation unit as part of a processing chip (Pirim PCT FIG. 12).
`
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`IPT Ex-2008, p. 0011
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 11
`
`with elements multiplexers 102 and 104 (Pirim PCT at, 27), memory 100 (Pirim PCTat,
`
`27), at least one register 108 (Pirim PCT at, 29) and a comparator, register 106 (Pirim
`
`PCTat, 27-28) and a comparator, and an incrementor 110 (Pirim PCT at, 30), and their
`
`associated discussions.
`
`1.
`
`RE: Claim 1
`
`The following is the individual elements of claim 1.
`
`[1 Pre.]: A visual perception processor for automatically detecting an event
`occurring in a multidimensional space(i, j) evolving over time with respect to at
`least one digitized parameter in the form of a digital signal on a data bus, said
`digital signal being in the form of a succession aijt of binary numbers associated
`with synchronization signals enabling to define a given instant (T) of the
`multidimensional space andthe position (i, j) in this space, the visual perception
`processor comprising:
`
`Pirim PCT processes a frame of pixels, each pixel is addressed by row and
`
`column (i.e., the claimed (i, j) multidimensional space). See Pirim PCT at 11 states;
`
`"Signal S(PI) represents signal S composed ofpixels PI." Id. He also explain that each
`
`video frame comprises horizontal scanned lines, each including; "a succession of pixels
`
`or image points PI, e.g., a1,1, a1,2, and a1,3 for line I1.1.."); See also Fig. 1
`
`in Pirim PCT,
`
`and e.g., at 43, also Pirim PCT at 16, description of Fig. 5.
`
`A synchronization signal is used to define a given time and location in the
`
`succession of frames. See Pirim PCT at 11, secondfull paragraph after the first partial
`
`paragraph.
`
`[1A]: the data bus; [1B]: a control unit
`
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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 12
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`Pirim PCT discloses a data bus. See Pirim PCT and description of Figs. 11-16.
`
`See also Figs. 2, 11 and 12). Pirim PCT also control unit and discloses Controller 42 is
`
`in communication with data bus 23, which allows controller 42 to run a program to
`
`control. Pirim PCT at 38, Fig. 12.
`
`[1C]: a time coincidences buscarrying at least a time coincidence signal;
`Pirim PCT discloses a time coincidence bus that carries the output of each of the
`
`classifiers to the coincidence unit, which includes logic for creating the histogram
`
`validation signals. See Pirim PCTat 28, also Fig. 14.
`
`[1D]: and at least two histogram calculation units for the treatment of the at least
`one parameter,
`
`Pirim PCT discloses multiple histogram formation and processing units. Pirim
`
`PCT at Fig. 12, elements 24, 25, 26, 27, 28, and 29; Id. at 25-26. In the example of
`
`Figure 12, each of the six-histogram units is shown to process a parameter (SR, V, VL,
`
`Dl, x(m)1). Pirim PCT at 25.
`
`[1E]: the histogram calculation units being configured to form a histogram
`representative of the parameter as a function of a validation signal -
`
`Pirim PCT discloses that the histogram units shown in Figure 12 form a
`
`histogram of each parameteras a function of a validation signal. See Pirim PCT at 28,
`
`and Fig. 12. Pirim PCT also discloses that in some configurations, parameters, such as
`
`the x-position of a pixel, may be processed by multiple histogram units simultaneously.
`
`See Pirim PCT at 37.
`
`To the extent that the Patent Owner (the “PO”) arguesthat the portion cited at 37
`
`in Pirim PCTfails to disclose two histogram calculation units treating the same
`
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`Application/Control Number: 90/014,056
`Art Unit: 3992
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`Page 13
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`parameter because the axes are rotated and, therefore, not be the same parameter, this
`
`deficiency is remedied by Siegel.
`
`Siegel teaches achieving “real-time” processing of an image by using multiple
`
`identical processors (called “PEs”) in parallel to each process and form a histogram of
`
`the same parameter. See Siegel at 934, Abs., and 944, L. column.
`
`Reasonsto Combine Pirim PCT with Siegel
`
`Pirim PCT discloses image processing andin particular is aimed at achieving
`
`“real-time” processing for “robot (machine) vision” purpose. Figure 12 of Pirim PCT
`
`already uses six histogram unit to process various parameters, and the system would
`
`only run faster with additional histogram units to increase the processing speed. As
`
`describe above, Siegel teaches processing an image using multiple identical processors
`
`in parallel to each process and form a histogram of the same parameter in “real time”.
`
`Therefore, it would have been obvious for a person of ordinary skill in the art
`
`(“POSITA’) to combine real time image processing of Pirim PCT with image processing
`
`using multiple identical processors of Siegel for the benefit of increasing the processing
`
`speed. For example, a POSITA would consider it obvious to add an additional element
`
`28a adjacent and similar to element 28 in Figure 12 in Pirim PCT to process x-position
`
`data for the pixels. Elements 28 and 28a would be separate histogram units and would
`
`be processing the same parameter (x-position) for different segments of pixels, thereby
`
`increasing efficiency by increasing the processing speed. Alternatively, a POSITA would
`
`have considered it obvious to simply use two or more copies of the system in Figure 12,
`
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`IPR2023-00104
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`IPT Ex-2008, p. 0014
`LG v IPT
`IPR2023-00104
`
`

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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 14
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`combined with the control architecture of Siegel, to form two or more histograms of each
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`parameter.
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`Additionally, incorporating Siegel’s parallel processing technique into Pirim PCT’s
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`image processing system constitutes applying a known technique to a known device
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`ready for improvementto yield predictable results. The results (faster processing speed)
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`would have been predictable because adding additional histogram units would allow
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`division of labor for processing of each parameter, and such faster processing speed is
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`the stated benefit provided by Siegel. The combination simply requires combining prior
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`art elements (the histogram unit system of Pirim PCT with Siegel's idea of using two
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`histogram units to treat the same parameter) according to known methods (the circuitry
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`described in Pirim PCT) to yield predictable results (processing of an image).
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`[1F]: and to determine byclassification a binary classification signal resulting
`from a comparison of the parameter and a selection criterion C, wherein the
`classification signal is sent to the time coincidences bus, and wherein the
`validation signal is produced from time coincidences signals from the time
`coincidence bussothat the calculation of the histogram depends on the
`classification signals carried by the time coincidence bus.
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`See Claim Interpretation Section above wherein this limitation, FL #1, is
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`interpreted under 35 U.S.C. §112 (sixth 4). Thus, see Fig. 14 of the Pirim PCT with Fig.
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`12 reveals that the two disclosures are identical with respect to the above limitation, i.e.,
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`the structures shownin FIG. 14 of Pirim discloses on the corresponding structures for
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`FL #1.
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`IPT Ex-2008, p. 0015
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2008, p. 0015
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`Art Unit: 3992
`x
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`Page 15
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`Figure 14 of Pi rim PCT disclosesclassifier 25b for comparing parameter data
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`(V) to a selection criterion C, which is stored in “register 106 that enables the
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`classification criteria to be set by the user, or by a separate computer program.” Pirim
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`PCT at 27-28. The binary outputof classifier 25b proceeds to a time coincidence bus
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`23, which also carries the output of other classifiers in the system. Id. at 28. Last para.
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`b. Ground #2
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`Ground#1. Requested claim 1
`view of Hirota.
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`1.
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`RE: Claim 1
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`is obvious under 35 U.S.C. § 103(a) over Pirim PCTin
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`The following is the individual elements of claim 1.
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`As explained abovein the rejection of claims over Pirim PCTin view of Siegel,
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`Pirim PCT discloseslimitations [1 Pre.] - [1d], [1f] in claim 1.
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`IPT Ex-2008, p. 0016
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2008, p. 0016
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 16
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`[1E]: the histogram calculation units being configured to form a histogram
`representative of the parameter as a function of a validation signal
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`As explained above Pirim PCT discloses “the histogram calculation units being
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`configured to form a histogram” of parameters “as a function of a validation signal.” To
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`the extent that the PO arguesthat the portion cited at 37 in Pirim PCT, fails to disclose
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`two histogram calculation units treating the same parameter because the axes are
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`rotated and therefore, not be the same parameter, this deficiency is remedied by Hirota.
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`Hirota discloses two histogram calculation units as Elements 202 and 204in
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`Figure 13.
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`Hirota at Certificate of correction, Fig. 13. Two histogram units 202 and 204 both
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`process the same parameter.....color. Id., at 7:24-28. In other words, both histogram
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`units generate histograms of color distribution for the pixels in the image. Hirota then
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`discloses comparing these two histograms to perform pattern recognition (i.e., to
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`determine the type of document being scanned). Hirota at 17:54-56 (“In the
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`embodiments described above, a full color document or a black-and-white document is
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`selected automatically according to histograms on value signals”), 10:4-44.
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`IPT Ex-2008, p. 0017
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2008, p. 0017
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Reasons to Combine Pirim PCT with Hirota
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`Page 17
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`It would have been obvious for a POSITA to modify Pirim PCTin view of Hirota
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`to provide two or more histogram units processing the same parameter for the purpose
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`of recognizing pattern or, or detecting an event. For example, a POSITA would consider
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`it obvious to add an additional element 204a adjacent and similar to element 204 in
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`Figure 13 to process video signal (or luminance) data for the pixels. Elements 204 and
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`204a would be separate histogram units and would be processing the same parameter
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`(video signal or luminance) for pixels. Alternatively, a POSITA would have consideredit
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`obvious to simply use two or more copies of the system in Figure 13 to form two or
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`more histograms of each parameter. Each Figure 13 system would processthe pixels,
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`as described in Pirim PCT. In yet another alternative, a POSITA would have considered
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`it obvious to simply configure two of the existing histogram calculation units of Pirim
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`PCTto treat the same parameter.
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`Additionally, A POSITA would have recognizedthat the results of this
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`modification, i.e., having two histogram units process the same parameter were
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`predictable, because Hirota already explains how the use of two histogram units treating
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`the same parameter can be used for recognizing patterns, or “detecting an event” as
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`recited by Claim 1. Hirota at 17:54-56, 10:4-44. For the same reasons, the combination
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`is also obvious becauseit constitutes a simple substitution of one known element (a
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`histogram unit treating the same parameter) for another (a histogram unit treating a
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`different parameter) to obtain predictable results (processing of the image).
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`Moreover, Pirim PCT explains that it relies on a “generic image processing
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`system.” Id., at 1 (emphasis added). Being “generic,” Pirim PCT’s image processing
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`IPT Ex-2008, p. 0018
`LG v IPT
`IPR2023-00104
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`IPT Ex-2008, p. 0018
`LG v IPT
`IPR2023-00104
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`

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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 18
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`system can be programmedfor any number of possible applications. Incorporating the
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`idea of allowing a second histogram unit to process the same parameter as another
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`histogram unit, as described in Hirota, would increasethe flexibility of Pirim PCT’s
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`generic image processing system and enable it to be even more powerful for processing
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`imagesin other applications. For example, it would enable Pirim PCT to be able to
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`detect whether a piece of paper is color or black and white, the application Hirota was
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`aimed at. Thus, incorporating Hirota’s teaching into Pirim PCT furthers Pirim PCT’s
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`stated objective of disclosing a “generic” image processing system that can be used for
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`a variety of applications. While the primary application for the generic system
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`considered by Pirim PCT is detection of a drowsydriver, ail other image processing
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`applications are also contemplated: “It will be appreciated that when used in non-
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`vehicular applications, the camera may be mountedin any desired fashion to detect the
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`specific criteria of interest.” Pirim PCT at 10-11. Additionally, Pirim PCT’s objective of
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`disclosing a “generic” image processing system constitutes a teaching, suggestion, or
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`motivation in the prior art that would have led a POSITA to modify Pirim PCT to
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`incorporate Hirota’s image processing capability.
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`Response to Arguments
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`The Interpretation of the Claims under 35 U.S.C. § 112, paragraph six
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`A.
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`The PO arguesthat the Office should construe the claim 1 without resort to §
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`112, Paragraph six consistent with the PTAB’s interpretation of the claim in two prior
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`patent Office proceedings. (Remarksat, 6-10) As such, the PO does not agrees with the
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`IPT Ex-2008, p. 0019
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2008, p. 0019
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 19
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`interpretation of the following portion (hereinafter “FL #1” of claim 1 as being a means-
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`plus function limitation under 35 U.S.C. § 112, paragraph six:
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`at least two histogram calculation units for the treatment of
`the at least one parameter,
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`the histogram calculation units being configured to form a histogram
`representative of the parameter as a function of a validation signal and to
`determine by classification a binary classification signal resulting front a
`comparison of the parameter and a selection criterion C, wherein the
`classification signal is sent to the time coincidences bus, and wherein the
`validation signal is produced from time coincidences signals from the time
`coincidence bus so that the calculation of the histogram depends on the
`classification signals carried by the time coincidence bus.
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`The PO points to MPEP § 2181, citing Phillips and argues that, “a presumption
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`that § 112, paragraph six does not apply becausethe claim does notinclude the term
`LE
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`“means” or "step,"”
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`(Response at 6) The Examiner disagrees.
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`At the outset, it must be pointed out that MPEP states:
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`Aspart of the claim interpretation analysis, examiners should determine whether
`each limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`paragraph or not. If the claim limitation invokes 35 U.S.C. 112(f) or pre-AlA 35
`U.S.C. 112, sixth paragraph, the claim limitation must "be construed to cover the
`corresponding structure, material, or acts described in the specification and
`equivalents thereof." 35 U.S.C. 112(f) and pre-AlA 35 U.S.C. 112, sixth
`paragraph; see also In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845,
`1849 (Fed. Cir. 1994) (en banc) ("[W]e hold that paragraph six applies regardless
`of the context in which the interpretation of means-plus-function language arises,
`i.e., whether as part of a patentability determination in the PTO or as part of a
`validity or infringement determination in a court."). See MPEP § 2181, subsection
`|. for more information regarding the determination of whether a limitation invokes
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and means-(or
`step-) plus- function claim limitations.
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`Id., 2173.01, Il.
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`IPT Ex-2008, p. 0020
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2008, p. 0020
`LG v IPT
`IPR2023-00104
`
`

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`Application/Control Number: 90/014,056
`Art Unit: 3992
`
`Page 20
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`With respect to the argument that the claim does not recite “means”or “step”,
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`Examiner notes that the MPEP never saythat just because the clam limitation that does
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`not use “means”or “step”, rather MPEP under the title -ENSURE RECORD IS CLEAR-
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`indicate the following:
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`“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. 112(f) (pre-AIA 35 U.S.C. 11