DETAILED ACTION
This application is being examined under AIA first-to-file provisions.
Status of claims
Canceled:
7-11, 15-16 and 25-26
Pending:
1-6, 12-14, 17-24 and 27-30
Withdrawn:
19-24
Examined:
1-6, 12-14, 17-18 and 27-30
Independent:
1
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
x
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
x
102, 103
JE
Judicial Exception
x
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
101 Other
N:N
page:line
Double Patenting
MM/DD/YYYY
date format
Priority
As detailed on the 8/12/2022 filing receipt, this application claims priority to as early as 9/27/2019. At this point in examination, all claims have been interpreted as being accorded this priority date.
Restriction/election
Applicant’s 6/10/2025 election is acknowledged. Because no errors in the restriction requirement were alleged distinctly and specifically, the election has been treated as an election constructively without traverse (MPEP § 818.01(a)). As listed above, claims are withdrawn as drawn to nonelected inventions pursuant to 37 CFR 1.142(b), and the remaining claims have been examined as listed above. The restriction requirement is made final.
Objection to the specification: title
The title should be amended to more specifically reflect the claims, particularly referencing steps/elements: setting the context of the invention, particular to all claims, and distinguishing the instant application from any related applications, for example terms such as: global properties and universal parameters. The title should be "descriptive" and "as... specific as possible" (MPEP 606, 1st para. and 37 CFR 1.72; also MPEP 606.01 pertains).
Claim objections
Claims 1, 17 and 27-30 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
...biomolecule; the method comprising:...
...data set; wherein...
Commas would be more appropriate than the semi-colons.
17
...one of a set of predetermined characteristic
biomolecule data sets, which define the identities of predetermined biomolecules
Grammatically, since the recited "which define the identities of predetermined biomolecules" is interpreted as necessarily limiting the recited "predetermined characteristic biomolecule data sets," then no comma should precede the recited "which."
27-30
A method...
As with for example claims 2-6, 12-14, 17-18, the claim should begin as "The method..." instead of "A method..."
27
, and determining...
Each element or step of the claim should be separated by a line indentation (608.01(m) Form of Claims). Sub-steps should be indented from their parent step. Contrast claim 18 not so objected to.
28
...that the set... are...
Improper subject-verb agreement; should read "is"
30
...charge, and...
The comma is inappropriate since the list contains only two list elements, e.g. "X and Y" not "X, and Y."
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 1-6, 12-14, 17-18 and 27-30 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
measure a plurality of global properties of the unknown biomolecule
Not interpretable at least because the meaning of the term "global" is not clear. In ordinary usage, "global" generally means having some form of value, applicability, relevance or meaning throughout all of some understood domain. Neither the value nor the domain is clear here. It is not clear, for example, whether "global" means throughout some spatial domain, throughout some set of elements (e.g. some set of molecules), throughout some set of possible properties, throughout some extent of an individual molecule, etc. Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification. (MPEP 2145.VI pertains.) It may help to define the term "global" in claim 1, relying on support in the original disclosure. It is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure. A related 112/a rejection applies below.
3-4
...preferably five, six, seven, eight, nine, or ten or more global properties.
Unclear optionality or conditionality. MPEP 2111.04 and 2173.05(h).II pertain. Claim 4 is rejected similarly.
4
(a high degree of orthogonality)
Unclear optionality or conditionality. MPEP 2111.04 and 2173.05(h).II pertain. It is unclear whether the parenthetical recites a definition, an option, an alternative, etc.
4
...a low degree of correlation...
...a high degree of orthogonality...
The recited "low" and "high" are terms of relative or vague degree or form of association, neither defined in the specification (8:25, 29:7-12) nor having a well-known and sufficiently particular definition in the art and in the instant context. (MPEP 2173.05(b) pertains.)
6
wherein measured global propert(ies) are normalised
The relationship is unclear between the claim 6 recited "measured global propert(ies)" and the claim 1 recited "a plurality of global properties" at least for lack of a grammatical article preceding the recitation in claim 6, e.g. "the measured..."
6
wherein measured global propert(ies) are normalised
The meaning of the recited "(ies)" is unclear. Possibly simply "properties" should be recited, consistent with claim 1 "...measure a plurality of global properties..."
12
a plurality of global properties of the unknown biomolecule
The relationship is unclear to the same element in the preamble of claim 1 at least because the language in claim 12 newly instantiates the same element. Possibly claim 12 should recite "...[[a]]the plurality..."
Also, there is a subject-verb agreement issue: "...plurality... are..." should read "...plurality... is..."
13
the global property includes measuring
Requires but lacks clear antecedent at least because there is no singular recitation of "property" in claim 1, and it is unclear which if the plurality is referenced here.
Also, the language is inappropriately informal in the sense that a claim element such as a "property" cannot itself include a process step such as "measuring." The relationships among the property, properties, and measuring may be clarified.
13
Mw, Rh, ... pI...
Not interpretable at least because variables should be defined in the claim
14
orthogonal global properties
The relationship is unclear between this instance of "properties" and the instance in the preamble of claim 1.
27-28
universal parameters
Not interpretable at least because the meaning of the term "universal" is not clear. In ordinary usage, "universal" generally means having some form of value, applicability, relevance or meaning throughout all of some understood domain. Neither the value nor the domain is clear here. It is not clear, for example, whether "universal" means throughout some spatial domain, throughout some set of elements (e.g. some set of molecules), throughout some set of possible properties, throughout some extent of an individual molecule, etc. Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification. (MPEP 2145.VI pertains.) It may help to define the term "global" in claim 1, relying on support in the original disclosure. It is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure. A related 112/a rejection applies below.
29
a plurality of unknown biomolecules
The relationship is unclear between the claim 1 recited "an unknown biomolecule" and the claim 29 "a plurality of unknown biomolecules."
Claim rejections - 112/a
The following is a quotation of 112/a:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Regarding issues of written description support stemming even from the original claims and original disclosure, MPEP 2161.01.I (e.g. 6th para.), 2163.I and 2163.I.A pertain: "[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed" (MPEP 2161.01.I,6th para.).
Written description
Claims 1-6, 12-14, 17-18 and 27-30 are rejected under 112/a as failing to comply with the written description requirement. The claims read on subject matter which is not described in the specification in such a way as to reasonably convey to PHOSITA that the inventors, at the time the application was filed, had possession of the claimed invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted. With regard to any suggested amendment(s) below to overcome a rejection, equivalent amendments also would be acceptable.
Claim 1 recites "...global properties..." The interpretation and meaning of the term "global" in the recited context are unclear. A related 112/b rejection applies above. The specification provides various disclosures including the term "global" as an adjective modifying "properties" (e.g. 7:22 - 8:31), however it is not clear that an interpretable definition of "global" is disclosed such as would limit the use of the term "global" in claim recitation. Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification. (MPEP 2145.VI pertains.)
As appropriate, these rejections may be overcome, for example, (i) by narrowing to clearly supported embodiments and/or (ii) by clarifying on the record where support can be found and how that support relates to the recitations.
It may help to define the term "global" in claim 1, relying on support in the original disclosure. In general, it is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure.
MPEP 2163 generally pertains.
Claims 27-28 recite "...universal parameters..." The interpretation and meaning of the term "universal" in the recited context are unclear. A related 112/b rejection applies above. The specification provides various disclosures including the term "universal," though not necessarily modifying "parameters" (e.g. 13:23 - 14:8), however it is not clear that an interpretable definition of "universal" is disclosed such as would limit the use of the term "universal" in claim recitation. Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification. (MPEP 2145.VI pertains.)
As appropriate, these rejections may be overcome, for example, (i) by narrowing to clearly supported embodiments and/or (ii) by clarifying on the record where support can be found and how that support relates to the recitations.
It may help to define the term "universal" in claims 27-28, relying on support in the original disclosure. In general, it is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure.
MPEP 2163 generally pertains.
Claim rejections - 102
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 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.
Claims 1-6, 12-14, 17-18 and 27-29
Claims 1-6, 12-14, 17-18 and 27-29 are rejected under 35 USC 102(a)(1) as anticipated by Widengren (as cited on the attached "Notice of References Cited" form 892).
Regarding claim 1, the recited microfluidic device and introducing a fluid sample read on "quantify single molecules in dilute solutions" (Widengren: abstract; and entire document) and "detection volume can be estimated to be ~1 fL" (Widengren: p. 2042, 2nd col.; and entire document).
The recited measuring three properties and characteristic biomolecule data set read on "...characterization of molecules in single-molecule fluorescence detection measurements has step by step been established for the different fluorescence parameters" (Widengren: p. 2040, 2nd para.; and entire document) and "each detected photon can be characterized by four parameters" (Widengren: p. 2042, 2nd col., last para.; and entire document).
The recited characterise the unknown biomolecule read on "Using the multiple fluorescence dimensions, we demonstrate a dye labeling scheme of oligonucleotides, by which it is possible to identify and separate 16 different compounds in the mixture via their characteristic pattern by MFD" (Widengren: abstract; and entire document).
Claim 2 specifies multiple detection regions which reads on the various spatial locations within the "detection volume" (Widengren: p. 2042, 2nd col.; and entire document) as well as reads on the different x, y, z locations achievable through operation of the confocal microscope (Widengren: §"Setup;" and entire document).
Claims 3 and 5 specify four properties which reads on "each detected photon can be characterized by four parameters" (Widengren: p. 2042, last para.; and entire document).
Claims 4 and 14 specify orthogonal properties which read on "four parameters: (i) spectral range...; (ii) the polarization of the signal photon...; (iii) the arrival time...; and (iv) the interphoton time..." (Widengren: p. 2042, last para.; and entire document).
Claim 6 specifies normalization which reads on "normalized," "normalizing" (Widengren: p. 2047, 2nd col., 3rd and last paras.; and entire document) and "normalize the molecule numbers" (Widengren: p. 2049; and entire document).
Claim 12 specifies multiple wavelengths which reads on "two-color excitation" (Widengren: §"Setup;" and entire document).
Claim 13 specifies measuring physical characteristic which reads on "charge transfer" (Widengren: p. 2049, 2nd col.; and entire document).
Claims 17-18 and 27-29 specify closest match processing with statistical analysis which reads on "characteristic patterns" (Widengren: abstract; and entire document), "Pattern Recognition" (Widengren: p. 2047, 1st col., last para.; and entire document) and "maximum likelihood estimator" (Widengren: p. 2043, 1st col., last para.; p. 2048, 1st col., 2nd para.; p. 2049, 2nd col.; and entire document).
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 1-6, 12-14, 17-18 and 27-30
Claims 1-6, 12-14, 17-18 and 27-30 are rejected under 35 USC 103 as unpatentable over Widengren in view of Joo (as cited on the attached "Notice of References Cited" form 892).
The art is applied to claims 1-6, 12-14, 17-18 and 27-29 as described in the above 102 rejection.
Widengren does not teach the claim 30 analysis of amino-acid content but Joo does as "protein identification method" (Joo: p. 65, 2nd col.; and entire document).
It would have been prima facie obvious to modify Widengren using Joo as Joo cites to Widengren.
Claim rejections - 101
35 USC 101 reads:
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.
For each rejection below, dependent claims are rejected similarly as not remedying the rejection, unless otherwise noted.
Judicial exceptions (JE) to 101 patentability
Claims 1-6, 12-14, 17-18 and 27-30 are rejected under 35 USC 101 because the claimed inventions are not directed to patent eligible subject matter. After consideration of relevant factors with respect to each claim as a whole, each claim is directed to one or more JEs (i.e. an abstract idea, a natural phenomenon, a law of nature and/or a product of nature), as identified below. Any elements or combination of elements beyond the JE(s) (i.e. "additional elements") are conventional and do not constitute significantly more than the JE(s). Thus, no claim includes additional elements amounting to significantly more than the JE(s), as explained below.
In Alice, citing Mayo and Bilski, two Mayo/Alice questions determine eligibility under 101: First, is a claim directed to a JE? And second, if so, does the claim recite significantly more than the JE?
MPEP 2106 organizes JE analysis into Steps 1, 2A (1st & 2nd prongs) and 2B as follows below.
MPEP 2106 and the following USPTO website provide further explanation and case law citations: www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter? -- MPEP 2106.I and 2106.03
[Step 1: claims 1-6, 12-14, 17-18 and 27-30: YES]
Step 2A, 1st prong: Do the claims recite a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea? -- abstract idea -- MPEP 2106.I and 2106.04
Preliminarily, in a 1st prong of Step 2A, elements of independent claim 1 are interpreted as directed to the abstract idea of processing data to characterize an unknown biomolecule including the JE elements of "processing...," each of which, including all recitation within each listed element, in at least some embodiments within a BRI, involves only manipulation of data. While manipulation of data is not per se directed to an abstract idea, in this instance the above-identified elements are directed to the abstract ideas identified below.
BRIs of the claims are analogous to an abstract idea in the form of at least a mental process, at least equivalent to a computer-implemented process, including obtaining and comparing intangible data (e.g. Cybersource, Synopsys and Electric Power Group). In a BRI, it is not clear that the claim embodiments are limited so as to require complexity precluding analogy to a mental process.
BRIs of the claims also are analogous to an abstract idea in the form of a mathematical concept, including mathematical relationships and calculations, as found in the following case law, as cited and discussed above: collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group) and/or obtaining and comparing intangible data (e.g. Cybersource, Ambry and Myriad CAFC) and/or execution of an algorithm to implement mathematical relationships and/or formulas, including image processing (e.g. TLI, Digitech, Benson, Flook, Diehr, FuzzySharp, In re Grams and In re Abele all as cited in MPEP 2106).
Instant examples of math concepts include the recited characterize which reads on closest match analysis, as well as relationships inherent in recitations as the only supported embodiments.
The preceding case law examples are cited for the basic form of their identified abstract ideas, and analogy to these example abstract ideas need not be within the same technology field, 101 analysis generally being assumed to be neutral with respect to technology field.
Regarding inherency of abstract ideas, MPEP 2106.04.II.A.1 includes: "the claims in Alice Corp. v. CLS Bank, 'described' the concept of intermediated settlement without ever explicitly using the words 'intermediated' or 'settlement'" (emphasis added, p. 1). Similarly, inherency can effectively be recitation, as in, for example, "By claiming simply 'crystalline paroxetine hydrochloride hemihydrate' with no reference to how it was produced, SKB effectively claimed 'crystalline paroxetine hydrochloride hemihydrate whether non-naturally occurring or arising through natural conversion.' Claim 1, as issued, therefore combines patentable and unpatentable subject matter, and is invalid under Section 101." (capitalization added, SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1321-33, Fed. Cir. 2004).
In the instant type of data processing claims, the specification is not merely adding background explanation as to how a claimed process works, e.g. a physical process based on, involving or further explained by abstract ideas and natural laws. Rather, the specification is detailing the only disclosed way that a programmer may proceed from the recited inputs to the recited outputs, e.g. through actual performance of the disclosed judicial exceptions (JEs).
Regarding the "Meaning of 'Recites,'" MPEP 2106.04.II.A.1 states:
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
While the "set forth" language approximates explicit recitation, it also is fundamental that all recitation must be interpreted and that to be patent eligible a claim must satisfy 101 according to its properly interpreted scope, e.g. for all embodiments on which the claim reads, e.g. according to any inherency pertinent to a given claim and disclosure accompanying that claim, i.e. consistent with the "described" meaning of "recites" as in the MPEP. Thus, within a BRI, the identified abstract idea elements read on one or more embodiments which only involve manipulation of data. It is not clear than any improvement argument clearly on the record causes a claim not to be directed to a JE for all embodiments within the scope of the claim.
As in Alice (at 306, as cited in the MPEP above) and Bilski (as cited in Alice, id), an abstract idea may comprise multiple abstract elements or steps (i.e. from Alice: "a series of steps" at 306) and need not be a single equation, relationship or principle.
It is not clear that the identified elements must represent other than an abstract idea according to any relevant analysis or case law.
[Step 2A, 1st prong, abstract idea: claim 1: YES]
Step 2A, 2nd prong: If the claims recite a judicial exception under the 1st prong, then is the judicial exception integrated into a practical application? -- MPEP 2106.I and 2106.04(d)
MPEP 2106.04(d).I lists the following example considerations for evaluating whether a judicial exception is integrated into a practical application:
An improvement in the functioning of a computer or an improvement to other technology or another technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
In Step 2A, 1st prong above, claim steps and/or elements were identified as part of one or more judicial exceptions (JEs).
In Step 2B below, any remaining steps and/or elements are therefore in addition to the identified JE(s). Any such additional steps and additional elements are further discussed in Step 2B.
Here in Step 2A, 2nd prong, no additional step or element clearly demonstrates integration of the JE(s) into a practical application.
At this point in examination it is not yet the case that any of the Step 2A, 2nd prong considerations enumerated above clearly demonstrates integration of the identified JE(s) into a practical application. Referring to the considerations above, none of 1. an improvement, 2. treatment, 3. a particular machine or 4. a transformation is clear in the record.
For example, regarding the first consideration at MPEP 2106.04(d)(1), the record, including for example the specification, does not yet clearly disclose an explanation of improvement over the previous state of the technology field. The claims do not yet clearly result in such an improvement (e.g. specification: 11:1-10, 24:11-17, 26:15-19, 29:1-6).
[Step 2A, 2nd prong: claim 1: NO]
Step 2B: Do the claims recite a non-conventional arrangement of additional elements in addition to the identified JEs? -- MPEP 2106.I and 2106.05
Addressing the second Mayo/Alice question, all elements of claim 1 are part of one or more identified JEs (as described above), except for elements identified here as conventional elements in addition to the above judicial exceptions:
The recited "introducing..." and "using..." are conventional elements of a laboratory and/or computing environment and/or conventional data gathering/input elements, as exemplified by Widengren (as cited on the attached "Notice of References Cited" form 892, and generally it is understood that the examples in the reference are well-known and routine.
It is emphasized that, outside of an improvement argument, analysis of what is conventional generally pertains to the above-identified additional elements and not to elements identified as part of a JE.
[Step 2B: claim 1: NO]
Summary and conclusion regarding claim 1
Summing up the above analysis of claim 1, viewed as a whole and considering all elements individually and in combination, the claim does not recite limitations that transform the claim, finally interpreted as directed to the identified JE(s), into patent eligible subject matter, and it is not clear that the claim is sufficiently analogous to controlling case law identifying an example of an eligible claim.
Remaining claims
Claims 3-6, 13-14, 17-18 and 27-30 add elements which also are part of the identified JEs for the same reasons described above regarding the independent claims and therefore do not provide the something significantly more necessary to satisfy 101.
Elements of the following claims are additional elements but nonetheless are conventional elements of a laboratory or computing environment, conventional data gathering elements or conventional post-processing elements, as in the following specific examples which also are understood to be well-known and routine:
claims 2 and 12: conventional elements of a laboratory and/or computing environment and/or conventional data gathering/input elements, as exemplified by Widengren, and generally it is understood that the examples in the reference are well-known and routine.
None of the dependent claim elements provides the something significantly more than the identified JE(s) necessary to satisfy 101.
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.
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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