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 .
Remarks
This Office Action fully acknowledges Applicant’s remarks filed on January 22nd, 2026. Claims 69-71 and 74-90 are pending. Claims 1-68, 72, and 73 are canceled. Claims 84-90 are newly added. Claims 84-90 are withdrawn from consideration.
Election/Restrictions
Newly submitted claims 84-90 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The system of claim 84 is patentably distinct from that of the originally-elected method of claim 69 as the “system” of claim 84 amounts to software (i.e. the one or more processors and memory storing instructions to be executed thereby), and in which such “system” does not necessitate the particularly-provided substrate as afforded to the originally elected claim 69 (and additionally noting that original-elected cl. 69 does not require an optical imaging module), as well as the general sequence by synthesis processes provided therein, in which the “system” is given by an optical imaging module that is drawn to one or more processors and memory with instructions encoded thereon to be executed by the processor. This is a “system” in name only as it is drawn to a CRM (computer readable medium) encoded with instructions and does not necessitate the physical substrate. Further, such system does not necessitate the performing of plurality of cycles of probe binding to analytes (i.e. SBS) and detection of signals therefrom, let alone cooperatively connected reagent/sample injection/dispensing means and light source/photodetector arrangements therewith a particular substrate, as a system comprised of one or more processors and a memory alone does not suffice to provide sequencing by synthesis operations.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 84-90 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
1. A trained machine learning algorithm for determining a neighboring effect…as in cl. 77.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
1. Unclear from the disclosure. *see further rejection below under 35 USC 112 b/2nd *
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 69-71 and 74-83 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) individually and as an ordered combination are drawn to mathematical concepts in applying a pattern-dependent correction factor, wherein the applying of a pattern-dependent correction factor to the optical signals is drawn to mathematical concepts to correct for background noise/phasing/synchronization issues of sequencing by synthesis or likewise as in a mental step in providing an assessment and evaluation to the data. This can be seen in pars.[0285,0286,0291-0293] of Applicant’s pre-grant publication US 2023/0258564. (Step 2A, Prong 1).
This judicial exception is not integrated into a practical application (Step 2A, Prong 2) because
Further, as in Step 2A, Prong 2, this judicial exception is not integrated within a practical application, wherein the final step of “identifying said analyte from said plurality of optical signals…” is drawn to insignificant extra-solution activity. This output is not unique to Applicant’s abstract idea in mathematical concepts to improve the detected signals in the sequencing by synthesis application as sequencing itself is a diagnostic tool to inform the kind of genetic information in a DNA segment, as in identifying a target/analyte in a DNA molecule.
As in Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because step (a) to “providing a substrate…wherein said plurality of analytes are disposed on a surface at a density…” is drawn to a conventional application that is known in the art in providing a substrate with a microarray of analytes in sequencing by synthesis to afford simultaneous analysis of gene expression across thousands of genes (e.g. Solexa/Illumina’s sequencing-by-synthesis (SBS) such as in USPNs 6,833,246, 7,057,026); further, wherein the recited “density” is also within the conventional approaches above in providing a high-density arrays of polynucleotides immobilized on the substrate, and additionally noting that the “measure” defined therein is predicated on unknown variables to the wavelength lambda and NA of the imaging module wherein a particular wavelength is not necessitate nor an optical imaging module of particular NA;
and step (b) “performing a plurality of cycles of analytes with a plurality of probes…” is recited at a high level of generality and is a known process and conventionally understood in the art (e.g. Solexa/Illumina’s sequencing-by-synthesis (SBS) such as in USPNs 6,833,246, 7,057,026).
Further, step (c) of “detecting a plurality of optical signals…” is drawn to mere data gathering at a high level of generality that does not add meaningful limitations to the method of claim 1 wherein such steps fail to provide significantly more than the judicial exception, and thus fail Step 2B.
Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
This is likewise seen in the dependent claims 70, 71, and 74-83, which related to conventional aspects of sequencing by synthesis (see cls. 70, 78, 79, 83), and which also provide further abstract ideas by mathematical concepts delineated from the initial mathematical concepts (see cls. 71, 74-77, and 80-82) that amount to other abstract ideas without particular application.
Claim Rejections - 35 USC § 112
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 69-71 and 74-83 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 recited “a correction factor is applied to said plurality of optical signals…wherein said correction factor comprises a pattern-dependent correction factor, wherein said pattern-dependent correction factor is based on…” is indefinitely understood and defined herein.
The claims indefinitely provide for the function/equation that provides for this application of a pattern-dependent correction factor so as to inform the correction applied to the signals.
Applicant’s disclosure is absent particular discussion to any function/equation that describes the claimed “pattern-dependent correction factor based on a plurality of positions…”
The general discussion to this as found in pars.[0004,0005,0277,0291-0293] does not provide clear metes and bounds as to this signal adjustment by way of a claimed “correction factor” that is a “pattern-dependent correction factor based on a plurality of positions…”
Discussion therein to the pattern-dependent correction factor is based on relative geometric position between analytes is without particular discussion thereto so as to set forth the position-dependent correction factor, and likewise with respect to detecting neighbors with a direct physical boundary to analyte of interest, and/or determining neighbor distances. The disclosure goes on to provide additional and general discussion to the pattern-dependent correction factor, including discussions to what “some embodiments” may be, which is non-definitive as it is merely exemplary (and such examples are themselves not particularly defined and disclosed).
Both the definition of the pattern-dependent correction factor (i.e. equation/function to arrive thereat, signal processing steps) and what is meant that it is “based on a plurality of positions…” as recited herein are indefinitely provided.
This is likewise seen with respect to related dependent claims as in cls. 71, 74-77, and 80-82.
Further to this, claim 69 indefinitely provides for the recited “plurality of positions of said plurality of analytes and one or more distances relative to a number of pixels between the plurality of positions…” that the pattern-dependent correction factor is based on.
The claim indefinitely provides for particular positions of the analytes as step b merely provides general performance of a plurality of cycles of analytes with a plurality of probes, and the detection is drawn to detecting optical signals from the labels for said cycle of a plurality of cycles.
Further noting that the “plurality of cycles” is indefinitely provided as the claims do not make clear particular repetition of the set of steps, and as such with concordant positions/distances at each respective cycle.
The specification provides discussion to providing a series of images and overlying images from different cycles to generate a distribution of detected optical signals (e.g. position and intensity or position of peak) from each analyte over a plurality of cycles (pars.[0085,0168,0226]), however no such active plurality of cycles, imaging thereof, and overlying of the images is provided herein.
It is further noted that the recited “pixels” have no particular meaning herein as the claims are without an imaging unit so as to particularly provide for this distance relative to a pixel or resolution of a prospective image, wherein the optical imaging module previously recited is not a positively claimed element of the method.
Further, as in step (d) of claim 69, the “identifying…” is indefinitely provided. Herein, the claim recites “identifying said analyte from said plurality of optical signals…” in which it is unclear if Applicant intends to provide a prior provision in step (c) to codify thereafter those signals that have been corrected by the applied pattern-dependent correction factor are drawn to something on the order of “a plurality of corrected optical signals” such that step (d) may reference that the identification is done with respect to such corrected optical signals. Otherwise, the identification step is indefinitely understood as it pertains to the prior detecting step that involves applying such a correction factor.
Additionally, as in cl. 69, the sought density of the plurality of analytes is indefinitely defined as both of lambda and NA are undefined as the system does not necessitate a given wavelength(s), nor does the system necessitate an optical imaging module and having a particular NA.
Further, as in cl. 71, the correlation of a pattern-dependent correction factor to that of the herein-claimed distance-dependent correction factor is indefinitely understood. These appear to be drawn to individual species-type recitations from a base “correction factor,” wherein a correction factor may be pattern-dependent or distance-dependent. However, as the independent claim 69 already provides the species of pattern-dependent, the further delineation/correlation of distance-dependent to that of pattern-dependent is indefinitely understood. As to the above and as seen in par.[0004,0005,0277] of Applicant’s pre-grant publication, it does not appear that distance-dependent is a further delineation to that of pattern-dependent and instead they are drawn to alternatives or that both may be employed, neither of which is presented as recited herein.
Claims 74-76 and 80-82 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.
Claims 74-76 and 80-82 are indefinitely defined in terms of those signals that arise from “one or more neighboring analytes of said plurality of analytes” and where these “neighboring analytes/polynucleotides” exist within the general plurality of analytes.
The general inclusive language that the one or more neighboring analytes are among the plurality of analytes does not provide clear metes and bounds as to those signals/positions being assessed so as to inform noise/interference imparted to a relatively positioned analyte thereto.
It appears that Applicant is speaking to phasing/dephasing (or lead/lag effects) during sequencing by synthesis, however, there is no correlation or active step(s) provided in the method that particularly relate the optical signals to concordant positions and including optical signals arising during particular cycles of incorporation that coincide with a previous or subsequent cycle (i.e. speaking to the “neighboring” aspect).
Independent claim 74 provides a generalized performance of a plurality of cycles and detection of optical signals that does not afford any such knowledge of optical signals of a desired component relative to a prior or subsequent cycle and its respective signal/interference to the desired component.
Further to the above, and as in cl. 75, the recitation to “…are used to determined….” presents unclear metes and bounds to the active step(s) provided as a general recitation to being “used” is indefinite and indeterminate. The specification generally speaks to a deconvolution algorithm being applied to an image to deconvolute overlapping optical signals from each of said images, and generally discusses “nearest neighbor variable regression,” however such discussion is not particular in terms of the algorithm(s) developed, and the disclosure therein is not concordant with the claimed subject matter herein that is absent such particular imaging and comparisons thereof.
This further speaks to the lack of clarity of what is meant by “neighbor effect” as in cl. 76 and the step of “removing one or more interfering optical signals from neighboring polynucleotides...” as in cls. 80-82, and in which the specification does not provide clear metes and bounds as to what defines this terminology as claimed, such as particular function/equation, signal processing step(s) that provides this “neighbor effect.”
This is likewise seen in cls. 80-82 in which the recitation to “using a center-to-center distance…” presents vague and indeterminate active steps to the method that provide for the sought removal as a general “usage” is insufficient. The specification does not discuss this beyond general and prophetic discussion therewith as seen in pars. [0004,0005,0224,0234,0282], and in which such machine learning/AI and deconvolution algorithm(s) are not specified.
Additionally, and as discussed above, the pattern-dependent correction factor and its application to the plurality of signals in general are indefinitely defined in the disclosure, let alone these particular applications as in cls. 74-76 and 80-82.
Claim 77 is 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.
With regard to claim 77, the recitation to determination of one/both elements by “use of a trained machine learning algorithm” is indefinitely defined herein.
The written description fails to disclose the algorithm(s) for performing the claimed specific determinations and the general “use” of a trained machine learning algorithm provides unclear metes and bounds to the actual, active step(s) afforded.
See MPEP 2181, Section II, B:
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (“[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’”) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that “a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’” EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). “‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.” EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). “Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient.” 785 F.3d at 622, 114 USPQ2d at 1714. Thus, “[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.” Id., 114 USPQ2d at 1714
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021).
The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’” (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
Applicant’s specification is devoid of the algorithm(s) required for performing the functions as in claims 77. Examiner notes the general and prophetic discussion in pars. [0004,007,0078,0224,0277], for example.
However, no algorithm(s) is/are defined for the recited functions in the claims, nor the particulars of such “trained machine learning algorithm,” wherein the disclosure amounts to a general, prophetic discussion thereof that is drawn to categorical disclosure to field of machine learning at large and is without any particulars to that which has been developed and found for the present application and its sought functionalities as in claim 77.
The claims go beyond a general purpose computer and are not coextensive with the computer as defined in the MPEP passages cited above. Therefore, the claims are indefinite and rejected under 35 USC 112b/2nd.
Claims 80-82 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 recited step of “removing one or more interfering optical signals from neighboring polynucleotides…” is indefinitely provided herein.
The base claim 69 does not set forth particular detection steps that afford a desired component at a desired position to have its optical signal(s) read and further delineate particular detection of a neighboring polynucleotide thereto and its optical signal(s).
As similarly discussed above, it is noted that the general inclusive language that the one or more neighboring analytes are among the plurality of analytes does not provide clear metes and bounds as to those signals/positions being assessed so as to inform noise/interference imparted to a relatively positioned analyte thereto.
Response to Arguments
Applicant’s arguments with respect to claim(s) 69-71 and 74-90 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Initially, newly-added claims 84-90 are withdrawn from consideration as discussed above in the body of the action.
Further, in view of the amendments to the claims and further consideration thereto, claims 69-71 and 74-83 are rejected under 35 USC 101 for the reasons discussed above in the body of the action.
Further, in view of the amendments to the claims and further consideration thereto, claims 69-71 and 74-83 are rejected under 35 USC 112b/2nd for the reasons discussed above in the body of the action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Erlich et al. (“Alta-Cyclic: a self-optimizing…” Nature Methods Vol. 5, No. 8, pp. 679-682, August 2008) discloses .
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/NEIL N TURK/ Primary Examiner, Art Unit 1798