DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive. At the outset, the Examiner notes that Applicant has amended the claims to overcome the rejections under 35 U.S.C. 112(b) detailed in the previous Office Action. However, in amending independent claim 1, Applicant has introduced a new limitation that does not comply with 35 U.S.C. 112(b). Specifically, the Examiner contends that the limitation “the form of light emitted by the test device” lacks antecedent basis in the claim. Claim 1 does not provide a prior recitation of the test device emitting light, thus the phrase “the form of light emitted by the test device” lacks antecedent basis. Additionally, it is unclear what “the form” represents as the claim does not define any ‘forms’ of light that are emitted by the test device. As such, the Examiner contends that the limitation “the form of light emitted by the test device” is indefinite. Applicant has also argued that the claims are directed to eligible subject matter, and should not be rejected under 35 U.S.C. 101. The Examiner respectfully disagrees. The Examiner contends that independent claim 1 recites an abstract idea in that the claim is directed to performing a mental process on a generic computer, or using a computer as a tool to perform a mental process. The steps of evaluating data, identifying minimum and maximum peaks, and forming a derivative data set based on positive and negative peaks can all be performed in a person’s mind, or with a pen and paper. As set forth in the MPEP, performing a mental process on a generic computer, or using a computer as a tool to perform a mental process does not denote eligible subject matter (MPEP 2106.04(a)(2) III C). The Examiner also notes that the abstract idea is not integrated into a practical application as the claim does not recite any practical steps being performed after the abstract idea. Additionally, the Examiner contends that the limitations regarding the processor, test device, detector, and illumination source are presented at a high level of generality such that any system comprising a processor, test device, detector, and illumination source meets the claim limitations. As such, the Examiner contends that the limitations of claim 1 do not amount to significantly more as they are directed to structural elements that are presented at a high level of generality. Given this view, the Examiner maintains that the claims are directed to a judicial exception without significantly more. For the sake of brevity, the Examiner has limited to arguments to independent claim 1, but notes that the rationale also holds true for the dependent claims.
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, 5-10, and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) an abstract idea in that the claims recite mental processes that can be performed on a generic computer, via pencil and paper, or in a person’s mind. Independent claim 1 recites a processor comprising software that directs an apparatus to generate a one-dimensional data array, evaluate data in the one dimensional data array, identify minimum and maximum peaks corresponding to a reference line, and forming a derivative data set based on positive and negative peaks in the derivative dataset. The Examiner contends that these limitations are directed to performing a mental process on a generic computer, or using a computer as a tool to perform a mental process. The steps of evaluating data, identifying minimum and maximum peaks, and forming a derivative data set based on positive and negative peaks can all be performed in a person’s mind, or with a pen and paper. As such, these limitations are all abstract ideas (MPEP 2106.04(a)(2) II C). The step of generating a one-dimensional data step can be considered as an abstract idea, or a mathematical concept which is also an abstract idea (MPEP 2106.04(a)(2). In light of these views, the Examiner contends that claim 1 clearly recites an abstract idea. This judicial exception is not integrated into a practical application because the claim does not recite any practical steps being performed after the abstract ideas. Independent claim 1 does not recite any steps taken after the derivative data set based on positive and negative peaks is formed, thus the claim does not recite a practical application of the judicial exceptions recited in the claim. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of the claim are directed to structural elements that are presented at a high level of generality. The MPEP stats that “a general purpose computer that applies a judicial exception, such as an abstract idea, by use of a convention computer functions does not qualify as a particular machine” (MPEP 2106.05(b). Independent claim 1 recites a system comprising an apparatus, a processor, and a test device wherein the apparatus further comprises a detector and an illumination source. The structural elements of claim 1 are presented at a high level of generality such that any system comprising a processor, test device, detector, and illumination source meets the claimed limitations. As such, the additional limitations of independent claim 1 do not amount to significantly more as they are directed to structural elements that are presented at a high level of generality. Therefore, based on the rationale detailed above, the Examiner contends that independent claim 1 is directed to a judicial exception without significantly more, thus the claim does not comply with 35 U.S.C. 101. For the sake of brevity, the Examiner has detailed the rejection with respect to claim 1, but notes that the rationale also holds true for the dependent claims.
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 DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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