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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 14, 2026 has been entered.
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on January 14, 2026. Claims 1-10 are pending in the application and are being examined herein.
Status of Objections and Rejections
The objection to the claims is withdrawn in view of Applicant’s amendment.
The rejection of the claims under 35 U.S.C. 101 is maintained and modified as necessitated by the amendments.
All other rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and 35 U.S.C. 103 are necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. New matter is shown in bold. Claim 1 recites “store a corrected spectrum, and control operation of the electrophoresis device based on the corrected spectrum” in lines 10-11 of the claim. The specification discloses that the computation control circuit 503 includes a correction factor database 5034 that stores the correction factor, a measurement value computation unit 5032 that stores a spectrum of each DNA sample in each capillary, and a correction unit 5035 that calculates a corrected measurement value by applying the stored correction factor to the measurement value (see Fig. 5, para. [0076]-[0077], [0113] of the instant US PGPub), but the specification does not contain support for storing the corrected spectrum. The specification also does not disclose that operation of the electrophoresis device is controlled based on the corrected spectrum. There is no support for using the corrected spectrum after correction to control the electrophoresis device. The specification only discloses that a control computer 502 receives data acquired by the device body 501 (such as a detection signal of the photodetector 504) (see Fig. 5, para. [0057] of the instant US PGPub), but does not disclose controlling operation of the electrophoresis device based on the corrected spectrum. Applicant is required to cancel the new matter in reply to this Office Action. Claims 2-10 are rejected as dependent thereon.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. Claim 1 recites determining a spectrum of the light based on a signal from the photodetector, and correcting the spectrum using correction factors that are based on a fluorescence strength of each of a plurality of fluorescent dyes.
The limitations of determining a spectrum of the light based on a signal from the photodetector and correcting the spectrum using correction factors that are based on a fluorescence strength of each of a plurality of fluorescent dyes, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitations in the mind. Nothing in the claim precludes the steps from practically being performed in the mind. The "determine" and "correct" language in the context of the claim encompasses the user mentally determining a spectrum of the light and correcting the spectrum using determined correction factors. The courts consider evaluations and calculations to be abstract ideas. See MPEP § 2106.04(a). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the "Mental Processes" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of an electrophoresis device comprising a capillary, a diffraction grating configured to disperse light from the sample within the capillary, and a photodetector configured to detect light dispersed by the diffraction grating, and a computation control circuit configured to store a corrected spectrum and control operation of the electrophoresis device based on the corrected spectrum whether or not a migration voltage of the sample has changed between a time of spectral calibration and a time of migration of the sample. The electrophoresis device, the capillary, the dispersion element, the photodetector, and the computation control circuit are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract ideas into a practical application because they do not impose any meaningful limits on practicing the abstract ideas as they are insignificant extra-solution activity. See MPEP § 2106.05(g). In regard to the correction factor, this is a calculation based on previously gathered data. The MPEP notes that mathematical calculations are abstract ideas (MPEP § 2106.04(a)) and automating such a process by using a computer is not considered a particular practical application (MPEP § 2106.05(f)). In regard to storing the corrected spectrum and controlling operation of the electrophoresis device based on the corrected spectrum, this amounts to a generic application and thus is not a particular practical application. See MPEP § 2106.05(g) and 2106.05(h). Furthermore, merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, does not integrate the judicial exception into a practical application. See MPEP § 2106.05(f). The claim is directed to abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the electrophoresis device, the capillary, the diffraction grating, the photodetector, and the computation control circuit amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker V. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Yokoyama et al. (US 2015/0337360 A1) teaches an electrophoresis device (an electrophoresis apparatus 105, Fig. 5, para. [0065]) comprising a capillary (a capillary 502, Fig. 5, para. [0068], [0070]), a diffraction grating configured to disperse light from the sample within the capillary (a diffraction grating 532 for separating information light from the sample, Fig. 5, para. [0071]), a photodetector configured to detect light dispersed by the diffraction grating (an optical detector 515 for detecting the separated information light, para. [0071], [0075]), and a computation control circuit (a data analysis device 112 composed of a central control unit 102 which controls electrophoresis and processes data, and a storage unit 104 which stores data such as spectra of all the capillaries during the electrophoresis analysis, Figs. 1 & 5, para. [0065], [0078], [0105]). See also the prior art rejection of claim 1 below. The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 1 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
Claims 2-10 are rejected under 35 U.S.C. 101 as dependent thereon and also do not include additional elements that are sufficient to amount to significantly more or integrate the exception into a practical application. Appropriate correction is requested.
Claims 2-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. Claim 2 recites wherein the correction factors are determined for each voltage at a time of electrophoresis of the sample. Claim 3 recites wherein the correction factors are determined for each pH of a buffer at a time of electrophoresis of the sample or for each pH of a solution of the sample. Claim 4 recites wherein the correction factors are determined for each length of the capillary. Claim 5 recites wherein the correction factors are determined for each set temperature of the constant temperature reservoir. Claim 6 recites wherein the correction factors are acquired. Claim 7 recites wherein the correction factors are determined for each composition or chemical property of a separation medium within the capillary. Claim 8 recites setting the correction factors for each of the plurality of the capillary. Claim 9 recites calculating a numerical value expressing relative relationship between a first spectrum of a first fluorescent dye and a second spectrum of a second fluorescent dye as the correction factors, and, by applying the correction factors to a third spectrum of a third fluorescent dye that is the same as the first fluorescent dye, correcting the third spectrum according to the relative relationship. Claim 10 recites calculating a numerical value expressing relative relationship between a first spectrum that is acquired by a first migration condition and a second spectrum that is acquired by a second migration condition as the correction factors, and, by applying the correction factors to a third spectrum acquired by a third migration condition that is the same as the first migration condition, correcting the third spectrum according to the relative relationship.
The limitations of wherein the correction factors are determined for each voltage at a time of electrophoresis of the sample, wherein the correction factors are determined for each pH of a buffer at a time of electrophoresis of the sample or for each pH of a solution of the sample, wherein the correction factors are determined for each length of the capillary, wherein the correction factors are determined for each set temperature of the constant temperature reservoir, wherein the correction factors are acquired, wherein the correction factors are determined for each composition or chemical property of a separation medium within the capillary, setting the correction factors for each of the plurality of the capillary, calculating a numerical value expressing relative relationship between a first spectrum of a first fluorescent dye and a second spectrum of a second fluorescent dye as the correction factors, applying the correction factors to a third spectrum of a third fluorescent dye that is the same as the first fluorescent dye, correcting the third spectrum according to the relative relationship, calculating a numerical value expressing relative relationship between a first spectrum that is acquired by a first migration condition and a second spectrum that is acquired by a second migration condition as the correction factors, applying the correction factors to a third spectrum acquired by a third migration condition that is the same as the first migration condition, and correcting the third spectrum according to the relative relationship, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitations in the mind or with pen and paper. Nothing in the claim precludes the steps from practically being performed in the mind or with pen and paper. The courts consider a mental process that can be performed by a human using a pen and paper to be an abstract idea. See MPEP § 2106.04(a)(2)(III). The "determined," "acquired," "sets," "calculates," "applying," and "corrects" language in the context of the claim encompasses the user mentally determining and acquiring the correction factors, setting the correction factors, calculating the correction factors, applying the correction factors, and correcting the spectrum. The courts consider evaluations and calculations to be abstract ideas. See MPEP § 2106.04(a). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the "Mental Processes" grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The limitations of calculating a numerical value expressing relative relationship between a first spectrum of a first fluorescent dye and a second spectrum of a second fluorescent dye as the correction factors, applying the correction factors to a third spectrum of a third fluorescent dye that is the same as the first fluorescent dye, correcting the third spectrum according to the relative relationship, calculating a numerical value expressing relative relationship between a first spectrum that is acquired by a first migration condition and a second spectrum that is acquired by a second migration condition as the correction factors, applying the correction factors to a third spectrum acquired by a third migration condition that is the same as the first migration condition, and correcting the third spectrum according to the relative relationship, as drafted, are processes that, under its broadest reasonable interpretation, cover mathematical concepts such as mathematical calculations. The "calculating," "applying," and "correcting" language in the context of the claim encompasses mathematical calculations that can be performed by a user. If a claim limitation, under its broadest reasonable interpretation, covers mathematical calculations, then it falls within the "Mathematical Concepts" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
These judicial exceptions are not integrated into a practical application. Claims 2-4 and 6-7 do not recite any additional elements. Claim 5 recites the additional element of a constant temperature reservoir storing the capillary. Claim 8 recites the additional elements of a plurality of the capillary and the computation control circuit. Claims 9-10 recite the additional element of the computation control circuit. The constant temperature reservoir, the plurality of the capillary, and the computation control circuit are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract ideas into a practical application because they do not impose any meaningful limits on practicing the abstract ideas as they are insignificant extra-solution activity. See MPEP § 2106.05(g). The claim is directed to abstract ideas.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, claims 2-4 and 6-7 do not recite any additional elements. The additional elements of the constant temperature reservoir (claim 5), the plurality of the capillary (claim 8), and the computation control circuit (claims 8-10) amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Yokoyama et al. (US 2015/0337360 A1) teaches a constant temperature reservoir (a thermostatic bath 518 for keeping a capillary at a constant temperature, Fig. 5, para. [0068]), a plurality of the capillary (one or more capillaries 502, Fig. 5, para. [0068], [0070]), and a computation control circuit (a data analysis device 112 composed of a central control unit 102, Figs. 1 & 5, para. [0065], [0078]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claims 2-10 each as a whole do not amount to significantly more than the exception itself. The claims are not patent eligible.
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-4, 6-7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Applied Biosystems “ABI Prism®”, 310 Genetic Analyzer User Guide, User Guide, Part Number 4317588 Rev. B, Applied Biosystems, June 30, 2010, 9 pages (hereinafter “ABI”) (provided in Applicant’s IDS filed on October 10, 2022) (page numbers herein made with respect to the 9 pages submitted by Applicant) in view of Sarrine et al. (US 4,890,247 A).
Regarding claim 1, ABI teaches an electrophoresis device (310 Genetic Analyzer and computer, ABI, pgs. 2-3), comprising:
a capillary of a sample (a capillary for migration of a sample during electrophoresis, ABI, pg. 2, bottom half of pg. 4);
a diffraction grating configured to disperse light from the sample within the capillary (a diffraction grating disperses the light from the sample within the capillary, ABI, bottom half of pg. 4, top of pg. 5);
a photodetector configured to detect the light dispersed by the diffraction grating (a CCD array for detecting the fluorescence and resulting light spectrum, ABI, bottom half of pg. 4, top of pg. 5); and
a computation control circuit configured to determine a spectrum of the light based on a signal from the photodetector (a computer collects and analyzes the data from the CCD array including the fluorescence emission spectra, ABI, top half of pg. 3, all of pg. 4, top half of pg. 5), correct the spectrum using correction factors that are based on a fluorescence strength of each of a plurality of fluorescent dyes (the computer corrects the spectral overlap between colors on the CCD array by a matrix file in the software, each matrix file being generated from a separate matrix run at specific run conditions with specific dyes, the matrix files contain information about how much of the collected light falling on a filter is due to the intended light emission and how much is contaminating light, the dye set used to create the matrix file must be the same as the dye set used to run the sample, the matrix files are generated using the Sequencing Analysis software which collects the dyes' emission fluorescence spectra data, ABI, bottom half of pg. 4, bottom half of pg. 5, all of pg. 7).
ABI teaches that the computer includes storage and random access memory (ABI, pg. 3, first table). ABI fails to teach wherein the computation control circuit is configured to store a corrected spectrum.
Sarrine teaches an electrophoresis machine in which all electrophoresis processing is performed under computer control (Sarrine, abstract). Sarrine teaches a random access memory is provided to store temporary data (Sarrine, col. 12, lns. 48-49). Sarrine teaches that each template is multiplied by a corresponding correction factor, and such data is then stored in an organized format in the digital memory of the computer where an analysis may be performed (Sarrine, col. 15, lns. 65-68, col. 16, lns. 1-3).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the storage/memory in the computer of ABI to store the corrected data as taught by Sarrine in order to yield the predictable result of performing analysis of the corrected data on the computer. MPEP § 2143(I)(C).
Modified ABI teaches the computation control circuit configured to control operation of the electrophoresis device based on the corrected spectrum whether or not a migration voltage of the sample has changed between a time of spectral calibration and a time of migration of the sample (the computer corrects the spectral overlap between colors on the CCD array by a selected matrix file in the software that shares the same run conditions as the sample such as dye sets and polymers, ABI, bottom half of pg. 5, all of pg. 7; parameters that may be edited in the modules include injection voltage and run voltage, ABI, all of pg. 6; a separate matrix file is created for each run condition and thus the matrix file that matches the sample run conditions is selected to analyze the sample, ABI, bottom half of pg. 5, all of pg. 7).
Regarding claim 2, Modified ABI teaches wherein the correction factors are determined for each voltage at a time of electrophoresis of the sample (matrix files with different run voltages, ABI, bottom half of pg. 6).
Regarding claim 3, Modified ABI teaches wherein the correction factors are determined for each pH of a buffer at a time of electrophoresis of the sample or for each pH of a solution of the sample (matrix files for each pH of polymers or buffers, ABI, middle of pg. 7).
Regarding claim 4, Modified ABI teaches wherein the correction factor is determined for each length of the capillary (matrix files for different run times, ABI, bottom half of pg. 6; middle of pg. 8 describes that electrophoresis run time is directly proportional to capillary length).
Regarding claim 6, Modified ABI teaches wherein the correction factors are acquired using the electrophoresis device (the matrix files are generated using the software of the 310 Genetic Analyzer and computer, ABI, pgs. 2-3, bottom half of pg. 5, bottom half of pg. 7).
Regarding claim 7, Modified ABI teaches wherein the correction factors are determined for each composition or chemical property of a separation medium within the capillary (matrix files for each different type of polymer used, ABI, pg. 7).
Regarding claim 9, Modified ABI teaches wherein the computation control circuit calculates a numerical value expressing relative relationship between a first spectrum of a first fluorescent dye and a second spectrum of a second fluorescent dye as the correction factors (the computer generates a matrix file from a matrix run at specific run conditions with a specific set of fluorescent dyes, the matrix file containing information about how much of the collected light is due to the intended light emission and how much is contaminating light, ABI, pgs. 5-7), and,
by applying the correction factors to a third spectrum of a third fluorescent dye that is the same as the first fluorescent dye, the computation control circuit corrects the third spectrum according to the relative relationship (the computer corrects the spectral overlap between colors on the CCD array by applying the chosen matrix file which has the same sets of fluorescent dyes and run conditions as the sample run, ABI, pgs. 5-7).
Regarding claim 10, Modified ABI teaches wherein the computation control circuit calculates a numerical value expressing relative relationship between a first spectrum that is acquired by a first migration condition and a second spectrum that is acquired by a second migration condition as the correction factors (the computer generates a matrix file from a matrix run at specific run conditions with a specific set of fluorescent dyes, the matrix file containing information about how much of the collected light is due to the intended light emission and how much is contaminating light, ABI, pgs. 5-7), and,
by applying the correction factors to a third spectrum acquired by a third migration condition that is the same as the first migration condition, the computation control circuit corrects the third spectrum according to the relative relationship (the computer corrects the spectral overlap between colors on the CCD array by applying the chosen matrix file which has the same sets of fluorescent dyes and run conditions as the sample run, ABI, pgs. 5-7).
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over ABI in view of Sarrine as applied to claim 1 above, and further in view of Yokoyama et al. (US 2015/0337360 A1).
Regarding claim 5, Modified ABI teaches a temperature reservoir storing the capillary (a heat plate that heats the capillary during electrophoresis, and a heater door that covers the heat plate and insulates the capillary during electrophoresis, ABI, pg. 2). ABI fails to teach that the temperature reservoir is a constant temperature reservoir.
Yokoyama teaches a technique for performing spectral calibration simultaneously with electrophoresis of an actual sample to be analyzed (Yokoyama, abstract). Yokoyama teaches that the electrophoresis apparatus 105 comprises a thermostatic bath 518 for keeping a capillary at a constant temperature (Yokoyama, Fig. 5, para. [0068]). Yokoyama teaches that the thermostatic bath 518 is covered with a heat insulating material to keep the internal temperature of the thermostatic bath constant, and the temperature is controlled with a heating/cooling mechanism 520 (Yokoyama, Fig. 5, para. [0076]). Yokoyama teaches that a fan 519 circulates and agitates the air in the thermostatic bath, and the temperature of the capillary array 517 is kept uniform and constant at every position (Yokoyama, Fig. 5, para. [0076]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the heat plate and heater door of Modified ABI to maintain a constant temperature as taught by Yokoyama in order to yield the predictable result of keeping the temperature of the capillary uniform and constant at every position. MPEP § 2143(I)(C), 2143(I)(D).
Modified ABI teaches wherein the correction factors are determined for each set temperature of the constant temperature reservoir (matrix files with different run temperatures, ABI, bottom half of pg. 6).
Regarding claim 8, Modified ABI teaches the capillary (the capillary, ABI, pg. 2, bottom half of pg. 4), wherein the computation control circuit sets the correction factors for the capillary (the computer software generates the matrix files from separate matrix runs at specific run conditions with specific dyes in the capillary, ABI, pgs. 5-7).
Modified ABI fails to teach a plurality of the capillary, wherein the computation control circuit sets the correction factors for each of the plurality of the capillary.
Yokoyama teaches a technique for performing spectral calibration simultaneously with electrophoresis of an actual sample to be analyzed (Yokoyama, abstract). Yokoyama teaches a capillary array 517 composed of one or more capillaries 502 (Yokoyama, Fig. 5, para. [0068]-[0069]). Yokoyama teaches that when a sample in a capillary 502 separated by electrophoresis is detected, the detection unit 516 of the capillary is irradiated with the light source 514, and light emitted from the detection unit 516 is separated with the diffraction grating 532 and detected with the optical detector 515 (Yokoyama, Fig. 5, para. [0075]). Yokoyama teaches that electrophoresis of the samples is performed in different capillaries (Yokoyama, Fig. 5, para. [0095]). Yokoyama teaches that the matrix is calculated for each capillary (Yokoyama, Figs. 5-6, para. [0152], [0156]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to duplicate the capillary of Modified ABI to provide a plurality of capillaries as taught by Yokoyama in order to yield the predictable result of electrophoresing different samples in different capillaries and calculating a matrix for each capillary. Additionally, generally, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). Therefore, Modified ABI teaches a plurality of capillaries, wherein the computer software generates the matrix files from separate matrix runs at specific run conditions with specific dyes in each capillary.
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive.
In the arguments presented on pages 6-7 of the amendment, Applicant argues that amended claim 1 includes significantly more than just an abstract idea and recites a practical application of the abstract idea. Applicant asserts that amended claim 1 recites the practical application of controlling the operation of the electrophoresis device based on the corrected spectrum. Applicant asserts that amended claim 1 recites the technological improvement that the control of the electrophoresis device is performed whether or not a migration voltage of the sample has changed between a time of spectral calibration and a time of migration of the sample, so the electrophoresis device acquires the correct fluorescence strength without having to repeat the spectral calibration whenever the electrophoresis condition or the fluorescent dye are changed.
Examiner respectfully disagrees. In regard to controlling operation of the electrophoresis device based on the corrected spectrum, this amounts to a generic application and thus is not a particular practical application. See MPEP § 2106.05(g) and 2106.05(h). Furthermore, merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, does not integrate the judicial exception into a practical application. See MPEP § 2106.05(f). Additionally, the limitation “control operation of the electrophoresis device based on the corrected spectrum” in claim 1 is new matter as discussed in the rejection supra. When relying upon an improvement in technology as integrating the abstract idea into a particular practical application, the claim must be evaluated to ensure that the claim reflects the improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016). The claim must include the components or steps of the invention that provide the improvement described in the specification. See also MPEP 2106.05(a) and MPEP 2106.04(d)(1). According to the instant specification, the steps include performing the first spectral calibration with various migration voltages before shipment of the multi-capillary electrophoresis device to register such correction factors along with information such as fluorescent dye and the migration voltage having been used, and then the operator having purchased the device selects an optional migration voltage out of those having been registered in the computation control circuit, performs the second spectral calibration, and is enabled thereafter to make an actual sample to migrate with an optional migration voltage having been registered in the computation control circuit 503 in a similar manner, so even when the migration voltage of an actual sample may be changed by any number of times within a range registered in the computation control circuit 503, the operator is not required to repeat the spectral calibration each time (para. [0086]-[0088], [0127] of the instant US PGPub). Claim 1 does not include these steps that lead to Applicant’s asserted technological improvement, and therefore does not integrate the abstract idea into a practical application.
In the arguments presented on pages 7-8 of the amendment, Applicant argues that ABI does not expressly or inherently disclose “control operation of the electrophoresis device based on the corrected spectrum whether or not a migration voltage of the sample has changed between a time of spectral calibration and a time of migration of the sample”. Applicant asserts that ABI discloses that whenever the run conditions (e.g. migration voltage) change, a new matrix file must be generated using the new run conditions, so instead of using the already corrected spectrum, ABI requires a new matrix file to be generated for correcting overlap in the CCD array.
Examiner respectfully disagrees. Examiner notes that the limitation “control operation of the electrophoresis device based on the corrected spectrum” in claim 1 is new matter as discussed in the rejection supra. ABI teaches that the computer corrects the spectral overlap between colors on the CCD array by a selected matrix file in the software that shares the same run conditions as the sample such as dye sets and polymers (bottom half of pg. 5, all of pg. 7), parameters that may be edited in the modules include injection voltage and run voltage (all of pg. 6), and a separate matrix file is created for each run condition and thus the matrix file that matches the sample run conditions is selected to analyze the sample (bottom half of pg. 5, all of pg. 7). Therefore, ABI teaches creating multiple matrix files with different run conditions and then selecting the matrix file with run conditions matching the sample run conditions to correct the spectral overlap. This is similar to Applicant’s invention described in para. [0086]-[0088], [0127] of the instant US PGPub, which means that ABI is also able to be used whether or not a migration voltage of the sample has changed between a time of spectral calibration and a time of migration of the sample since ABI teaches that the corresponding matrix file can be selected and the voltage in the module may be edited.
Conclusion
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 VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794