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 .
Response to Arguments
Applicant's arguments filed 12/09/2024 have been fully considered but they are not persuasive. Applicant agues that limitations [2] and [4] do not recite “certain methods of organizing human activity” because they do not fall within the enumerated sub-groupings of fundamental economic practices, commercial/legal interactions, or managing personal behavior. This argument is unpersuasive since the Office action does not rely on the enumerated examples as an exhaustive list, but rather applies the well-establishes principle that classification, comparison, and rule-based selection of information constitute abstract ideas when claimed at a high level of generality. Limitations [2] and [4] constitute organizing and classifying information based on relationships, which falls within the abstract idea grouping of managing information through categorization and correlation, regardless of whether the information pertains to economics or biology. Applicant’s argument that limitation [4] does not recite a mathematical concept is also not persuasive. The Office action does not allege that limitation [4] recites an explicit equation. Rather, limitation [4] recites correlation information and selection based on category associations, which necessarily involve relationships between variables, even if not expressed in symbolic form. Applicant’s argument that limitations [2] and [4] do not recite mental processes is also unpersuasive. The proper inquiry is whether the claim recites steps that are conceptually capable of being performed mentally, not whether they are efficient or practical at scale. Limitations [2] and [4] are steps that can be conceptually performed by a human, even if aided by reference materials. Applicant’s argument that limitations [1] and [3] integrates any abstract idea into a practical application is not persuasive. Limitations [1] and [3] are mere data input and output steps, which are expressly identified in MPEP 2106.04(d) as insufficient to integrate an abstract idea into a practical application. Referencing a flow cytometer does not meaningfully limit the claim because the processing unit does not control the flow cytometer, does not modify its operation, and does not improve its functioning. The claim does not apply the abstract idea in a manner that effects a technological improvement to flow cytometry or to computer technology itself. Applicant’s argument that the claims recite significantly more is also not persuasive. It should first be noted that the claim does not recite how the alleged technological solution is achieved beyond generic data processing steps of obtaining data, categorizing data, correlating data, and outputting results. No specialized algorithm, data structure, or unconventional processing technique is recited. Second the absence of § 102 of § 103 rejections is not dispositive of whether claim elements are well-understood, routine, and conventional for the purposes of § 101, as expressly stated in MPEP 2106.05(d). Eligibility is a separate inquiry from novelty. As stated previously, the claim does not improve computer capabilities, nor does it improve flow cytometry technology. Instead, it merely automates a decision-making process regarding phosphor selection, which courts have consistently found insufficient to confer eligibility. Accordingly the rejection of claims 1-21 under 35 USC § 101 is maintained.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea, namely collecting, classifying, correlating, and selecting information based on defined rules and relationships, and processing the result.
Claim 1 recites:
obtaining an indication of phosphors usable for analysis;
generating a combination list of phosphors;
classifying biomolecules into expression level categories;
classifying phosphors into brightness categories; using correlation information between phosphors; and
selecting phosphors based on the association between expression level categories and brightness categories (a rule-based decision process that could be performed mentally or with a pen and paper and merely automated using a generic computer).
These limitations collectively describe organizing and analyzing information using rules and classifications, which constitutes an abstract idea under controlling precedent (Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)).
The claim further recites outputting the resulting combination list for display, which is merely presenting information, an activity that is also abstract.
This judicial exception is not integrated into a practical application because the generically recited information processing apparatus, processing unit, and display device perform their routine and conventional functions of receiving data, processing data, and displaying results. The claim does not recite any particularized computer architecture, specialized data structure, or improvement to computer functionality.
Claim 1 recites a flow cytometer that is merely referenced as a field of use, which is insufficient to confer patent eligibility.
The combination of elements therefore amounts to nothing more than the application of an abstract idea using generic computer components, which does not transform the claim into patent-eligible subject matter.
The analysis of claims 19-21 is similar to the analysis of claim 1 and are therefore also not considered patent eligible.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARCUS H TANINGCO whose telephone number is (571)272-1848. The examiner can normally be reached Monday-Friday 9am-6pm EST.
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/MARCUS H TANINGCO/ Primary Examiner, Art Unit 2884
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