DETAILED ACTION
Applicant’s response, filed Mar 26 2026, has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claim Status
Claims 1-13 are pending.
Claims 1 and 13 are objected to.
Claims 1-13 are rejected.
Priority
This application is a CON of 13/878,094, filed Apr 5 2013 (now US 10,497,465), which claims priority to: DE102010038014.8, filed Oct 6 2010; 61391317, filed Oct 8 2010; and PCT/EP2011/067383, filed Oct 5 2011. However, the claims recite the limitations of claim 2 “initiating, by the at least one processor, a predefined workflow action in response to the classification outcome” and of claim 13 “A computer program product for characterizing a physical sample based on spectral analysis, comprising a non-transitory computer-readable medium having program instructions that, when executed, cause a processor to: acquire spectroscopic measurement data from a first sample using an analysis method selected from NMR spectroscopy, mass spectrometry, electron spin resonance, vibrational spectroscopy, UV/VIS spectroscopy, and fluorescence spectroscopy” which are not supported in the priority documents.
Accordingly, each of claims 1 and 2-12 are afforded the effective filing date of Oct 6 2010 while claim 2 and 13 are afforded the effective filing date of Oct 19 2019.
Claim Objections
The outstanding objections to the claims are withdrawn in view of the amendments submitted herein.
The claims are objected to because of the following informalities. The instant objection is newly stated and is necessitated by claim amendment.
Claim 1 recites, in the fourth limitation and limitation f), a plurality of steps: “determining… and computing…” and “repeating… and setting”. As set forth in 37 CFR 1.75, where a claim sets forth a plurality of steps, each step of the claim should be separated by a line indentation (see MPEP 608.01(i)). Claim 13 is similarly objected to.
Claim Rejections- 35 USC § 112
The outstanding rejections to the claims are withdrawn in view of the amendments submitted herein.
35 USC § 112(a)
Claims 2 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. These rejections pertain to new matter. The newly recited claim rejections are necessitated by claim amendment herein.
Claim 2 recites “initiating, by the at least one processor, a predefined workflow action in response to the classification outcome”. The specification as published provides support for classification of an individual ([0027; 0046]; FIG. 8-10). However, there is not support within the specification, nor has Applicant provided such support, for initiating a predefined workflow action in response to the classification outcome. Therefore, the limitation introduces new matter.
Claim 13 recites “A computer program product for characterizing a physical sample based on spectral analysis, comprising a non-transitory computer-readable medium having program instructions that, when executed, cause a processor to: acquire spectroscopic measurement data from a first sample using an analysis method selected from NMR spectroscopy, mass spectrometry, electron spin resonance, vibrational spectroscopy, UV/VIS spectroscopy, and fluorescence spectroscopy”. The limitation is interpreted as a processor being programmed to acquire spectroscopic measurement data from a first sample using a spectroscopy method, and therefore requires the physical acquisition of the data by the spectroscopy system. The specification as published provides support for software loaded into the memory of a computer that is executed by a processor to perform data analysis steps [0206-0207]. However, there is not support within the specification, nor has Applicant provided such support, for a non-transitory computer-readable medium having program instructions that, when executed, cause a processor to acquire spectroscopic measurement data from a first sample using an analysis method selected from various spectrometers. Therefore, the limitation introduces new matter.
35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 4-6 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. The instant rejection is newly stated and is necessitated by claim amendment.
Claim 4 recites “wherein each value of an analysis result… to obtain a plurality of quotient values”. However, claim 1, 2nd limitation, recites “providing… a first analysis results… comprising a plurality of spectral intensity values”, as well as a plurality of quotient values and correlation values in the 3rd limitation and a first and second rating value in a) and b). It is therefore not clear which set of values are intended to be further limited, and if they are related to the first analysis result and the plurality of quotient values recited in claim 1. For compact examination, it is assumed that claim 4 intends to limit the plurality of spectral intensity values of the first analysis result in claim 1. Th rejection may be overcome by clarifying the relationship between the terms. Claim 5-6 are rejected based on their dependency from claim 4.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to one or more judicial exceptions without significantly more. Any newly recited portions are necessitated by claim amendment.
MPEP 2106 organizes judicial exception analysis into Steps 1, 2A (Prongs One and Two) and 2B as follows below. MPEP 2106 and the following USPTO website provide further explanation and case law citations: uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Framework with which to Evaluate Subject Matter Eligibility:
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter;
Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea;
Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application (Prong Two); and
Step 2B: If the claims do not integrate the judicial exception, do the claims provide an inventive concept.
Framework Analysis as Pertains to the Instant Claims:
Step 1
With respect to Step 1: yes, the claims are directed to a method and a computer program product comprising a non-transitory computer-readable medium, i.e., a process, machine, or manufacture within the above 101 categories [Step 1: YES; See MPEP § 2106.03].
Step 2A, Prong One
With respect to Step 2A, Prong One, the claims recite judicial exceptions in the form of abstract ideas. The MPEP at 2106.04(a)(2) further explains that abstract ideas are defined as:
mathematical concepts (mathematical formulas or equations, mathematical relationships and mathematical calculations);
certain methods of organizing human activity (fundamental economic practices or principles, managing personal behavior or relationships or interactions between people); and/or
mental processes (procedures for observing, evaluating, analyzing/ judging and organizing information).
With respect to the instant claims, under the Step 2A, Prong One evaluation, the claims are found to recite abstract ideas that fall into the grouping of mental processes (in particular procedures for observing, analyzing and organizing information) and mathematical concepts (in particular mathematical relationships and formulas) are as follows:
Independent claims 1 and 13: preprocessing… the first analysis result to normalize for baseline drift and noise, extract peak regions of interest, and compute ratios between selected signal values that compensate concentration differences between single substances, thereby eliminating a need for a separate concentration determination for the analyzed sample and reducing the data handled for subsequent analysis;
determining… a plurality of quotient values and correlation values from the plurality of spectral intensity values or feature vectors, and computing a correlation matrix in which each entry comprises a pairwise quotient between respective pairs of values from the plurality of spectral intensity values or feature vectors;
generating… a quotient matrix comprising the plurality of quotient values, wherein each quotient represents a mathematical relationship between a pair of values of the plurality of spectral intensity values or feature vectors in the first analysis result, where the quotient matrix comprises a two-dimensional matrix representing relationships between each possible pair of values;
generating… a weighted correlation matrix by applying a set of weights to the correlation matrix, wherein the set of weights emphasizes relationships between values of the plurality of spectral intensity values or feature vectors;
generating… a characterizing signature of the first sample based on the weighted correlation matrix, the characterizing signature comprising significant correlations identified within the weighted matrix, without requiring a prior assignment of substances to specific signals in the spectroscopic measurement data by carrying out the following steps:
a) determining… a first rating value between the quotient matrix and a first average correlation matrix;
b) determining… a second rating value between the quotient matrix and a second average correlation matrix;
c) providing… a weighting matrix having weighting values identifying significant correlations;
d) iteratively adjusting a single weighting value by raising or lowering the weighting value to improve inter-class separation;
e) multiplying each quotient value of the quotient matrix with a corresponding value of the weighting matrix;
f) repeating the adjustment until the weighting value approaches a value that maximizes inter-class separation, and setting the value to zero when the weighting value falls below a predetermined threshold value;
g) repeating the iterative adjustment for remaining weighting values to obtain an optimized weighting matrix serving as the characterizing signature, which indicates one or more significant correlations;
multiplying each value of the quotient matrix with the characterizing signature to create a weighted set of values that are characteristic for the first sample, wherein the weighted set of values comprises a transformed signal representation optimized to reduce noise and model overfitting from the original measurement data; and
characterizing the first sample based on the weighted set of values, wherein the weighted set of values enables classification, diagnosis, or quality assessment of the first sample, comprising at least one of: assessing whether an individual is affected by a particular health condition, including identifying risk of organ rejection or monitoring the progression of disease; evaluating organ function following transplantation or damage; monitoring therapy efficacy; or performing quality control in industrial processes.
The above limitation directed to “characterizing the system” is interpreted as interpreting the results provided by preceding steps in one of the recited applications without actually requiring the performance of any of the applications, which reads on a mental process as described below.
Dependent claim 2: selecting… a classification outcome for the first sample based on the characterizing signature; and
initiating… a predefined workflow action in response to the classification outcome.
Dependent claim 3: generating the first analysis result based on the analyses.
Dependent claims 4-12 recite further steps that limit the judicial exceptions in independent claim 1 and, as such, also are directed to those abstract ideas. For example, claims 4 and 6 further limit obtaining a plurality of values of a quotient; claims 5 and 7 further limit generating the signature; and claims 8-12 further limit characterizing the first sample.
The abstract ideas recited in the claims are evaluated under the Broadest Reasonable Interpretation (BRI) and determined to each cover performance either in the mind and/or by mathematical operation because the method only requires a user to manually characterize a system. Without further detail as to the methodology involved in “preprocessing”, “determining”, “computing”, “generating”, “adjusting”, “raising”, “lowering”, “multiplying”, “repeating”, “setting”, “characterizing”, and “assessing” under the BRI, one may simply, for example, use pen and paper to preprocess an analysis result to normalize for baseline drift and noise, extract peak regions of interest, and compute ratios between selected signal values, determine quotient values between pairs of values in a dataset, compute a correlation matrix, generate a quotient matrix and a weighted correlation matrix by applying weights to the correlation matrix, generate a characterizing signature from the weighted correlation matrix (by determining a rating value between the quotient matrix and a first average correlation matrix and another rating value between the quotient matrix a second average correlation matrix, iteratively adjusting a single weighting value by raising or lowering the weighting value, multiplying the quotients by a weighting value of the weighting matrix, repeating the adjustment until the weighting value approaches an inter-class separation maximization, setting the value to zero, and repeating the iterative adjustment for the remaining weighting values), multiply values of the quotient matrix with the characterizing signature, and characterizing the sample based on the weighted set of values. Some of these steps and those recited in the dependent claims, including determining values of a preprocessing to normalize for baseline drift and noise, extract peak regions, and compute ratios, determine a quotient that represents a mathematical relation between a pair of values, applying weights to a set of values, iteratively adjust by raising or lowering one single value of the weighting set, multiplying each value with an according value of the weighting set, setting values to 0 after comparing values to a threshold, and multiplying the values of the quotient with the values of the characterizing signature, require mathematical techniques as the only supported embodiments, because they describe in words inherently mathematical processes. Further support is disclosed in the specification at least at: [0020-0025; 0170-0174].
Therefore, claims 1 and 13 and those claims dependent therefrom recite an abstract idea [Step 2A, Prong 1: YES; See MPEP § 2106.04].
Step 2A, Prong Two
Because the claims do recite judicial exceptions, direction under Step 2A, Prong Two, provides that the claims must be examined further to determine whether they integrate the judicial exceptions into a practical application (MPEP 2106.04(d)). A claim can be said to integrate a judicial exception into a practical application when it applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. This is performed by analyzing the additional elements of the claim to determine if the judicial exceptions are integrated into a practical application (MPEP 2106.04(d).I.; MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the judicial exceptions, the claim is said to fail to integrate the judicial exceptions into a practical application (MPEP 2106.04(d).III).
Additional elements, Step 2A, Prong Two
With respect to the instant recitations, the claims recite the following additional elements:
Independent claim 1: acquiring, by a spectroscopic instrument, spectroscopic measurement data from a first sample, wherein the spectroscopic instrument is selected from NMR spectrometers, mass spectrometers, electron spin resonance spectrometers, vibrational spectrometers, UV/VIS spectrometers, and fluorescence spectrometers; and
providing, by at least one processor, a first analysis result for the first sample comprising a plurality of spectral intensity values or feature vectors derived from the spectroscopic measurement data by vectorizing a processed spectrum..
Independent claim 13: acquire spectroscopic measurement data from a first sample using an analysis method selected from NMR spectroscopy, mass spectrometry, electron spin resonance, vibrational spectroscopy, UV/VIS spectroscopy, and fluorescence spectroscopy;
receive a first analysis result for the first sample comprising a first plurality of spectral intensity values or feature vectors derived from the spectroscopic measurement data by vectorizing a processed spectrum.
Dependent claim 3: analyzing the first sample using at least two analysis methods selected from NMR spectroscopy, mass spectrometry, electron spin resonance, vibrational spectroscopy, UV/VIS spectroscopy, and fluorescence spectroscopy.
Dependent claim 2 further limits the first sample, therefore further limiting the recited additional elements in the claims.
The claims also include non-abstract computing elements. For example, independent claim 1 includes a processor and independent claim 13 includes a computer program product… comprising a non- transitory computer-readable medium having program instructions that, when executed, cause a processor to perform the steps.
Considerations under Step 2A, Prong Two
With respect to Step 2A, Prong Two, the additional elements of the claims do not integrate the judicial exceptions into a practical application for the following reasons. Those steps directed to data gathering, such as “acquiring” spectroscopic measurement data and “receiving” and “providing” data, perform functions of collecting the data needed to carry out the judicial exceptions. Data gathering does not impose any meaningful limitation on the judicial exceptions, or on how the judicial exceptions are performed. Data gathering steps are not sufficient to integrate judicial exceptions into a practical application (MPEP 2106.05(g)).
Further steps directed to additional non-abstract elements of a “computer program product… comprising a non-transitory computer-readable medium having program instructions that, when executed, cause a processor to perform the steps” do not describe any specific computational steps by which the “computer parts” perform or carry out the judicial exceptions, nor do they provide any details of how specific structures of the computer, such as the computer-readable recording media, are used to implement these functions. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. Hence, these are mere instructions to apply the judicial exceptions using a computer, and therefore the claim does not integrate that judicial exceptions into a practical application. The courts have weighed in and consistently maintained that when, for example, a memory, display, processor, machine, etc.… are recited so generically (i.e., no details are provided) that they represent no more than mere instructions to apply the judicial exception on a computer, and these limitations may be viewed as nothing more than generally linking the use of the judicial exception to the technological environment of a computer (MPEP 2106.05(f)).
The specification does not provide a clear explanation for how the additional elements provide these improvements. Therefore, the additional elements do not clearly improve the functioning of a computer, or comprise an improvement to any other technical field. Further, the additional elements do not clearly affect a particular treatment; they do not clearly require or set forth a particular machine; they do not clearly effect a transformation of matter; nor do they clearly provide a nonconventional or unconventional step (MPEP2106.04(d)). Although claims 1 and 13 recite “preprocessing, by the at least one processor, the first analysis result to normalize for baseline drift and noise, extract peak regions of interest, and compute ratios between selected signal values that compensate concentration differences between single substances, thereby eliminating a need for a separate concentration determination for the analyzed sample and reducing the data handled for subsequent analysis”, it is considered that the judicial exception of “preprocessing” the data provides the elimination of a need for a separate concentration determination for the analyzed sample, rather than any additional element in the claim.
Thus, none of the claims recite additional elements which would integrate a judicial exception into a practical application, and the claims are directed to one or more judicial exceptions [Step 2A, Prong 2: NO; See MPEP § 2106.04(d)].
Step 2B (MPEP 2106.05.A i-vi)
According to analysis so far, the additional elements described above do not provide significantly more than the judicial exception. A determination of whether additional elements provide significantly more also rests on whether the additional elements or a combination of elements represents other than what is well-understood, routine, and conventional. Conventionality is a question of fact and may be evidenced as: a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates a well-understood, routine or conventional nature of the additional element(s); a citation to one or more of the court decisions as discussed in MPEP 2106(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); and/or a statement that the examiner is taking official notice with respect to the well-understood, routine, conventional nature of the additional element(s).
With respect to the instant claims, the prior art review to Reid (Trends in Food Science & Technology, 2006, 17:344-353; newly cited) disclose that acquiring spectroscopic measurement data from NMR spectrometers (p. 346, col. 1, par. 2 through col. 2, par. 1), mass spectrometers (p. 347, col. 1, par. 3 through p. 348, col. 1, par. 3), electron spin resonance spectrometers (p. 346, col. 1, par. 2 through col. 2, par. 1), vibrational spectrometers (p. 345, col. 1, par. 1 through col. 2, par. 2), UV/VIS spectrometers (p. 347, col. 1, par. 2), and fluorescence spectrometers (p. 347, col. 1, par. 2) is a well-understood, routine, conventional data gathering activities previously known to the industry. Further, the courts have found that receiving or transmitting data over a network is a computer function that is a well-understood, routine, and conventional function when claimed in a merely generic manner, as they are in the instant claims (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015), and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, as discussed in MPEP 2106.05(d)(II)(i)). As such, the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (MPEP2106.05(d)). The data gathering steps as recited in the instant claims constitute a general link to a technological environment which is insufficient to constitute an inventive concept which would render the claims significantly more than the judicial exception (MPEP2106.05(g)&(h)).
With respect to claims 1 and 13, the computer-related elements or the general purpose computer do not rise to the level of significantly more than the judicial exception. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. Hence, these are mere instructions to apply the judicial exceptions using a computer, which the courts have found to not provide significantly more when recited in a claim with a judicial exception (see Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018), MPEP 2106.06(A)). The additional elements are set forth at such a high level of generality that they can be met by a general purpose computer. Therefore, the computer components constitute no more than a general link to a technological environment, which is insufficient to constitute an inventive concept that would render the claims significantly more than the judicial exceptions (see MPEP 2106.05(b)I-III).
Taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception(s). Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claims as a whole do not amount to significantly more than the exception itself [Step 2B: NO; See MPEP § 2106.05].
Therefore, the instant claims are not drawn to eligible subject matter as they are directed to one or more judicial exceptions without significantly more. For additional guidance, applicant is directed generally to the MPEP § 2106.
Response to Applicant Arguments
At p. 12-13, Applicant summarized the interview conducted on Feb 9 2026, indicating that inclusion of an active step of acquiring spectroscopic data “show the transformation from real instrument signals into a structured representation that enables improved characterization of the sample, reflecting a technology centered spectroscopy pipeline operating on instrument-acquired data to improve laboratory workflow and signal processing” and “that framing the claimed operations as part of a spectroscopy pipeline tied to physical measurement and laboratory efficiency provides a clearer technological anchor for the claimed subject matter… (suggesting) that the eligibility concerns relate to how the practical application is expressed in the claims, rather than to the underlying invention itself”. At p. 18-19, par. 3, Applicant submits that the amended claims are directed to a practical spectroscopic analysis workflow rather than to a mathematical operation because they expressly recite acquisition of the spectroscopic measurement data. Applicant submits that the claims also recite a preprocessing step that computes ratios compensating concentration differences, elimination of the need for a separate concentration determination step, and that the claims embody a reduction of downstream computation burden and transformation of the measured signal into a weighted representation used to characterize the sample. Applicant submits that the claims are consistent with Diamond v. Diehr where the mathematical relationships are applied within a technological process that improves real-world operations because the ratio processing provides the above mentioned improvements.
It is noted that such statements were not made by the Examiner in the interview. The interview focused on the fact that, in order to consider arguments that the spectroscopy acquisition or laboratory workflow was improved by the judicial exceptions, the presence of those steps in the claims as actively recited steps would be required.
However, it is found that such amendments and arguments are not persuasive. Applicant alleges that preprocessing data to compute ratios represents provides improvements. However, steps directed to “preprocessing” that provide the supposed improvement (i.e., elimination of the need for a separate concentration determination step, and that the claims embody a reduction of downstream computation burden and transformation of the measured signal into a weighted representation used to characterize the sample) in the instant claims are steps that are, themselves, the judicial exceptions and cannot therefore be a practical application of the judicial exception. The courts have made clear that a judicial exception is not eligible subject matter (Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)) if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, it is the additional elements (if any) in the claim that must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible. It is submitted here that the instant claims do not include any additional elements that provide for a practical application. Rather, the “additional element” in the instant claims (see exemplary claim 1) includes only the step of “acquiring, by a spectroscopic instrument, spectroscopic measurement data” and “providing, by at least one processor, a first analysis result for the first sample”. As set forth above, said steps operate in the claim as data gathering steps and do not integrate any of the recited judicial exceptions into a practical application, nor do the claims as a whole include any inventive concept beyond well-understood, routine and conventional steps.
Applicant’s remarks ultimately indicate that the improvement is provided by the “preprocessing” step, which is a judicial exception. As described above, a judicial exception cannot integrate itself. Although the claims are considered as a whole at Step 2A, Prong 2, to examine whether there is an improvement, the improvement must flow from the additional element or be in the additional element. Upon consideration of the claims as amended, the acquisition of the spectroscopy measurements are not altered in any way by the performance of the judicial exceptions. Nothing is indicated in the claims that the spectroscopy is changed in any manner. Although the claims recite “thereby eliminating a need for a separate concentration determination for the analyzed sample and reducing the data handled for subsequent analysis” as a result of “preprocessing”, it is not apparent that such a separate concentration determination would be required under normal circumstances, or that the concentration determination is even connected with the spectroscopic measurement data acquisition. Further, a reduction in data does not improve the subsequent functioning of a computer. Such a reduction merely provides the computer with less data to act upon, while the computer performs in the same manner as it would on any other data. The other improvements indicated by Applicant, “computing ratios that compensate concentration difference” and “transformation of the measured signal” encompass judicial exceptions and are therefore not improvements in or provided by additional elements.
It is not considered that the claims are analogous to those in Diamond v. Diehr. In Diamond v. Diehr, the results from the recited mathematical calculations were used to control a manufacturing process. The instant claims do not produce a result that is used to control a subsequent process. Applicant’s own remarks support that the claims are not analogous to Diamond v. Diehr because they argue that the actual data gathering steps of acquiring spectroscopic measurements are improved by the data analysis performed on the resulting data.
At p. 19, par. 4, Applicant submits that the ordered combination of steps, including acquisition, preprocessing, matrix construction, and iterative weighting, also amounts to significantly more than any alleged abstract idea under Step 2B.
It is respectfully submitted that this is not persuasive. MPEP 2106.05(d) sets forth that, at Step 2B, it is the additional elements which are examined to determine whether they are well-understood, routine, conventional activities previously known to the industry. The analysis at Step 2A, Prong 2, considers the claims as a whole, i.e., the additional elements in combination with the judicial exceptions (see MPEP 2106.05(a)), although the integration or improvement provided in the claim must flow from the additional elements and not the judicial exceptions to be considered persuasive. However, Step 2B requires examining only the additional elements, either alone or in combination with one another, for conventionality. An “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself (Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)). The limitations pointed to be Applicant (preprocessing, matrix construction, and iterative weighting) are considered to recite a judicial exception as described above and are therefore not considered at Step 2B. The data gathering step of acquisition is found in the above rejection to be conventional in the field, and does not provide an inventive concept.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANNA NICOLE SCHULTZHAUS whose telephone number is (571)272-0812. The examiner can normally be reached on Monday - Friday 8-4.
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/JANNA NICOLE SCHULTZHAUS/Examiner, Art Unit 1685
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