DETAILED ACTION
Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
Information Disclosure Statements
The IDSs filed have been considered.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 27 February 2026 is acknowledged. In view of a lack of search burden, Groups I and II are rejoined.
Claims 1-11 are pending and examined in the instant Office action.
Claim Rejections - 35 USC § 112(b) - Indefiniteness
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.
Claims 2-5 and 9 are 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.
The term “a relatively high accuracy” in claim 2 is a relative term which renders the claim indefinite. The term “relatively high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what threshold a substance meets the criterion of having a high level of accuracy. For the purpose of examination, it is interpreted that any substance meets the threshold of having a high level of accuracy.
The term “a relatively high accuracy” in claim 4 is a relative term which renders the claim indefinite. The term “relatively high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what threshold a substance meets the criterion of having a high level of accuracy. For the purpose of examination, it is interpreted that any substance meets the threshold of having a high level of accuracy.
The term “a relatively high accuracy” in claim 5 is a relative term which renders the claim indefinite. The term “relatively high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what threshold a substance meets the criterion of having a high level of accuracy. For the purpose of examination, it is interpreted that any substance meets the threshold of having a high level of accuracy.
In claim 9, it is unclear as to the meaning of the term “content rate of the element.” Since a spectrum is observed at a single moment of time, it is unclear as to the metes and bounds of a content rate of an element. For the purpose of examination, it is interpreted that a content rate of an element corresponds to an intensity of a peak in a spectrum.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea/law of nature/natural phenomenon without significantly more. Claims 1-10 are drawn to devices comprises processors, and claim 11 is drawn to a method.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1 : YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon (Step 2A, Prong 1). In the instant application, the claims recite the following limitations that equate to an abstract idea:
Claims 1 and 11 recite the mental step of reading out a substance library in which each of the types of substances is associated with characteristic of a substance.
Claims 1 and 11 recite the mental step of creating a library storing information relating to superclasses and subclasses.
Claims 1 and 11 recite the mental step of acquiring an intensity distribution spectrum.
Claims 1 and 11 recite the mental step of extracting analytes corresponding to components of the spectrum.
Claims 1 and 11 recite the mental step of estimating the type of substance from the subclasses based on the characteristic and the library.
Claims 1 and 11 recite the mental step of displaying the result.
Claim 2 recites the mental step of estimating a plurality of substances that are contained in the analyte.
Claim 2 recites the mental step of displaying the subclasses in descending order of accuracy.
Claim 3 recites the mental step of having a intermediate class that is between the superclass and the subclass.
Claims 4-5 recite the mental steps of forming substance libraries around standards.
Claim 6 recites the mental step if storing the superclass and a supplementary description related to the general term.
Claim 7 recites the mental step of displaying the superclass and supplementary information.
Claim 8 recites the mental step of generating an intensity distribution spectrum.
Claims 9-10 recite the mental steps of extracting characteristics and molecule structures of substances.
These recitations are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) and comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships. Therefore, these limitations fall under the “Mental process” and “Mathematical concepts” groupings of abstract ideas. Merely reciting that a mental process is being performed in a generic computer environment does not preclude the steps from being performed practically in the human mind or with pen and paper as claimed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then if falls within the “Mental processes” grouping of abstract ideas. As such, claim(s) 1-11 recite(s) an abstract idea/law of nature/natural phenomenon (Step 2A, Prong 1 : YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2). This judicial exception is not integrated into a practical application because the claims do not recite an additional element that reflects an improvement to technology or applies or uses the recited judicial exception to affect a particular treatment for a condition. Rather, the instant claims recite additional elements that amount to mere instructions to implement the abstract idea in a generic computing environment or mere instructions to apply the recited judicial exception via a generic treatment.
As such, these limitations equate to mere instructions to implement the abstract idea on a generic computer that the courts have stated does not render an abstract idea eligible in Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. As such, claims 1-11 is/are directed to an abstract idea/law of nature/natural phenomenon (Step 2A, Prong 2 : NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that equate to mere instructions to apply the recited exception in a generic way or in a generic computing environment.
The prior art of Kircher et al. [US PGPUB 2015/0018807 A1] teaches that devices used to obtain Raman spectra attached to interactive GUI displays are routine and conventional.
As discussed above, there are no additional limitations to indicate that the claimed analysis engine requires anything other than generic computer components in order to carry out the recited abstract idea in the claims. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. MPEP 2106.05(f) discloses that mere instructions to apply the judicial exception cannot provide an inventive concept to the claims. The additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the claims do not amount to significantly more than the judicial exception itself (Step 2B : No). As such, claims 1-11 is/are not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 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, 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 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vrabie et al. [Biomedical Signal Processing and Control, volume 2, 2007, pages 40-50] in view of Kircher et al. [US PGPUB 2015/0018807 A1].
Claim 11 is drawn to an analysis method for generating an intensity distribution spectrum by emitting a primary electromagnetic wave or a primary ray to an analyte and performing component analysis of the analyte based on the intensity distribution spectrum using an analysis device including storage. The method comprises reading out characteristics associated with the substance from a library. The library comprises superclasses, each of which represents a general term of the substance. The library also comprises subclasses representing types of a plurality of the substances belonging to the superclass. The method comprises acquiring the intensity distribution spectrum. The method comprises extracting characteristics included in the analyte as constituent components of the analyte based on the intensity distribution spectrum acquired in the acquisition step. The method comprises estimating the type of the substance from the subclasses based on the characteristic extracted in the extraction step and the substance library read out in the reading step. The method comprises displaying the type of the substance estimated from the subclasses in the estimation step and the superclass to which the type of the substances belongs to in a hierarchical manner.
Claim 1 is drawn to similar subject matter as claim 11, except claim 1 is drawn to a device comprising a processor.
The document of Vrabie et al. studies independent component analysis of Raman spectra and an application to paraffin-embedded skin biopsies [title]. Section 2.1 on page 41 if Vrabie et al. teaches the Raman spectrometer emitting an electromagnetic wave/primary ray to an analyte. Sections 3.2 and 3.3 on pages 42-43 of Vrabie et al. teach performing component analysis of the analyte based on intensity distribution of the spectrum using data analysis. Section 2.1 on page 41 if Vrabie et al. teaches a library of three superclasses comprising skin, paraffin, and calcium fluoride. The peaks in Figure 1 on page 43 of Vrabie et al. teach subclass of the superclass of skin. Figure 1 on page 43 of Vrabie et al. also teaches the acquisition of an intensity distribution spectrum with the peaks of Figure 1 of Vrabie et al. illustrating constituent components of the analyte based on the intensity distribution spectrum. Table 1 on page 47 of Vrabie et al. lists an estimation of types of substances based on the wavenumber location of the peaks in a hierarchical manner.
While Figure 1 of Vrabie et al. displays spectra, Vrabie et al. does not teach all of the computer and display hardware limitations of the claims.
Kircher et al. teaches Raman-triggered ablation/resection systems and methods [title]. The cover figure of Kircher et al. illustrates the computer with the Raman scanner electronics and laser. Figure 32 of Kircher et al. illustrates the GUI display with icons.
With regard to claims 2-5, Table 1 on page 47 of Vrabie et al. illustrates a substance estimator comprising standards estimating the molecular structure of a compound with a Raman peak at the listed wavenumber. The last paragraph in Section 4.1 on page 44 of Vrabie et al. lists singular values in the order of decreasing accuracy. Since the abstract of Vrabie et al. teaches that the Raman spectra measure subclasses of analytes in the superclass of skin, the intermediate class corresponds to whether the skin biopsy is healthy or diseased. The cover figure of Kircher et al. illustrates the computer with the Raman scanner electronics and laser. Figure 32 of Kircher et al. illustrates the GUI display with icons.
With regard to claims 6-7, the text accompanying the figures in Vrabie et al. displaying spectra are supplementary descriptions. The cover figure of Kircher et al. illustrates the computer with the Raman scanner electronics and laser. Figure 32 of Kircher et al. illustrates the GUI display with icons.
With regard to claim 8, Figure 3 on page 44 of Vrabie et al. illustrates two superimposed Raman spectra.
With regard to claims 9-10, Table 1 on page 47 of Vrabie et al. lists characteristics and molecular structures of substances with peaks at each of the wavelength numbers on the Raman spectra. The relative amplitudes of the peaks in Figure 2 on page 44 of Vrabie et al. illustrate content rate comparisons between the elements at each peak.
It would have been obvious to someone of ordinary skill in the art at the time of the effective filing date of the instant application to modify the component analysis of Raman spectra of Vrabie et al. by use of the computer and GUI displays of Kircher et al. wherein the motivation would have been that computerized analysis and interactive display of Kircher et al. facilitates and expedites the analysis of Raman spectral data in Vrabie et al. [Figure 32 of Kircher et al.].
Related Art
The patent of Ohba et al. [U.S. Patent 12,313,554 B2] teaches component analysis of spectral data from a laser-induced spectroscope [title]. However, the claims of Ohba, et al. teach a distinct type of spectral component analysis and graphical user interface display computer system than the component analysis and display recited in the instantly rejected claims.
The patent of Kang et al. [U.S. Patent 10,890,747 B2] elaborates on the structure of a magnifying observation apparatus.
E-mail Communications Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Russell Negin, whose telephone number is (571) 272-1083. This Examiner can normally be reached from Monday through Thursday from 8 am to 3 pm and variable hours on Fridays.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, Larry Riggs, Supervisory Patent Examiner, can be reached at (571) 270-3062.
/RUSSELL S NEGIN/Primary Examiner, Art Unit 1686 5 August 2026
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