DETAILED ACTION
Response to Arguments
Applicant has amended claims 1-2, and 4-9, and canceled claim 3; claims 1-2, and 4-10 are currently pending.
Applicant's amendments and arguments filed 1/6/2026 have been fully considered, but amendments still raise 35 U.S.C. 101 and 112(b) issues as discussed in detail below.
Applicant argues that the addition of “the at least one third image includes, out of the plurality of specimen images except the first image and the second image, an image having a smallest difference value obtained by calculating a difference in luminance value from the second image on a pixel-by-pixel basis.” Is not an abstract idea and amounts to significantly more than the judicial exception. Examiner respectfully disagrees. Although “calculating a difference in luminance value from the second image on a pixel-by-pixel basis” is not considered to be a mental process it is considered to be math. This difference is not utilized in the claim, it is just calculated and therefore does not integrate the claim into a practical application. Examiner agrees that utilization of this difference is part of the disclosed technical solution. However this is not currently reflected in the claim and therefore the 35 U.S.C. 101 rejection is maintained. Examiner recommends adding limitations from cancelled claim 3 that the third image is selected using the smallest difference. That in conjunction with the smallest difference being obtained by calculating a difference in luminance value from the second image on a pixel-by-pixel basis would be considered to integrate the claimed invention into the practical application.
Applicant asserts that antecedent basis is now found for “the difference” in claims 4, 5 in claim 1. Examiner asserts that the limitation is still unclear because claim 1 now recites “a smallest difference value” and “a difference in luminance value.” While the smallest difference value is “obtained by calculating a difference in luminance value” they can be two different values. Therefore the 35 U.S.C. 112(b) rejection is maintained.
Applicant’s amendment to claim 7 overcomes the 35 U.S.C. 112(b) rejection, therefore the rejection is withdrawn.
Applicant asserts “the image” in claim 8 refers to on of the “plurality of images.” Given that first, second, a plurality of third, specimen images, and a plurality of images are selected are all claimed previously the use of “the image” is considered to be unclear and the 35 U.S.C. 112(b) rejection is maintained.
Applicant asserts that claim 9 has been amended as recommended. However, “a registration amount” is still recited creating clarity issue as is further detailed in the 35 U.S.C. 112(b) rejection below.
As such this Action is made FINAL.
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.
Claim 4 recites the limitation " the difference from the second image" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear which “difference” is being further limited from claim 1 the “smallest difference value” or the “difference in luminance value.”
Claim 5 recites the limitation “wherein the difference is evaluated by an index value based on a total value of absolute values of luminance differences between pixels at positions corresponding to each other between two images for all the pixels.” (emphasis added) There is insufficient antecedent basis for this limitation in the claim. It is unclear which “difference” is being further limited from claim 1 the “smallest difference value” or the “difference in luminance value.”
Claim 6 recites the limitation “the difference” There is insufficient antecedent basis for this limitation in the claim. It is unclear which “difference” is being further limited from claim 1 the “smallest difference value” or the “difference in luminance value.” Claim 7 is rejected as being dependent on claim 6.
Claim 8 recites the limitation “the difference” There is insufficient antecedent basis for this limitation in the claim. It is unclear which “difference” is being further limited from claim 1 the “smallest difference value” or the “difference in luminance value.” Claim 8 further recites the limitation "the image" in line 4. Since a first, second, and a plurality of specimen images have been claimed it is unclear if one of these images is meant or a different image.
Claim 9 recites the limitation " wherein an amount obtained by combining a registration amount between the third image and the first image and a registration amount between the second image and based on the at least one third image is set as a registration amount between the second image and based on the first image." (emphasis added) Claim 1 recites “a registration amount between the first image and the third image and a registration amount between the second image and the third image” and “a registration amount between the first image and the second image.” Therefore it is unclear if claim 9 is reciting new registration amounts or referring to already claimed registration amounts.
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 1-2, 4-7, 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (a mental process) without significantly more. The flow chart in MPEP 2106, Subject Matter Eligibility Test For Products and Processes, will be referred to establish ineligible subject matter.
Regarding claim 1, Step 1: The claim(s) recite(s) “a specimen image registration method” which would be categorized as a method under the 4 statutory categories. See MPEP 2106.03. Step 2A Prong One: However, the claim is further directed to an abstract ideas (mental processes and math) of performing registration between a first image and a second image different from each other; calculating a difference in luminance value from the second image on a pixel-by-pixel basis. Performing registration between two images can be considered as aligning the images and can be done mentally. Selecting at least one third image different from the first image and the second image from the plurality of specimen images. Selecting an image can be done mentally. Obtaining a registration amount between the first image and the third image and a registration amount between the second image and the third image. Aligning two images with a third image can be done mentally. Obtaining a registration amount between the first image and the second image based on the registration amount between the first image and the third image and the registration amount between the second image and the third image. Having two images aligned to a third image, one can mentally see that they are also aligned to each other. Calculating difference values is considered math, and because the difference values are not utilized in the image registration in the current claim they do not integrate the claimed invention into a practical application. (see Examiner recommendation in response to arguments). See MPEP 2106.04 subsection II and 2106.04(a)(2) subsection III. Step 2A Prong Two: Additional elements include out of a plurality of specimen images obtained by applying a plurality of types of staining to a biological specimen and imaging the stained biological specimen for each staining. This is considered mere data gathering, which in MPEP 2106.05(g) (3) is insignificant extra-solution activity. See MPEP 2106.04(d) Step 2B: The additional claim elements do not amount to significantly more than the judicial exception. With regards to out of a plurality of specimen images obtained by applying a plurality of types of staining to a biological specimen and imaging the stained biological specimen for each staining, this is mere data gathering, and is claimed in a way that is well understood, routine, and conventional. See MPEP 2106.05.
Regarding claim 2, additional limitations are to selecting a third image “having a highest degree of similarity to the second image.” This could be performed mentally with similarity being the closest image time wise. Therefore this claim is not considered eligible subject matter.
Regarding claim 4, additional limitations are to calculating the difference from the second image and the plurality of specimen images to select the third image. This could be performed mentally for instance with the difference being in time the image was captured. Therefore this claim is not considered eligible subject matter.
Regarding claim 5, additional limitations are to evaluating the difference by an index value based on a total value of absolute values of luminance differences. However, these differences are not utilized in the claim and are therefore considered math(see claim 1 rejection). Therefore this claim is not considered eligible subject matter.
Regarding claim 6, additional limitations are to a plurality of third images are selected in ascending order of the difference out of the specimen images. This could be performed mentally for example if the difference in images is in in time the images were captured.
Regarding claim 7, additional limitations are to wherein for each of the plurality of third images, the registration amount between the third image and the first image and the registration amount between the third image and the second image are respectively obtained. Aligning images could be performed mentally. Therefore this claim is not considered eligible subject matter.
Regarding 8, use of term “the image” is too ambiguous (first, second, a plurality of third, specimen images, and a plurality of images are selected are all claimed) to determine 101 eligibility.
Regarding claim 9, additional limitations are to combining registration amounts from the first and third image with the third and second image. This could be performed mentally, when two images are aligned to a third image one can mentally see that they are aligned to each other and that combining the alignment amount leads to alignment between first and second images..
Regarding claim 10, additional limitations are to Step 2A Prong Two: Additional elements include computer elements (a memory with instructions). With regards to the computer elements MPEP 2106.04 (A2) III. Metal Process establishes that the addition of a generic computer-implemented steps does not integrate the judicial exception into a practical application. Step 2B: The additional claim elements do not amount to significantly more than the judicial exception. With regards to the computer elements MPEP 2106.04 (A2) III. Metal Process establishes that the addition of a generic computer- implemented steps does not integrate the judicial exception into significantly more. Therefore, the claim is not eligible subject matter.
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 MEREDITH TAYLOR whose telephone number is (571)270-5805. The examiner can normally be reached M-Th 7:30-5. Examiner’s email is Meredith.taylor@uspto.gov.
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/MEREDITH TAYLOR/Examiner, Art Unit 2671
/VINCENT RUDOLPH/Supervisory Patent Examiner, Art Unit 2671
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