DETAILED ACTION
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 .
Amendments to the claims are acknowledged.
Claim Objections
Regarding claim 1, line 4, “… a light signal is representative…” should be “… a light signal representative…” or “… a light signal that is representative…”
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, 2, 4-13 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The judicial exceptions are for subject matter that has been identified as the ‘‘basic tools of scientific and technological work,’’ which includes ‘‘abstract ideas’’ such as mathematical concepts, certain methods of organizing human activity, and mental processes; as well as laws of nature and natural phenomena. Only when a claim recites a judicial exception does the claim require further analysis in order to determine its eligibility. The groupings of abstract ideas contained in this guidance enable USPTO personnel to more readily determine whether a claim recites subject matter that is an abstract idea.
The examiner further notes that, in this instance, the subject matter recited in claims 1, 2, 4-13 and 18-20 has a statutory tie to a machine (the recited generic plasmonic detector, mobile phone, etc.).
Note: As evidenced by: [0037]: WO2012/024006, which is incorporated by reference by applicant, the plasmonic detector recited in claim 2 is not a specific plasmonic detector at the time of the invention and is not a specific plasmonic detector to the invention as currently claimed.
However, the Court (Alice Corporation Vs CLS Bank) determined that an instruction to apply abstract idea using some unspecified generic device(s) is not patent-eligible.
** Inclusion of the recited generic device(s), is/are not considered significantly more.
The claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claims are determined to be directed to an abstract idea.
Regarding claims 1, 2, 4-13 and 18-20, the claimed inventions are directed to purely data gathering/generating/processing without significantly more. The claims recite nothing but data gathering; processing data; and merely making a report based on the processed data. The claims do not include any practical applications. An image, i.e.: the generic image recited in the claim, is merely directed towards data (in this case, according to the specification, an image is a digital image).
In fact, applicant has deleted “the monitoring of the health condition of a subject” aspect of the invention.
None of the claims recites anything integrated into a practical application with significantly more. As currently presented claims are all about data gathering; processing data; and merely making a report based on the processed data, which is/are not integrated to any practical applications.
The examiner notes that such inventions were ineligible even before the Bilski/Alice decisions. See for instance: In re Grams, 888 F2d 835 (Fed Cir. 1989); In re Walter, 618 F2d 758 (Fed Cir. 1980); and In re Abele and Marshal, 684 F2d (Fed Cir. 1982).
The judicial exception is not integrated into a practical application because instant claims are about purely data gathering and generating another data (processing) for making a report without significantly more. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. An image, i.e.: the generic image recited in the claim, is merely directed towards data (in this case, according to the specification, an image is a digital image).
Processes are eligible for patent protection under 35 U.S.C. § 101 if they are not directed to an abstract idea. See Bilski v. Kappos, 95 USPQ2d 1001 (U.S. 2010) (clarifying the standards for subject matter eligibility). Based upon consideration of all the relevant factors with respect to the claim as a whole, they are deemed to claim an abstract idea and are rejected under § 101. The claims are directed to the abstract idea of collecting data and generating output data for making a report (mere statement of purpose).
Nominal recitations of structure in an otherwise ineligible method fail to make the method a statutory process. Gottschalk v. Benson 409 U.S. 63, 70-72 (1972). The claims also do not transform any article into a different form; rather, they only generate and display purely abstract data elements. Thus, there is no clear evidence from which to conclude that the claims are not principally drawn to an abstract idea.
The examiner recommends amending the claim to require that the problem-solving aspects of the claim (i.e., significant and specific data manipulations; rather than mere generic data inputting, receiving, transmitting, outputting, controlling an apparatus, etc.) are performed by a particular machine in order to overcome this rejection.
In order for a method to be considered a "process" under §101, a claimed process must either: (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials).
If neither of these requirements is met by the claim, the method is not a patent eligible process under §101 and is non-statutory subject matter. Note that the tie to another statutory class should be in the body of the claim, and substantive.
The examiner respectfully reasserts that the instant claims are drawn only to an abstract/conceptual process that only manipulates, what appears to be a set of data (the image) and making mere report, therefore, are not directed to statutory subject matter. There is nothing that can be considered “significantly more” recited in the claims.
The claimed subject matter is not limited to a particular/specific process (application), apparatus or machine.
None of the claims recite what specific variables/objectives are tied to the recited generic variables and manipulation, or what specific controlled variables identify the process variables/objective.
Insignificant extra-solution activity (merely making report) in the claimed subject matter will not be considered sufficient to convert a process that otherwise recites only mental steps into statutory subject matter. The examiner respectfully reasserts that the instant claims are drawn only to an abstract/conceptual process that only manipulates, what appears to be a set of generic data not specific to anything other than analyte and, therefore, are not directed to statutory subject matter. There is nothing that can be considered “significantly more” recited in the claim.
As currently presented, none of the dependent claims cures the deficiencies.
Regarding claim 1, the claim does not set forth any specific environment in which the claimed process is applied.
Claims 1, 2, 4-13 and 18-20 are all purely directed towards data gathering and data manipulation. The examiner notes that claim 1 does not even involve any data manipulation (other than processing an image, which is an inherent procedure in image producing detector device.)
None of the claim limitations recite any generic or specific environment in which the claimed method is being applied. The data gathering, per se, is not considered an invention. An image, i.e.: the generic image recited in the claim, is merely directed towards data (in this case, according to the specification, an image is a digital image).
Claims 1, 2, 4-13 and 18-20 recite nothing but data gathering and simple data manipulations using unspecified process. The claim does not actually perform any specific mathematical procedure; and/or any specific practical application. Claims 1, 2 and 4-13 simply recite generic or applicant’s nomenclature for variables related to image processing and making a report.
In another words, claims recite nothing but data gathering and manipulation. Again, data gathering/conversion (image processing), per se; or a combination of data conversion and data transmitting, is not considered an invention
The claim recites no practical applications of the claimed process.
The claim is directed towards a mere statement of a general concept and the claims are generally directed towards an abstract idea. It appears that both known and unknown uses of the claimed concept are covers and can be performed though any existing or future-devised machinery or even without any apparatus. In addition, use of the claimed concept would effectively grant a monopoly over the concept.
The claim is merely directed towards data gathering and simple manipulation. None of the limitations recited in none of the claims can be considered significantly more because the claims recite nothing about industrial/medical applicability and the claims are purely about data gathering/manipulation by generic computer devices.
A simple mere field-of-use recitation in the preamble/claim (the implied application of the report) is insufficient to render an otherwise ineligible method claim patentable.
As to claim 19, the examiner requires applicant amend claim 19 and insert “non-transitory” before "computer readable medium."
Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance explains that the judicial exceptions are for subject matter that has been identified as the ‘‘basic tools of scientific and technological work,’’ which includes ‘‘abstract ideas’’ such as mathematical concepts, certain methods of organizing human activity, and mental processes; as well as laws of nature and natural phenomena.
The examiner considered the revised 2A portion of the 101 guidance chart in view of the claim. The examiner submits that mere inclusion of a device (simply labeled “a signal enhancing,” and not including any specific devices being used in any specific ways) does not render the claims as presented patent eligible. The claims as presented does not clear prong 2 of 2A (or 2B). The submits that the claims are directed towards abstract idea and that claims do not recite any elements that amount to significantly more than the judicial exception.
The insignificant extra-solution activity will also not transform an unpatentable principle into a patentable process. A specific machine or particular transformation of a specific article in an insignificant step, such as data gathering; or reporting is not sufficient to pass the machine or transformation test.
It is noted that in the Bilski case (Oct 08), the Court may have rejected other, previous tests, including the “useful, concrete and tangible result” formulated by the Federal Circuit in its 1998 State Street Bank decision, which opened the door to patent protection for business methods. However even though previous cases have used a now rejected test, the Bilski Court stated that the results of these cases are consistent with the new “machine-or-transformation” test.
The instant claims are drawn only to an abstract process that only generate, what appears to be a set of data generation and manipulating the generic data based on other generic parameters; and the generic data themselves, therefore, are not directed to a statutory subject matter.
From the Example of the Abstract Idea:
The examiner notes that in the Diamond v. Diehr situation (one of few examples of exemplified patent eligible/no-eligible subject matter found in the USPTO memoranda), the claim includes a step of actually performing something concrete (other than generating a mere value/number) in view of the arithmetic performed by the algorithm. Thus the Diehr claim has a transformation.
In addition, although the Diehr claim includes an abstract idea, i.e. the Arrhenius equation, the claim has additional features directed towards: curing rubber, constantly determining the temperature and doing calculations, and opening the press (the transformation and the opening step tied into the calculation step clearly being significantly more).
The Arrhenius equation is part of a looped process where the temperature is issued to calculate the extent the rubber has cured and it is an integral part of the claimed process. The algorithm in the Diehr claim is not simply a single calculation and/or comparison which would be nothing more than a post solution activity or merely applying the result of the calculation.
In the instant case, simply making a report of data gathering can be considered the insignificant extra-solution activity; and/or a simple mere field-of-use recitation. Claims basically recites that the data is defined/gathered; and manipulation is made based on the gathered data. Such claims are not considered patentable subject matter.
Note: 2106.05(b) Particular Machine [R-07.2022]
When determining whether a claim integrates a judicial exception, into a practical application in Step 2A Prong Two and whether a claim recites significantly more than a judicial exception in Step 2B, examiners should consider whether the judicial exception is applied with, or by use of, a particular machine. "The machine-or-transformation test is a useful and important clue, and investigative tool” for determining whether a claim is patent eligible under § 101. Bilski v. Kappos, 561 U.S. 593, 604, 95 USPQ2d 1001, 1007 (2010).
It is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility. Id.
All claims must be evaluated for eligibility using the two-part test from Alice/Mayo. If a claim passes the Alice/Mayo test (i.e., is not directed to an exception at Step 2A, or amounts to significantly more than any recited exception in Step 2B), then the claim is eligible even if it fails the machine-or-transformation test ("M-or-T test"). Bilski v. Kappos, 561 U.S. 593, 604, 95 USPQ2d 1001, 1007 (2010) (explaining that a claim may be eligible even if it does not satisfy the M-or-T test); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) (“[T]here is nothing that requires a method ‘be tied to a machine or transform an article’ to be patentable”).
** And if a claim fails the Alice/Mayo test (i.e., is directed to an exception at Step 2A and does not amount to significantly more than the exception in Step 2B), then the claim is ineligible even if it passes the M-or-T test. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014) (“[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept.'”).
II. WHETHER THE MACHINE OR APPARATUS IMPLEMENTS THE STEPS OF THE METHOD
Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. See CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) ("We are not persuaded by the appellant's argument that the claimed method is tied to a particular machine because it ‘would not be necessary or possible without the Internet.’ . . . Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method"). For example, as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”).
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-13 and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the processed detector output." There is insufficient antecedent basis for this limitation in the claim. It is unclear what is being referenced by the limitation.
Claim 9 recites the limitation "the processed detector output." There is insufficient antecedent basis for this limitation in the claim. It is unclear what is being referenced by the limitation.
Regarding claim 11, it is unclear what is being referenced by the limitation: “the detector output.” Does applicant mean the processed image, or applicant means something else. It is unclear what is being referenced by the limitation.
Applicant has amended claim 1. The dependent claims should be amended in accord with the amendments made in claim 1.
The examiner omits raising similar formality issues (e.g.: the similar article issue and the antecedent basis issue in claim 7.).
Regarding claim 19, the recitation "a hand held device" renders the claim unclear, because it is not clear if it is referencing the hand held device recited in claim 18 or applicant mean something else? What hand held device is being referenced by the recitation?
Similar rationale applies to claim 20. Which one of the hand held device is being referenced by the recitation: “the hand held device?”
Claims 1, 2, 4-13 and 18-20 recite nothing but data gathering and simple data manipulations using unspecified process. The claim does not actually perform: any specific procedure; and/or any specific practical application. Claims 1, 2 and 4-13 simply recite generic or applicant’s nomenclature for variables related to image processing and making a report. Making report, per se, is not considered an invention. It is unclear what applicant is claiming as the invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4-13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chou (WO2012/024006: which is incorporated by reference in the specification by applicant. See [0037] of the instant application: Examples of signal enhancement by ***nanoplasmonic effects is described, e.g., in WO2012/024006).
Regarding claims 1, 2, 4-13 and 18-20, Chou discloses (entire disclosure and figures) a method for processing optical signals, i.e.: processing images, the method involves: Microstructures and nanostructures (*** 100, plasmonic detector) consisting of a substrate (110), an array of pillars (120) capped by metallic disc (130), metallic dots (clusters or granules) (140) disposed on the sidewalls of the pillars, and a metallic backplane (150) that can interact to enhance a local electric field, the absorption of the light, and the radiation of the light (abstract).
Chou further discloses applications of the structures to enhance the optical signals in the detection of molecules and other materials on a structure surface, such as fluorescence, photoluminescence and surface enhanced Raman Scattering (id.).
[0008] FIG. 1A shows an example structure of Disc-Coupled Dots-on-Pillar Antenna-Array (D2PA), consisting of dense 3D cavity nanoantennas in the form of a SiO2 pillar array with a metal disc on top of each pillar, a metal backplane on the foot of the SiO2 pillars, and metallic nanodots on the SiO2 pillar sidewalls, all coupled through nanogaps.
The examiner notes that signal enhancing protocol was well known in the art at the time of invention/filing. See for instance: US 4878254; and US 3193771. Use of known technique to improve similar devices would have been obvious because the technique for improving a particular class of devices was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.
Chou does not explicitly disclose: “generating a report…” However, making a report for use in presenting results is a routine practice in science. It is inherent or at least obvious that the report is made in view of the analysis disclosed by Chou.
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
Response to Arguments
Amendments to the claims are acknowledged. The examiner notes that the scope of the claim has been mainly broadened and partially narrowed.
Applicant's arguments have been fully considered but are moot in view of the new ground(s) of rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHOGO SASAKI whose telephone number is (571)270-7071. The examiner can normally be reached on Monday-Thursday 10:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached on 5712707698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHOGO . SASAKI
Primary Examiner
Art Unit 1798
/SHOGO SASAKI/Primary Examiner, Art Unit 1758 2/7/2026