Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 2-16 have been examined.
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.
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Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,837,340. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite the same feature of receiving data or input, the data identifying medical information; determining an internal medical code associated with the medical information; determining genetic variants associated with the internal medical code; presenting the genetic variants in a graphical format using a computing device.
Allowable Subject Matter Over the Prior Art
The primary reason for indicating allowability over the prior art is the inclusions of the following limitations in the combination as recited.
Claim 2 is directed towards a method comprising:
generating, by a processor, a graphical user interface, the graphical user interface displaying a genetic variant comprising a chromosome, the identity of a gene, and a location of the gene within the chromosome, the graphical user interface comprising a selectable link to further information related to the displayed genetic variant;
presenting, on a display, the genetic variant in a graphical format using a computing device; and upon selecting the selectable link;
retrieving data related to the gene; and
modifying the graphical user interface to present the further information related to the displayed genetic variant;
For claim rejection under 35USC 101, the current invention recites “generating, by a processor, a graphical user interface, the graphical user interface displaying at least one of the determined genetic variants, the identity of a gene, and a location of the gene within the chromosome, the graphical user interface comprising a selectable link connecting the displayed genetic variant to further information associated with the displayed genetic variant”. Under MPEP 2106.04-07, the combination of recited additional elements in the recited claims is patent eligible because the claims as a whole integrate an abstract idea into practical application under Prong Two of Step 2A as described in the MPEP 2106.04-07. The claims are eligible because it is not directed to an abstract idea or any other judicial exception.
For claim rejection under USC 103, claim 2 closely relates to Colby (US. 20090307179) and Yakhini ( WO2004090100A2). Colby describes the likelihood of developing a phenotype (e.g., disease, disorder, condition or trait) can be calculated based on an individual's alleles or genotypes for one or more genetic variants associated with polygenic or multifactorial phenotypes, and may also include analysis of non-genetic factors such as environment and/or lifestyle habits (e.g., smoking habits, alcohol use, exercise habits, body mass index, obesity levels, diet, sun exposure or exposure to physical or mental stress. Yakhini discloses displaying gene- and/or protein- related data with respect to chromosome maps at locations identifying relevant positioning of the genes with which the gene- and/or protein related data are associated. Multiple experiments may be plotted onto the display adjacent one or more chromosome maps. Automatic extraction of genomic location, based on accession numbers or other unique identifiers and cross connection with expression data is provided.
However, the combined art does not disclose generating, by a processor, a graphical user interface, the graphical user interface displaying at least one of the determined genetic variants, the identity of a gene, and a location of the gene within the chromosome, the graphical user interface comprising a selectable link connecting the displayed genetic variant to further information associated with the displayed genetic variant.
The Foreign reference, WO2009117122A2, identifying by nucleic acid array or sequencing apparatus a set of genetic variants in an individual, where each of the genetic variants is correlated with a longevity phenotype, a suitability for military service, or a pediatrics or reproduction; and using a computer to determine the predisposition or carrier status of the individual for at least two phenotypes.
However, the Foreign reference does not disclose generating, by a processor, a graphical user interface, the graphical user interface displaying at least one of the determined genetic variants, the identity of a gene, and a location of the gene within the chromosome, the graphical user interface comprising a selectable link connecting the displayed genetic variant to further information associated with the displayed genetic variant.
The closest NPL reference “Refining the roles of genetic, environmental, and endogenous factors in Factor VIII activity levels” discloses the first goal of this dissertation was to characterize the genetic variations in F8 using 222 X chromosomes. The second was to determine if any of the variants are associated with FVIII:C levels, controlling for appropriate variables. We then attempted to replicate the association in a different population of unrelated white and black women. Finally, we investigated the role of depression as a possible non-genetic determinant of FVIII activity levels in these women.
However, the NPL reference does not disclose generating, by a processor, a graphical user interface, the graphical user interface displaying at least one of the determined genetic variants, the identity of a gene, and a location of the gene within the chromosome, the graphical user interface comprising a selectable link connecting the displayed genetic variant to further information associated with the displayed genetic variant.
Claims 2-16 would be allowable if rewritten to overcome the rejection(s) under Double Patenting, as set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/HIEP V NGUYEN/Primary Examiner, Art Unit 3686