DETAILED ACTION
This action is a response to the filing on 10/21/2025. Examiner acknowledges the amendments made to claims 1-20 and the addition of new claims 21-22.
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 .
Response to Arguments
Applicant’s amendments have overcome the previous 112 rejections.
Applicant's arguments regarding the 101 and prior art rejections filed 10/21/2025 have been fully considered but they are not persuasive.
In regards to the 101 rejections Applicant argues that the claim, as amended, as a whole recites an improvement. Examiner disagrees. The spot-scanning, accessing, and storing steps can still be considered as extra-solution activity and the determining steps can still be considered as mental processes. The current mention of planning radiation treatment reads like an intended result or a future step that has not been executed, which makes the amendment not cross the line to be significantly more than the abstract idea.
Amending the claims in a manner that describes the pattern being used in the radiation treatment plan that is stored in memory, would be considered as significantly more as that would change the operation of the machine when executed.
In regards to the prior art rejections, Applicant’s amendments have overcome the previously applied prior art rejection of claims 1 and 8. However, claim 14 does not have the limitations of claim 1 or 8 that the overcomes the applied art. Specifically, claim 14 does not state the spacing in the pattern of spots being based on the physical dimensions (claim 1) or that the density of the spots is based on the area (claim 8).
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.
Claim 22 is 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 22 has no transitional phrase. The claim is directed to a machine but only recites process steps. This makes the claim unclear and indefinite because as currently written, the machine has no structural components so one cannot tell if the claim is supposed to be a method.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
An analysis of claims 1, 8, and 14 are as follows:
Step 2A, Prong 1: Claims 1, 8, and 14 recite methods or systems that implement a method where the method implements one or more determining steps. The determining steps can be considered as a mental process.
Step 2A, Prong 2: The method also includes spot scanning, accessing, and storing steps. However, these steps can be considered as extra-solution activity to the judicial exception. The spot scanning step and accessing step can be considered as mere data-gathering and the final step of storing the pattern information based on the determining does not add a meaningful limitation to the process of determining patterns. Claims 1, 8, and 14 recite additional components of a processor and/or memory, but the components are specified at such a high level of generality that it merely is the abstract idea implemented on a generic computing device. None of the additional limitations integrate the abstract idea into a practical application as the abstract idea is not being used to improve a technology or provide a particular treatment or prophylaxis, such as the information being stored for a radiotherapy machine for beam therapy on a patient. Storing the pattern does not make any improvement as the pattern is not being claimed to be applied to the radiation treatment plan such as what is described in figure 7 of Applicant’s specification.
Step 2B: As noted in Step 2A, Prong 2, The additional components do not include components that are considered more than the abstract idea. The methods do not require a particular machine, and the computer components are specified at a high level of generality. The accessing and storing steps can be considered as extra-solution activity to the judicial exception. The accessing step can be considered as mere data-gathering and the final step of storing the pattern information based on the determining does not add a meaningful limitation to the process of determining patterns. Thus, the claim limitation merely amounts to an abstract idea implemented on a generic computing device. The additional limitations do not integrate the abstract idea into a practical application as the abstract idea is not being used to improve a technology or provide a particular treatment or prophylaxis. As noted in Step 2A, Prong 2 above, the pattern is not being claimed to be applied to the radiation treatment plan such as what is described in figure 7 of Applicant’s specification. The application of the pattern to the radiation treatment plan could be considered as significantly more than the abstract idea as it would now modify the operation of the machine.
Claims 2-7, 9-13, and 15-21 do not recite additional components that can be considered more than the abstract idea as they either further limit the mental process/abstract idea or introduce more abstract ideas/mental processes.
For the claim 22, the presence of the radiotherapy machine that uses the abstract idea overcomes the 101 rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0090894 (Zwart et al., hereinafter Zwart).
In regards to claim 14, Zwart discloses a particle beam system (title and abstract). The device includes a processor/processing device (paragraphs 14-27, 71, 73, 95, 185-188) and memory/non-transitory computer readable media (paragraphs 16, 23, 27, 73, 185, and 188) coupled to the processor and contains the instructions for a method. Zwart discloses performing spot scanning of a treatment target (paragraphs 10-14, 25, 77, 94, and 100). The method comprises the following steps:
accessing a description of the treatment target in which the treatment target is separated into at least a first region (144 perimeter region with smaller spots 145) and a second region (interior region with larger spots 146), first physical dimension of the first region is different than the second physical dimensions of the second region (paragraph 99; figure 19; first and second regions have different lengths and widths, thus meeting the different physical dimension limitation);
determining a first pattern and density of spots (145) inside the first region, and determining a second pattern and density of spots inside the second region (146), wherein an amount of spacing and density between the spots in the first pattern is based on the dimensions of the first region, and wherein an amount of spacing and density between the spots in the second pattern is based on the dimensions of the second region and the second density is different than the first density (paragraph 99; figure 19; Note that the claim does not specify any guidance as to how to spacing or density of spots occurs.); and
storing, in the memory, the first pattern of spots and the second pattern of spots (paragraphs 16, 23, and 27 – the storage of the treatment plan can be considered as storing patterns of spots).
In regards to claims 15 and 16, Zwart discloses the limitations of claim 14. It can also be seen in the drawings that the first region (the perimeter border section) has a smaller area and is narrower than the second region (the interior is wider that the perimeter border section) and that the spacing/density between the spots in the first pattern is less than the spots in the second pattern.
Conclusion
The examiner notes that, though no art has been applied against claims 1-13 and 17-22 at this time, they are not presently allowable. The question of prior art will be revisited upon resolution of the numerous issues noted above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA DARYL DEANON LANNU whose telephone number is (571)270-1986. The examiner can normally be reached Monday-Thursday 8 AM - 5 PM, Friday 8 AM -12 PM.
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/JOSHUA DARYL D LANNU/Examiner, Art Unit 3791
/CARRIE R DORNA/Primary Examiner, Art Unit 3791