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 .
DETAILED ACTION
Response to Amendment
1. Claims 1-3, 5, 6, 8, 10-16 and 18-21 have been amended and claims 7 and 17 canceled as requested in the amendment filed on February 12, 2026. Following the amendment, claims 1-6, 8-16 and 18-21 are pending in the instant application.
2. Claims 1-6, 8-16 and 18-21 are under examination in the instant office action.
3. Any objection or rejection of record, which is not expressly repeated in this action has been overcome by Applicant’s response and withdrawn.
4. The Declaration of Brett J. Kagan under 37 CFR 1.132 filed February 12, 2026 is sufficient to overcome the rejection of claims 1-6, 8-16 and 18-21 based upon 112(a), enablement.
5. Applicant’s arguments filed on February 12, 2026 have been fully considered but found to be not persuasive for reasons set forth below.
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.
6. Claims 1-6, 8-16 and 18-21 stand 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.
7. Claims 1 and 18 stand vague and ambiguous essentially for reasons of record in section 3-5 and 16 of Paper mailed on August 14, 2025.
Applicant traverses the rejection at pp. 8-10 of the Response. Specifically, Applicant argues that, “the cognitive function as claimed is representative of the collective ability of neurons to perform a task, and not individual neuron function. This is consistent with the specification's discussion of training "groups or clusters of neurons" to perform tasks.” Applicant submits that the claims have been amended “to provide further clarity by now reciting "testing properties of a first plurality of in vitro neurons that correlate to cognitive function." Applicant further explains that, “claim 1 has been amended to recite that first and second values are determined based on "a degree of success" of the neurons in performing a task. The specification supports this language, explaining that "[t]he degree of success of the trained neurons to perform the task may be representative of a cognitive function of the neurons" and providing concrete examples such as "an amount of time that the neurons are able to play the game before the game ends and/or a level of the game that can be reached by the neurons." Specification, paragraph [0015].” Finally, Applicant argues that, “claim 1 has been amended to recite "training a first plurality of in vitro biological neurons to perform a task related to a problem-solving or decision-making interaction with a virtual environment." The amendment clarifies the nature of the "task" by specifying that it relates to a problem-solving or decision-making interaction with a virtual environment. […] The task may be an interactive task that requires problem solving and/or decision making." Id. Accordingly, the amended claim language clarifies the nature of the task that the in vitro biological neurons are trained to perform.” Applicant’s arguments have been fully considered but found to be not persuasive for reasons that follow.
As explained earlier, one of the purposes of the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is to provide a clear warning to others as to what constitutes infringement of the patent (see, e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d 1565 (Fed. Cir. 1986) (citations omitted).
MPEP 2171 makes it clear that, “Two separate requirements are set forth in 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, namely that:
(A) the claims must set forth the subject matter that applicants regard as their invention; and
(B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant.
The first requirement is a subjective one because it is dependent on what the applicants for a patent regard as their invention. The second requirement is an objective one because it is not dependent on the views of applicant or any particular individual, but is evaluated in the context of whether the claim is definite — i.e., whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art,” (emphasis added).
Next, MPEP § 2111 Claim Interpretation; Broadest Reasonable Interpretation, states,
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” (The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard:
The Patent and Trademark Office (“PTO”) determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004)). See also, In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Applicant always has the opportunity to
amend the claims during prosecution, and broad interpretation by the examiner reduces
the possibility that the claim, once issued, will be interpreted more broadly than is
justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA
1969).
Further, MPEP § 2111.01 Plain Meaning, states
“[Although] claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).
MPEP § 2111.01, II states that It Is Improper to Import Claim Limitations from the Specification. "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
In the instant case, claim 1, as presented, encompasses “a method of testing properties of a first plurality of in vitro neurons that correlate to cognitive function,” without providing any definitive support as what stand for any property that correlates to any specific cognitive function. The claim further recites “training a first plurality of in vitro neurons to perform a task related to a problem-solving or decision-making interaction with a virtual environment;” however fails to recite any specific, objective and repeatable steps that supports the “training.” Next, the claim does not impose any meaningful limitation on “a first value” and “a second value” of “plurality of neurons.” It is not even clear what units are assigned to measure the “value.” Finally, “a degree of success […] in performing the task,” as explained by Applicant appears to be defined by reference to cognitive function, which by itself lacks clear definition when applied to a group of cells in culture. The Examiner maintains that claim 1, as written, stands vague and ambiguous for failing to delineate the invention described therein.
8. Claims 2-6, 8-16 and 19-21 are indefinite for being dependent from indefinite claims.
Applicant is advised that amendment of claims 1 and 18 to include the specific elements and steps of the dependent claims 2-6, 8-16 and 19-21, respectively, would obviate this rejection. For instance, claim 2 recites a specific microelectrode array that allows, as in claim 3, to practice steps related to training and performing tasks wherein the steps are defined by reference to applying electrical or optical impulses followed by objective steps of measuring signals outputs.
Conclusion
9. No claim is allowed.
10. 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 OLGA N CHERNYSHEV whose telephone number is (571)272-0870. The examiner can normally be reached 9AM to 5:30PM, Monday to Friday.
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, Jeffrey Stucker can be reached at (571)272-0911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA N CHERNYSHEV/ Primary Examiner, Art Unit 1675
March 3, 2026