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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16, 2026 has been entered.
Response to Arguments
Applicant’s arguments and amendment have persuasively overcome the fees issue, claim objections and the 112b rejections.
The remaining issues are addressed below.
101
Applicant argues:
In addition, the "identifying" and "determining" steps are not standalone mental observations. They are functional prerequisites for the computing device to obtain a third set of one or more images of a second subregion.
Examiner responds:
That these steps are used later does not prevent them from being mental observations.
Applicant argues:
A human cannot mechanically switch between physical object lenses in their mind,
change microscope depths of field via thoughts, or acquire new digital microscope images via mental effort.
Examiner responds:
This is merely taking the mental process of looking at something (perhaps squinting) and applying it to a generic computer, such as a microscope. One can mentally do all of this analysis, but one has to imagine moving the lens.
Applicant argues:
The requirement to physically obtain images from a different second subregion in response to a specific threshold number is a technical operation of the claimed system designed to overcome the three-dimensional cell distribution problem.
Examiner responds:
Physically obtaining images is use of generic computer components.
Applicant argues:
The approach recited in amended claim 1 can more precisely refocus on new subregions within the same broader region of the specimen in a time-saving manner.
Examiner responds:
The benefits over the previously manual process are due to this being performed on a computer.
Double Patenting
Applicant argues:
Under Jung, a prima facie case must provide a factual basis that puts the Applicant on notice of the precise grounds for rejection. For example, Jung explicitly pointed out that the initial and final office actions cited the specific column and lines in prior art of record (i.e., Kalnitsky) discussing the functionality of Kalnitskys controller 340, which would teach "first well-charge-level controller" in rejected claims.
Examiner responds:
The present claims are so similar to the conflicting claims from the double patenting rejection that Applicant is on notice. As an example, the first element of all three versions of claim 1 are below. Further, all of these claims are Applicant’s, and thus Applicant is particularly aware of the similarities and differences.
US12412267B2, claim 1, first element
US11416990B1, claim 1, first element
Present claim 1, first element
obtaining a first image associated with a first region of the cytology specimen through a first object lens having a first field of view and a first depth of field in the first field of view,
obtaining a first image associated with a first region of the cytology specimen through a first object lens having a first field of view, a first magnification and a first depth of field in the first field of view;
obtaining, by the computing device, a first image of a first region of the cytology specimen through the first object lens having a first field of view, a first magnification and a first depth of field in the first field of view;
Applicant argues:
The conclusory statements made on page 17 of the final Office action, i.e., the claims of the present application and Chen "are all directed to imaging for cytology," and Chen "is directed to the same problem" as the present application, clearly fail to provide the required notice.
Examiner responds:
These statements are not the mapping, these statements just show that the other patents are directed to the same problem as is part of the 103 combination with Ascierto (the prior art applied below).
Applicant argues:
Second, it is respectfully submitted that the Examiner's assertion that MPEP § 804 is merely suggestive because it uses the word "should" as opposed to "must" is an attempt to bypass the requirement to construe claims and determine specific differences. Without a claim- by-claim mapping, the Office has not met its burden of showing that the pending claims are patentably indistinct from the claims of Chen.
Examiner responds:
Every element has been addressed. One simply looks at the current claims, compares with the conflicting patents, and any differences are taught by Ascierto. The examiner is not required to rewrite all of the Ascierto claim mappings found below.
Applicant argues:
For example, amended claim 1 requires obtaining a third set of images of a different (i.e., second) subregion within the first region through the second object lens in response to a determination that a first number of target cells is not greater than a threshold number.
Examiner responds:
This is taught by Ascierto, and thus this is patentably indistinct over the conflicting claims.
Applicant argues:
Accordingly, amended claim 1 is patentable over the claims of Chen in view of Ascierto.
Examiner responds:
See the below updated claim mapping.
112
Applicant argues:
It is respectfully submitted that the Examiner's ability to perform a detailed § 102 mapping of "subregion" effectively demonstrates that the term is sufficiently definite to inform those skilled in the art of the scope of the invention.
Examiner responds:
This is not the standard. See, e.g., In re Packard, 751 F. 3d 1307 (Fed. Cir. 2014) where the claims were rejected as both indefinite and obvious (among other rejections). Packard explains “We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).” Packard at 1311.
102 and 103
Applicant argues:
it is respectfully submitted that Ascierto's generic disclosure of an imaging system that "may include... other optical system having one or more objective lenses" does not teach the coordinated process of obtaining different images using different lenses required by amended claim 1. See Para. [0175] of Ascierto.
Examiner responds:
“more than one objective lens” teaches both the different images and the different lenses because the claim does not require anything beyond that they are not the same instance of the thing. Applicant’s “coordinated process” does not have sufficient detail to distinguish over Ascierto.
Applicant argues:
The final Office action overlooked the claimed elements set forth above by concluding that the elements were "not invoked."
Examiner responds:
That the elements are not invoked is addressing the claim. See, e.g., MPEP 2111.04(II), “When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed” (quotation omitted). Schulhauser at 10.”
One option to avoid conditional claim language is to recite “determining that” instead of “determining whether” from the determining step and recite the obtaining a third set of images as an active step (potentially with a wherein clause stating that the obtaining step is in response to).
Applicant argues:
Moreover, it is respectfully submitted that the Examiner's position of not considering these claimed elements directly contradicts the ruling in Sierra Wireless v. Sisvel S.P.A. (Fed. Cir. Mar. 10, 2025).
Examiner responds:
First, Sisvel is about an issued patent, not a case being examined, and this is an important difference because different standards apply. Second, Sisvel does not support Applicant’s point. Rather, Sisvel says “Here, we reject the Board's conclusion because the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.” Sierra Wireless, ULC v. Sisvel SPA, 130 F. 4th 1019 (Fed. Cir. 2025). The Federal Circuit’s comment “where their preconditions apply” is what is happening in this case – if the preconditions do not apply, the claim limitation is not invoked.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/403,660, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claims of this application. For example, Application No. 63/403,660 does not disclose the claimed “wherein the second object lens is different from the first object lens,” because it is silent regarding the lenses. (For context, the current specification is 22 pages, whereas the provisional is three pages.)
Additionally, Applicant admitted that 63/403,660 lacks priority, see remarks, page 5.
Therefore, none of the claims are entitled to the priority date of Application No. 63/403,660.
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 1-16 and 19 (all claims) are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process) without significantly more.
Step 1: Claim 1 (and its dependents) recite a method, and processes are eligible subject matter.
Step 2A, prong one: All of the elements of claims 1-16 and 19 are a mental process because a person can look at a glass slide and identify regions based on what they see. See, e.g., Specification [0005] describing this as potentially manual, and not identifying advantages to doing this digitally other than benefits that flow from this being done on a computer. As noted in the mapping of claim 8, the claimed wavelengths are in the visible color spectrum.
MPEP 2106.04(a)(2)(III)(C) explains that use of a generic computer or in a computer environment is still a mental process. In particular, this section begins by citing Gottschalk v. Benson, 409 US 63 (1972). “The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.” In Benson the Supreme Court did not separately analyze the computer hardware at issue; the specifics of what hardware was claimed is only included in an appendix to the decision.
Because there are no additional elements, no further analysis is required for Step 2A, prong two or Step 2B.
Claims that recite technical steps that are not analogous to the techniques in Specification, [0005] are expected to overcome this rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. US 11416990 and US 12412267 in view of the prior art as applied below.
Both the pending claims and the conflicting patent claims are all directed to imaging for cytology. Therefore, the conflicting patent is directed to the same problem as the present application. Therefore, all of the conflicting patents are directed to the same problem as the present application. Further, any differences between the present claims and the claims in any of the conflicting patents are obvious in view of the prior art as applied below. It would have been obvious to one of ordinary skill in the art, before the effective filing date, to combine the below prior art with any of the conflicting patents for implementation details (especially as the patent claims lack implementation details). Based on the findings herein, this is an example of “(A) Combining prior art elements according to known methods to yield predictable results.” MPEP 2143.
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 1-16 and 19 (all claims) 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.
Claim 1 recites “wherein the first subregion and the second subregion are different subregions within the first region,” but also that both the first and second subregions are imaged through the second objective lens. The conflict between these regions being different but being imaged through the one lens creates indefiniteness.
Claim 4 recites “defines one or more parts.” While a field of view defining a single subregion is definite, it is unclear how to determine that a field of view is defining more than one subregion.
Claims 11 and 16 recite “the alert,” but this lacks sufficient antecedent basis. MPEP 2173.05(e). Note that the recitation of the alert was moved from claim 1 to claim 19.
Dependent claims are also rejected.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-16 and 19 (all claims) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by public use and/or on sale bar activities.
The examiner has attached a machine translation of an article from Global Bio & Investment Monthly titled “Medical Intelligence Must-Have Digital Cytology Directly Targets the US Market,” dated December 28, 2021, by Wu Pei’an, retrieved from https://news.gbimonthly.com/tw/magazine/article_show.php?num=45614 (“GBI article”).
The examiner has also attached a copy of:
Ou YC, Tsao TY, Chang MC, Lin YS, Yang WL, Hang JF, Li CB, Lee CM, Yeh CH, Liu TJ. Evaluation of an artificial intelligence algorithm for assisting the Paris System in reporting urinary cytology: a pilot study. Cancer cytopathology. 2022 Nov;130(11):872-80, retrieved from https://doi.org/10.1002%2Fcncy.22615 (“Cancer article”)
As an overview, the GBI article is available as prior art, and shows that AIxMED’s AIxURO software was in public use and on sale. The Cancer article also shows AIxMED’s AIxURO and is similar enough to the AIxURO software from the GBI article that the examiner is inferring that the AIxURO software described in the Cancer article (which was submitted within one year of Applicant’s priority date) is the same software as the AIxURO software from the GBI article. An affidavit or declaration detailing the differences may be successful in rebutting this inference.
The GBI article shows that the AIxURO software was ready for patenting. See the below image from the article, and note what is shown on the computer screen:
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The software shown in the above figure appears to be from the same AIxURO software as that from Fig. 1(A) of the Cancer article:
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The Cancer article was submitted in March of 2022, shortly after the GBI article came out in December 2021, and the closeness in time supports the idea that these two images are of the same AIxURO software.
Here, both the application and AIxURO are directed to counting cells from a Whole Slide Image to detect cancer using AI. Compare the “Background of the Invention” section of the current application to the GBI subheading “60 cells on a slide !? Target the most difficult exercises in urological cytopathology.” Further, compare how this section of the GBI article specifically states “cytopathology needs to examine individual cells scattered in liquid 3D space” to this specification stating “One reason is that the cytology specimen on the glass slide may contain single cells and cell groups distributed in a three-dimensional space.” Specification, [0005].
Claims 1-12 and 19 (all claims except those rejected under 103, below) are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by U.S. Pat. Pub. 20170270346 (“Ascierto”)
1. A method for a system having a computing device, a first object lens, and a second object lens to identify a cytology specimen including target cells, comprising: (Ascierto, [0175] “The imaging system may include, for example, a digital camera, a microscope or other optical system having one or more objective lenses … .” Fig. 1, computer 107.)
obtaining, by the computinq device, a first image of a first region of the cytology specimen through the first object lens having a first field of view, a first magnification and a first depth of field in the first field of view; (Ascierto, Fig. 11. Fig. 11 shows whole slide images, and these teach the claimed first and second images. Ascierto teaches using a lens, see [0175] “The imaging system may include, for example, a digital camera, a microscope or other optical system having one or more objective lenses, and light sources, as well as a set of spectral filters.”)
obtaining, by the computing device, a second set of one or more images of a first subregion within the first region through the second object lens having a second field of view, a second magnification and a second depth of field in the second field of view, (Ascierto, Fig. 11. Fig. 11 shows whole slide images, and these teach the claimed first and second images. Ascierto teaches using a lens, see [0175] “The imaging system may include, for example, a digital camera, a microscope or other optical system having one or more objective lenses, and light sources, as well as a set of spectral filters.”)
wherein the second object lens is different from the first lens (Ascierto, [0175] “The imaging system may include, for example, a digital camera, a microscope or other optical system having one or more objective lenses … .” “More than one objective lens” teaches the claimed first and second lenses being different (in the sense that they are different instances, the claim does not require that the lenses magnify differently).)
identifying, by the computing device, a first number of the target cells distributed in a space of the cytology specimen; (Ascierto, abstract, “An immune score and/or immune-related score may be generated based on the cells counted in each FOV.”)
determining, by the computing device, whether the first number is greater than a threshold number of target cells; (Ascierto, claim 3, “and applying cell-type and cancer-type specific rules on the cell count … for calculating the immune score.”)
in response to determining, by the computing device, that the first number is not greater than the threshold number, obtaining a third set of one or more images of a second subregion within the first region through the second object lens and identifying a second number of the target cells distributed in a second space defined by the second subregion and the first depth of field, wherein the first subregion and the second subregion are different subregions within the first region. (Not invoked)
2. The method of claim 1, wherein the space is defined by the first subregion and the first depth of field and the first number of the target cells distributed in the space are identified from the second set of one or more images. (Ascierto, abstract, “An immune score and/or immune-related score may be generated based on the cells counted in each FOV.” Ascierto’s “each” teaches the claimed second set.)
3. The method of claim 2, wherein the first field of view defines the first region. (Ascierto, Fig. 11.)
4. The method of claim 2, wherein the second field of view defines one or more parts of the first subregion. (Ascierto, Fig. 11.)
5. The method of claim 2, wherein the second magnification is greater than the first magnification and the second depth of field is less than the first depth of field. (Ascierto, [0207] “a high resolution input image 631 from the image acquisition system 502,111, computing or receiving a low resolution version of the high resolution input image 631.” Moving closer to the image (i.e., moving to a lesser depth of field) results in greater magnification and lower resolution (similar to how zooming in on a digital image makes it grainier).)
6. The method of claim 2, prior to obtaining the first image, further comprising:
obtaining images of other regions of the cytology specimen through the first object lens; (Ascierto, Fig. 11.)
determining a first layer of the cytology specimen that includes the target cells based on the images of the other regions, (Ascierto, claim 1 “or depicting a tissue section adjacent to one of the tissue sections depicted by the multiple marker images” Ascierto’s adjacency teaches the claimed “other regions.”)
and the first depth of field; and (Ascierto, Fig. 11.)
obtaining images of the first layer through the first object lens, wherein one of the images of the first layer is the first image. (Ascierto, Fig. 11.)
7. The method of claim 2, wherein the image characteristics of the target cells include a contrast, a lightness, a shape and color information of the target cells. (Ascierto, [0111] “A “blob” or “pixel blob” as used herein is a region in a digital image that differs in properties, such as brightness or color, compared to surrounding regions.” [0048] “identifying pixel blobs in the tumor image whose intensity values are above a threshold; … the shape of the pixel blob.” Ascierto’s intensity teaches the claimed contrast.)
8. The method of claim 7, wherein the color information is obtained through a first light with a first range of wavelengths from 530 nm to 630 nm, a second light with a second range of wavelengths from 450 nm to 560 nm or a third light with a third range of wavelengths from 450 nm to 530 nm. (Ascierto, [0173] “an RGB image.” The claimed wavelengths correspond to red, green and blue light respectively.)
9. The method of claim 7, wherein the color information includes a range of R, G and B values in an RGB (Red, Green, Blue) domain or a range of Hue value in a HSV (Hue, Saturation, Value) domain. (Ascierto, [0173] “an RGB image.”)
10. The method of claim 2, further comprising, after determining that the first number is not greater than the threshold number, determining whether a sum of the first number and the second number is greater than the threshold number. (Not invoked, see the claim interpretation in the 112(d) rejection.)
11. The method of claim 10, in response to determining the sum greater than the threshold number, prompting the alert; and in response to determining the sum not greater than the threshold number, obtaining a fourth set of one or images of a third subregion within the first region through the second object lens or a fifth set of one or more images of a fourth subregion within a second region the cytology specimen, wherein the first region and the second region are different regions from each other. (Not invoked, see the claim interpretation in the 112(d) rejection.)
12. The method of claim 2, wherein the obtaining the second set of one or more images further includes driving the second object lens to focus a first space of the cytology specimen defined by the first subregion and the second depth of field and obtaining an image of the first space to be one of the second set of one or more images. (Ascierto, Fig. 11)
19. The method of claim 1, further comprising, in response to determining that the first number is greater than the threshold number, prompting an alert. (Ascierto, claim 16, “generating a prognostic score based on the cells counted in the FOVs, wherein the prognostic score indicates a clinical outcome of a patient.”)
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 following is a quotation of 35 U.S.C. 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, 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.
Claims 13-16 (the claims other than those rejected under 102) are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 20170270346 (“Ascierto”) in view of legal precedent (MPEP 2144.04).
13. The method of claim 1, further comprising obtaining additional images of other regions of the cytology specimen through the first object lens before obtaining the second set of one or more images, wherein the identifying the first number of the target cells is before obtaining the second set of one or more images but after obtaining the additional images. (Ascierto, Fig. 11.)
Ascierto is not relied on for the claim language regarding the order of the steps (e.g., “before”). MPEP 2144.04(IV)(C), “In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results).” The examiner’s review of the specification has not identified any new or unexpected results, nor any criticality to this order. Specification, both [0047] and [0060] state “Although the blocks are illustrated in a sequential order, these blocks may also be performed in parallel, and/or in a different order than those described herein.”
14. The method of claim 13, wherein the first number of the target cells distributed in the space are identified from the first image and the additional images. (Ascierto, Fig. 11.)
15. The method of claim 14, wherein the obtaining the second set of one or more images further consists of obtaining one single image of the first subregion. (Ascierto, Fig. 11. See also, Ascierto, [0089] “Alternatively, the method comprises generating the marker images by taking an image from each of a plurality of single stain slides respectively comprising one of multiple adjacent tumor tissue sections.”)
16. The method of claim 13, wherein the prompting the alert is before obtaining the second set of one or more images. (Ascierto, Fig. 11. The legal precedent as applied for claim 13 applies equally here.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10489633, claim 1, “electronically generating a plurality of patches of different sub-regions of a region of interest (ROI) from a digital pathology or cytology whole slide image (WSI) image”
US 9159129, title, “Generating image-based diagnostic tests by optimizing image analysis and data mining of co-registered images”
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 DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
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/DAVID ORANGE/Primary Examiner, Art Unit 2663