DETAILED ACTION
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 .
The following is a non-final, first office action on the merits, in response to application filed 8/5/2022. Claims 1-20 have been examined and are currently pending.
Priority
Acknowledgment is made of applicant's claim for a provisional application filed on 9/21/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/29/2022, 2/23/2023, 4/27/2023, 3/8/2024, 8/8/2024, 12/5/2024 follows the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Alice Corp. also establishes that the same analysis should be used for all categories of claims, regardless of a system/apparatus, a method, or a product claim.
The claimed invention (Claims 1-20) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, “an idea of itself”, which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because it/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 16 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, and “Mental process”.
Claim 16, Steps of,
determining, for a sample genome, direct nucleotide-base calls for genomic regions and sequencing metrics corresponding to the direct nucleotide-base calls;
imputing, for the sample genome, haplotypes corresponding to the genomic regions based on variant-nucleotide-base calls surrounding the genomic regions;
determining, for the sample genome, imputed nucleotide-base calls for the genomic regions based on the imputed haplotypes; and
determining final nucleotide-base calls for the genomic regions based on the direct nucleotide-base calls, the sequencing metrics, and the imputed nucleotide-base calls.
fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps recite “determining the genotype data is properly phased, by using appropriate software/applying the imputation algorithm, then determining the result”, which are certain methods of organizing human activity which encompasses both certain activity of a single person, certain activity that involves multiple people, and certain activity between a person and a computer.
In addition, claim 16, steps mentioned above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind. For example, a human being can evaluate/determine genotype data, can observe/process information, can evaluate/determine haplotypes and the variant-nucleotide-base calls.
Independent claim 16, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites no additional element that are significant more than the abstract ideas. In particular, there is no machine/hardware/computer to actually perform the abstract steps mentioned above. Thus, nothing in the claim element precludes the step from practically being performed in the mind, and is simply organized information through human activity or merely mental tasks, or and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
There is no specificity regarding any technology, just broadly, execute the programming instructions to process data, impute data, determine data. There are no additional elements, for example, hardware processor of a machine to actually perform all of the steps at all. The steps are mainly processing data, imputing data/information determining data. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Accordingly, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 16, (step 2B):
There are no additional elements and add nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea. This component is merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic sensor/computer components recited as performing generic sensing/computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/send/display information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 16).
Dependent claims 17-20, are merely add further details of the abstract steps/elements recited in claim 16 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 17-20, are also non-statutory subject matter.
Independent claim 1, 10: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system/apparatus claim 1 and product claim 10, are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim(s) 16.
Further, the components (i.e., a processor, a system, a non-transitory storage medium) described in independent claims 1, and 10, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claims, the limitations appear to be performed by a generic sensor/computing system/device. These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic sensing/computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic sensor/computer components to receive/access/identify/search/transmit/send/display information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 16).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward
information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)”.
Applicant’s Specification, paragraph [0208--0212] indicate a general-purpose computer perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a memory/a computer) in any computing implementation. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo. Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept.
Dependent claims 2-9, and 11-15, are merely add further details of the abstract steps/elements recited in claim 1, and 10 respectively without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 2-9, and 11-15, are also non-statutory subject matter.
Viewed as a whole, the claims do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention, as a whole, does not provide 'significantly more' than the abstract idea, and is non-statutory subject matter.
Prior Art Rejection
Independent claims 1-20, as a whole recite a combination of limitations that has Not been found as define over prior art of record (the combination of
Andrew et al. (US 2024/0112753), Nemri et al. (US 2023/0368864), Lu et al. (US 2019/0026433), Lu et al. (US 2019/0026641), Green (WO 2021/072037 A1),
and
NPL1-- Larmer SG, Sargolzaei M, Brito LF, Ventura RV, Schenkel FS. Novel methods for genotype imputation to whole-genome sequence and a simple linear model to predict imputation accuracy. BMC Genet. 2017 Dec 27;18(1):120. doi: 10.1186/s12863-017-0588-1. PMID: 29281958; PMCID: PMC5746022.
NPL2---Fridley BL, Jenkins G, Deyo-Svendsen ME, Hebbring S, Freimuth R. Utilizing genotype imputation for the augmentation of sequence data. PLoS One. 2010 Jun 8;5(6):e11018. doi: 10.1371/journal.pone.0011018. PMID: 20543988; PMCID: PMC2882389.
NPL3---Nelson SC, Doheny KF, Pugh EW, Romm JM, Ling H, Laurie CA, Browning SR, Weir BS, Laurie CC. Imputation-based genomic coverage assessments of current human genotyping arrays. G3 (Bethesda). 2013 Oct 3;3(10):1795-807. doi: 10.1534/g3.113.007161. PMID: 23979933; PMCID: PMC3789804.
Allowable Subject Matter
As to the prior art rejection, in light of Specification, upon further search and consideration, it is found that claim 1-20 overcome prior art/reference over the recited arts of record, and is allowable subject to an outstanding Alice 101 rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm. Fax is 571-270-6489.
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/SUN M LI/Primary Examiner, Art Unit 3685