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 .
Claim Objections
Claim 8 are objected to because of the following informalities:
Claim 8 recites “Artificial Intelligence” and should be amended to “artificial intelligence”
Appropriate correction is required.
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 7-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 7 recites “using probabilistic modeling based on artificial intelligence algorithms associated with said server derived from learning associated with classification of prior images of relevant tissue”.
Attempts to claim a process without setting forth necessary steps involved in the process generally raises an issue of indefiniteness (see MPEP 2173.05(q)). In this case, without positively reciting the “mapping step”, it is unclear how the server performs classification of the tissue pathology solely based on probabilistic modeling/algorithms associated with prior tissue images (see Spec., para [0129], [0133]).
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim. Claims 8-13 are rejected as being dependent on independent claim 7.
Claim 12 recites “other modalities” and is unclear whether these other modalities are claimed elements of the invention or merely an intended use recitation of the server. For prosecution, the limitation will be interpreted as an intended use recitation of the server.
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 7-13 are rejected because the claimed invention is directed to abstract ideas and laws of nature without significantly more. Claim 7 recites abstract ideas (receiving input, providing image analysis, examination) and math (classification using modeling based on algorithms). This judicial exception is not integrated into a practical application because once the image analysis, examination, and classification using modeling based on algorithms is performed, then no action is taken. Therefore, there is no particular practical application of the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 7 recites additional elements (a bed for tissue samples, and a 3D camera on a surface above the bed) that are well-understood, routine, and conventional. The claimed server is a general purpose computer (see #106 in Fig. 1 and [127] of instant specification), and per MPEP 2106.04(a)(2)III using a computer/controller to perform the abstract idea is still considered reciting an abstract idea or mental process. Claim 8-13 dependent on claim 7 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.
Claims 7-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ragan (US20120208184A1 published 08/16/2012).
Regarding claim 7, Ragan teaches a system for automatic gross-examination of tissue samples, the system comprising:
a bed for placing a tissue sample thereon (a sample motorized stage 62 with a tissue sample 65 – Fig. 2A);
a top surface (a surface of a vertical scanner 58 – Fig. 2A) positioned superior to said bed and to said tissue sample on said bed (the surface of the vertical scanner 58 positioned above the sample motorized stage 62 and the tissue sample 65 – Fig. 2A);
one or more 3D cameras (a first PMT channel 50, second PMT channel 52 – Fig. 2A) attached to said top surface (3D tissue optical imaging techniques, two-photon microscopy (TPM) – paragraph 3); and
a server (a processor 42 – Fig. 2A) receiving input from said one or more 3D cameras wherein said server is configured to store data and/or information related to the tissue sample (The processor 42 can then analyze image data from before and after sectioning – Fig. 2A), including the total size and dimensions of the tissue sample and any tumor therein (the processor 42 having memory 46 to store images of the tissue and any tumors therein – Fig. 2A and paragraph 35), and configured to provide automated image analysis, automatic gross examination, and classification of the pathology of tissue using probabilistic modeling based on artificial intelligence algorithms associated with said server (“associated with said server” is an intended use of the server and is deemed to read on a generic computer capable of being used with artificial intelligence algorithms) derived from learning associated with classification of prior images of relevant tissue (the processor 42 is connected to a network and therefore capable to being used with a probabilistic modeling based on artificial intelligence algorithms – paragraph 55).
Regarding claim 8, Ragan teaches the system of claim 7, wherein the Artificial Intelligence algorithms associated with said server further provide for probabilistic modeling as to a prognosis of abnormalities detected in the tissue sample (the processor 42 is connected to a network and therefore capable to being used with a probabilistic modeling as to a prognosis of abnormalities – paragraph 55).
Regarding claim 9, Ragan teaches the system of claim 7, wherein the server contains algorithms that provide input as to the size and dimensions of a tumor in the tissue sample (the processor 42 is connected to a network and therefore capable to being with algorithms that provide input as to the size and dimensions of a tumor in the tissue sample – paragraph 55).
Regarding claim 10, Ragan teaches the system of claim 9, wherein the server outputs information related to the size and dimensions of the tissue and/or tumor to another apparatus (the processor 42 is connected to a network and therefore capable of outputting information related to the size and dimensions of a tumor in the tissue sample – paragraph 55).
Regarding claim 11, Ragan teaches the system of claim 7, wherein the image analysis provides one or more selected from a group consisting of specimen size (a whole organ 3D image of a heart having size data – Fig. 1G and paragraph 31), specimen texture, margins of a tumor in said specimen, character of said specimen, nodal status of any tumor, and dimensions of any tumor.
Regarding claim 12, Ragan teaches the system of claim 11, wherein the images obtained by the system are compared by Al algorithms to images obtained by other modalities approved by medical bodies (the processor 42 is connected to a network and therefore capable to being used with Al algorithms to compare the images obtained by the system to images obtained by other modalities – paragraph 55).
Regarding claim 13, Ragan teaches the system of claim 7, wherein the one or more 3D cameras are movable (the first PMT channel 50 and second PMT channel 52 are capable of being moved by transporting the imaging and processing system 40 – Fig. 2A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TINGCHEN SHI whose telephone number is (571)272-2538. The examiner can normally be reached M-F 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.C.S./Examiner, Art Unit 1796
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
Prosecution Insights