DETAILED ACTION
This application is being examined under AIA first-to-file provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.114. MPEP 706.07(h) pertains.
Status of claims
Canceled:
3-4 and 12
Pending:
1-2, 5-11 and 13-22
Withdrawn:
none
Examined:
1-2, 5-11 and 13-22
Independent:
1, 11 and 17
Allowable:
none
Rejections applied
Abbreviations
x
112/b Indefiniteness
PHOSITA
"a Person Having Ordinary Skill In The Art before the effective filing date of the claimed invention"
112/b "Means for"
BRI
Broadest Reasonable Interpretation
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
x
102, 103
JE
Judicial Exception
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
101 Other
N:N
page:line
x
Double Patenting
MM/DD/YYYY
date format
Priority
As detailed on the 1/27/2022 filing receipt, this application claims priority to at least 8/28/2019. At this point in examination, all claims have been interpreted as being accorded this priority date.
IDS
The 4/22/2026 IDS has been considered.
Claim objections
Claim 1, 7-11 and 17 are objected to because of the following informalities. Appropriate correction is required. In each objection the claims are definite with respect to the issues cited here because interpretation would have been sufficiently clear to PHOSITA, but nonetheless the claims are objected to for consistency among the claims or as otherwise indicated. With regard to any suggested amendment below to overcome an objection, in the subsequent examination it is assumed that each amendment is made. However, equivalent amendments also would be acceptable. Any amendments in response to the following objections should be applied throughout the claims, as appropriate.
The following issues are objected to:
Claim
Recitation
Comment
1
b generating
It appears that a period is needed after the "b" marking step b.
1,7-11 and 17
The 2/26/2026 amendment presents font annotating changes which is not amenable to character recognition, i.e. the change tracking font does not scan.
The format of the claims amendment does not comply with 37 CFR 1.52(a)(1)(iv-v):
"(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
"(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition."
The font for the changed recitations should be the same as the font for unchanged recitations, except that underlining, strikethrough, etc. should be used per MPEP 714.II.C. Generally, "Legibility includes ability to be... scanned so that... paper can be electronically reproduced by use of digital imaging and optical character recognition" (MPEP 608.01.I."Paper Requirements," 2nd to last para.).
This objection may be overcome by filing a new amendment entering and therefore no longer tracking the 2/26/2026 changes and tracking any new changes in legible font.
Claim rejections - 112/b
The following is a quotation of 35 USC 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.
Claims 1-2 and 9-10 are rejected under 112/b, as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted, and any amendments in response to the following rejections should be applied throughout the claims, as appropriate. With regard to any suggested amendment below, for claim interpretation during the present examination it is assumed that each amendment suggested here is made. However equivalent amendments also would be acceptable.
The following issues cause the respective claims to be rejected under 112/b as indefinite:
Claim
Recitation
Comment (suggestions in bold)
1
...the operations comprising: ...
Claim 1 recites a list of steps a. through e., however the list lacks a grammatical conjunction such that the relationships among the steps is unclear, e.g. as to "and" vs. "or."
Claim rejections - 35 USC 103
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 USC 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 USC 102(b)(2)(C) for any potential 35 USC 102(a)(2) prior art against the later invention.
Claims 1-2, 5-11 and 13-22
Claims 1-2, 5-11 and 13-22 are rejected under 35 USC 103 as unpatentable over Chafin (as cited on the 1/18/2022 IDS).
Regarding claim 1, the recited acquiring FTIR mid-infrared absorption spectra and averaging read on Chafin's claims 1, 25, 28 and 31-32; Fig. 3; p. 3, last para.; p. 9, 1st para.; p. 16, 2nd para.; p. 25, 1st para. and the entire document.
The recited trained fixation estimation engine and deriving fixation features read on Chafin's "unsupervised" and "supervised" "classification" at p. 16-17 and the entire document.
The recited determining fixation duration and fixation state suitability read on Chafin's "Fixation analysis" (Chafin: §III; and entire document).
The art is similarly applied to claims 2 and 5-7.
Regarding claim 8, Chafin teaches averaging and normalization (Chafin: p. 25, 1st para.; p. 26, last para.; and entire document).
Regarding claim 9, the recited dimensionality reduction reads on Chafin's principal
component analysis (Chafin: p. 25, 1st para.; and entire document).
Regarding claim 10, the recited neural network reads on Chafin's "artificial neural network" (Chafin: p. 17, 2nd para.; and entire document).
To the extent that the limitations of the claims throughout this rejection are not explicitly taught with the recited relationships and sequencing among limitations or are taught by different embodiments within the same reference as for example, then in the absence of a secondary consideration to the contrary it would have been prima facie obvious to PHOSITA to try the recited combination of limitations as those limitations are taught individually as described above. Trying the recited combinations would have been examples of combining prior art elements, in some instances elements taught within the same reference, according to known methods to yield predictable results and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143.I pertains).
The art is similarly applied to claims 11, 13-14 and 17-20.
Regarding claims 15-16, Chafin teaches use of "similar cellular samples (training spectra)" (Chafin: p. 17, last para.; also §III; and entire document). Also, it would have been prima facie obvious to try both same and different tissue types as an obvious to try choice from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143.I).
Regarding claim 21, Chafin teaches "wavelength range at which the quality signatures are found" (Chafin: p. 15, 2nd para.; and entire document).
Regarding claim 22, Chafin teaches "unstained" samples (Chafin: p. 25, 2nd para.; and entire document).
Nonstatutory double patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine to prevent the improper timewise extension of the "right to exclude" granted by a patent and to prevent multiple suits against an accused infringer by different assignees of the same invention (MPEP 804.II.B, 1st para.). A nonstatutory double patenting rejection is appropriate where the conflicting claims (instant v. reference) are not identical, but an examined-application claim (instant claim) is not patentably distinct from a reference claim because the instant claim is either anticipated by, or would have been obvious over, the reference claim (MPEP 804.II.B, 2nd para.).
In cases of double patenting rejections versus reference claims of pending applications, as opposed to claims of an issued patent, the rejections are provisional because the reference claims have not been patented. Presently, no rejections are provisional.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the application or patent of the reference claim either is shown to be commonly owned with the instant application or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must comply fully with 37 CFR 3.73(b).
Applicant may wish to consider electronically filing a terminal disclaimer (MPEP 1490.V pertains, along with https://www.uspto.gov/patents-application-process/applying-online/eterminal-disclaimer). Electronic filing may lead to faster approval of the disclaimer. Also, if filing electronically, Applicant is encouraged to notify the examiner by telephone so that examination may resume more quickly.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used.
A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double patenting rejections of instant claims 1-2, 5-11 and 13-22
Instant claims 1-2, 5-11 and 13-22 are rejected on the grounds of nonstatutory double patenting as unpatentable over one or more claims in reference application 15/965,748 in view of Chafin.
The reference application as well as the instant application recite claims which involve Fourier transform mid-infrared spectroscopic analysis of fixation state including machine learning.
Although the reference claims are not identical to the instant claims, in a BRI they also are not patentably distinct from the instant claims: either (i) because the instant claims recite obviously equivalent or broader limitations in comparison to the reference claims or (ii) because the instant claims recite limitations which are obvious over the cited art. It is not clear that the instant claims recite limitations which are narrower than limitations in the reference claims.
It would have been obvious in view of the cited art to modify reference claims to arrive at the rejected instant claims. Either the instant limitations are interpreted as reading on a reference limitation, or the instant limitations would have been obvious in view of the cited art. That is, to the extent that any instant claims are narrower than reference claims, then any such narrowing would have been obvious over the cited art.
Citations to art
In the above citations to documents in the art, rejections refer to the portions of each document cited as example portions as well as to the entirety of each document, unless otherwise noted in the situation of lengthy, multi-subject documents. Other passages not specifically cited within a document may apply as well.
Conclusion
No claim is allowed.
A shortened statutory period for reply is set to expire THREE MONTHS from the mailing date of this communication.
Inquiries
Information regarding the filing, management and status of patent applications which are published (available to all users) or unpublished (available to registered users) may be obtained from the Patent Center: https://patentcenter.uspto.gov. Further information is available at https://www.uspto.gov/patents/apply/patent-center, and information about filing in DOCX format is available at https://www.uspto.gov/patents/docx.
The Electronic Business Center (EBC) at 866-217-9197 (toll-free) is available for additional questions, and assistance from a Customer Service Representative is available at 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
The examiner for this Office action, G. Steven Vanni, may be contacted at:
(571) 272-3855 Tu-F 8-7 (ET).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Larry D. Riggs, II, may be reached at (571) 270-3062.
/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686
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