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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 June 2026 has been entered.
Claims 1-9 and 20 are withdrawn; claims 10-19 are pending.
Response to Arguments
Applicant’s arguments, see “Remarks”, filed 29 June 2026, with respect to the rejection under 35 USC 101 as directed to an abstract idea without significantly more have been fully considered and are persuasive. The rejection of claims 10-19 has been withdrawn.
However, Applicant's arguments filed 29 June 2026, with regards to the rejection of claims 10-19 under 35 USC 101 as encompassing a human organism have been fully considered but they are not persuasive. The Applicant argues (pages 19-20, “Remarks”):
Section 33(a) is directed to claims that are themselves human organisms, such as human embryos and clones; it is not directed to system claims that merely refer to a person in describing the source of input data... Taken as a whole, claim 10 is a server-based signal-processing system; it is not a person. The phrase "manually annotated by respective annotation personnel" describes the provenance of the training data, namely, how the local activation time annotations came into existence before being received by the remote server. The personnel are not elements of the claimed system; they are the historical source of the annotations. A system claim that recites receiving "user input" does not thereby claim the user, and a method claim that recites a "sample obtained from a patient" does not thereby claim the patient. Likewise, claim 10's reference to annotation personnel as the source of historical annotations does not bring the personnel within the scope of the claim. The claimed invention as a whole is the server-based signal-processing system, not a human organism.
The Examiner respectively disagrees with this assessment. The claims explicitly require the manual annotation by one or more annotation personnel as part of the inventive system. The claims should be amended to specify that is the collected data that is sent to the server, not the manual annotations, to preclude the system as encompassing a human or humans as part of the inventive system.
Claim Rejections - 35 USC § 101
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 10-19 rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 10 requires “annotation personnel” throughout the claim. As previously noted, these personnel explicitly refer to humans in the Specification of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH L MALAMUD whose telephone number is (571)272-2106. The examiner can normally be reached Mon - Fri 1:00-9:30 Eastern.
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/DEBORAH L MALAMUD/Primary Examiner, Art Unit 3792
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