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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Notice to Applicant
This communication is in response to the amendment filed 02/23/2026. Claims 1-4, 6-13, 16, 18-19 have been amended. Claims 5, 14-15, 17, 20, 28-33 have been canceled. Claims 1-4, 6-13, 16, 18-19, 21-27 are presented for examination.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line(s) 7, “a non-transitory, computer-readable medium having one or more processors” seems to be a grammatical error. Examiner recommends amending it to read -- a non-transitory, computer-readable medium; --.
Appropriate correction is required.
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 1-4, 6-13, 16, 18-19, 21-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to a device which is within the four statutory categories (i.e., machine). Claim 16 is drawn to a method which is within the four statutory categories (i.e., method).
Independent claim 1 (which is representative of independent claim 16) recites… generate a machine readable code to uniquely identify a biopsy sample; wherein the biopsy sample is processed by performing a plurality of functions comprising obtaining one or more slides from the biopsy sample, and digitizing the one or more slides; generate one or more scannable codes associated with the one or more slides; wherein each slide of the one or more slides comprises a biopsy slice from the biopsy sample, a slide label, and a scannable code of the one or more scannable codes; cause at least one electronic record to be updated or created to comprise a case identifier, and to logically associate the machine readable code of the biopsy sample with the one or more scannable codes of the one or more slides; receive scanned sample information read from at least one of the machine readable code or at least one of the one or more scannable codes; and receive function-related data related to each function of the plurality of functions by: dynamically determining, based on the scanned sample information, an [display] of a series of [displays] for inputting information associated with the function, the [display] comprising template information comprising incomplete input data, one or more prompts for entering information to satisfy the incomplete input data, and one or more selectable [display] objects comprising pre-generated values for satisfying the one or more prompts; …; detecting a selection of a selectable [display] object of the one or more selectable [display] objects relative to a prompt of the one or more prompts, the selectable [display] object to comprise one or more of the pre-generated values; and updating the incomplete input data of the [display] to comprise at least one of the one or more pre-generated values of the selectable [display] object; and the [display] comprising a button for text editing, and a button for printing a cassette via the printer; wherein printing a cassette comprises inking or etching a patient identifier onto a surface of the cassette.
Independent claim 16 further recites… processing a biopsy sample at a technician station.
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions), but for the recitation of generic computer components. That is, other than reciting a “system” (claims 1, 16), the claim encompasses rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data). If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., A laboratory information system, comprising: a dynamic technician interface; a plurality of technician stations having a location for processing tissue samples, and entering tissue sample and patient information into a server of the laboratory information system; a scannable code device and a printer; a non-transitory, computer-readable medium having one or more processors; and a memory storing instructions; a series of interfaces; one or more selectable interface objects; causing the interface to be presented via a technician terminal). Claim 16 recites additional elements (i.e., a laboratory information system (LIS) having a server device; an interface of a series of interfaces; causing the series of interfaces to be presented via at least one technician terminal of the technician station; one or more selectable interface objects; printing a cassette with the patient identifier onto a surface of the cassette by inking or etching). Looking to the specifications, a laboratory information system having computing stations having a terminal with interfaces with selectable interface objects, a server, a non-transitory, computer-readable medium, one or more processors, a memory storing instructions is described at a high level of generality (¶ 0030-0031; ¶ 0096-0099; ¶ 00102), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, “a scannable code device” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., scanning data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “a printer” and “printing a cassette with the patient identifier onto a surface of the cassette by inking or etching” only invokes the printer merely as a tool in its ordinary capacity to perform an existing process (i.e., printing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “cause the interface to be presented via a technician terminal” and “causing the series of interfaces to be presented via at least one technician terminal of the technician station” only invokes the terminal merely as a tool in its ordinary capacity to perform an existing process (i.e., displaying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a laboratory information system having computing stations having a terminal with interfaces with selectable interface objects, a server, a non-transitory, computer-readable medium, one or more processors, a memory storing instructions) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Also, “a scannable code device” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., scanning data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “a printer” and “printing a cassette with the patient identifier onto a surface of the cassette by inking or etching” only invokes the printer merely as a tool in its ordinary capacity to perform an existing process (i.e., printing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “cause the interface to be presented via a technician terminal” and “causing the series of interfaces to be presented via at least one technician terminal of the technician station” only invokes the terminal merely as a tool in its ordinary capacity to perform an existing process (i.e., displaying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception.
Dependent claims 2-4, 6-13, 18-19, 21-27 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2-3, 8-13, 18, 23-27 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 4, 19 further recites the additional elements of “cause the printer to print the machine readable code and the one or more scannable codes” and “at least one printer to print the one or more scannable codes and the cassette,” respectively, which only invokes the printer merely as a tool in its ordinary capacity to perform an existing process (i.e., printing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 6, 19, 21 further recites the additional elements of “a scanner device of at least one technician station,” which only invokes the scanner device merely as a tool in its ordinary capacity to perform an existing process (i.e., scanning information), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 7, 19, 22 further recites the additional elements of “a camera of at least one technician station,” which only invokes the camera merely as a tool in its ordinary capacity to perform an existing process (i.e., taking a picture), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the abstract idea grouping of “Certain Methods of Organizing Human Activity,” and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 6-13, 16, 18-19, 21-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2009/0222746 A1 (hereinafter referred to as "Chirica") in view of U.S. Patent App. Pub. No. US 2020/0400930 A1 (hereinafter referred to as "D'COSTA") and U.S. Patent App. Pub. No. US 2010/0167334 A1 (hereinafter referred to as “Williamson").
Regarding (currently amended) claim 1, Chirica teaches a laboratory information system, comprising:
a dynamic technician interface (Chirica: ¶ 0065; ¶ 0087; ¶ 0090);
a plurality of technician stations having a location for processing tissue samples, and entering tissue sample and patient information into a server of the laboratory information system (Chirica: ¶ 0051);
a scannable code device (Chirica: ¶ 0054, i.e., “stations may include a barcode scanner”) and a printer (Chirica: ¶ 0054, i.e., “stations may include…a printer”);
the dynamic technician interface comprising a button for text editing (Chirica: ¶ 0089, i.e., “user input may be received in numerous ways, such as, for example, by keyboard entry”; ¶ 0090, i.e., “receive selections from users at workstations via active components within the GUI (e.g., a clickable area and/or a pushbutton within the virtual laboratory)”), and a button for printing a cassette via the printer (Chirica: ¶ 0058, i.e., “one or more of the laboratory devices associated with grossing station 115…may involve some manual interaction from an operator”; ¶ 0090, i.e., “receive selections from users at workstations via active components within the GUI (e.g., a clickable area and/or a pushbutton within the virtual laboratory)… Selections associated with GUI module 205 may also be made by an administrator at management station 805 to control one or more laboratory devices”);
wherein printing a cassette comprises inking or etching a patient identifier onto a surface of the cassette (Chirica: ¶ 0058, i.e., “grossing station 115 may include one or more laboratory devices, such as…a cassette printer configured to print barcode information to a specimen cassette”).
Yet, Chirica does not explicitly teach, but D'COSTA teaches, in the same field of endeavor,
a non-transitory, computer-readable medium having one or more processors (D'COSTA: ¶ 0050-0051); and
a memory storing instructions that, if executed by the one or more processors, cause the system (D'COSTA: ¶ 0050-0051) to:
receive scanned sample information read from at least one of the machine readable code or at least one of the one or more scannable codes (D'COSTA: ¶ 0092, i.e., “the scanning system 100 may automatically retrieve and recognize (e.g. by optical character recognition using OCR/decoder module 132) some or all of the data encoded within the label portion (including barcode), such as to populate one or more metadata fields, filenames, DICOM file attributes, fillable fields of other medical/imaging industry file formats, etc.”); and
receive function-related data related to each function of the plurality of functions (D'COSTA: ¶ 0081-0083) by:
dynamically determining, based on the scanned sample information, an interface of a series of graphical user interfaces for inputting information associated with the function (D'COSTA: ¶ 0081, i.e., “If, on the other hand, a higher resolution scan is needed, the user may select user interface elements which, when selected, provide commands to the scanning device 110 to acquire a high-resolution scan of the biological sample”; ¶ 0082-0083), the interface comprising template information comprising incomplete input data, one or more prompts for entering information to satisfy the incomplete input data, and one or more selectable interface objects comprising pre-generated values for satisfying the one or more prompts (D'COSTA: figure 4a, i.e., “Capture settings” panel 403 comprises incomplete input fields which include dropdown lists for entering information; ¶ 0071, i.e., “The GUI rendered 128 may also provide a workspace such that a user may interact with the scanning system 100 and/or control operations of the scanning device 110. In some embodiments, such as depicted in FIGS. 4A and 4B, the workspace includes…a panel allowing the selection of user configurable scanning parameters 403”; ¶ 0082-0083);
causing the interface to be presented via the dynamic technician interface (D'COSTA: ¶ 0050, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood “the user interface” of D'COSTA as the “GUI” of Williamson, which is the claimed dynamic technician interface; ¶ 0056; ¶ 0071, i.e., “GUI renderer 128 creates graphical user interface (GUI) elements to be presented to the user…The GUI rendered 128 may also provide a workspace such that a user may interact with the scanning system 100 and/or control operations of the scanning device 110”);
detecting a selection of a selectable interface object of the one or more selectable interface objects relative to a prompt of the one or more prompts, the selectable interface object to comprise one or more of the pre-generated values (D'COSTA: ¶ 0056, i.e., “the user may select certain user configurable scanning settings displayed within the user interface, whereby signals generated by the selection may cause the scanning device 110 to capture image data based on the selected configuration settings”; ¶ 0071, i.e., “The GUI rendered 128 may also provide a workspace such that a user may interact with the scanning system 100 and/or control operations of the scanning device 110. In some embodiments, such as depicted in FIGS. 4A and 4B, the workspace includes…a panel allowing the selection of user configurable scanning parameters 403”; ¶ 0082-0083); and
updating the incomplete input data of the interface to comprise at least one of the one or more pre-generated values of the selectable interface object (D'COSTA: ¶ 0060; ¶ 0072; ¶ 0082, i.e., “user configurable scanning settings may be selected, such as by selecting from a plurality of elements (e.g. dropdown lists, toggle switches, etc.) displayed in a settings panel or a menu bar within the user interface. For example, the user interface may provide selectable user configurable scanning parameters including a choice of one or more of (i) a focus method, (ii) an AOI detection method, (iii) a magnification level, (iv) the number of focus layers to scan, and/or (v) the spacing between focus layers”); and
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include a non-transitory, computer-readable medium having one or more processors; and a memory storing instructions that, if executed by the one or more processors, cause the system to: receive scanned sample information read from at least one of the machine readable code or at least one of the one or more scannable codes; and receive function-related data related to each function of the plurality of functions by: dynamically determining, based on the scanned sample information, an interface of a series of graphical user interfaces for inputting information associated with the function, the interface comprising template information comprising incomplete input data, one or more prompts for entering information to satisfy the incomplete input data, and one or more selectable interface objects comprising pre-generated values for satisfying the one or more prompts; causing the interface to be presented via the dynamic technician interface; detecting a selection of a selectable interface object of the one or more selectable interface objects relative to a prompt of the one or more prompts, the selectable interface object to comprise one or more of the pre-generated values; and updating the incomplete input data of the interface to comprise at least one of the one or more pre-generated values of the selectable interface object, as taught by Chirica, within the system of D'COSTA, with the motivation to “allow laboratory administrators and other hospital staff to easily visualize a workflow associated with a specimen in a physical laboratory” (D'COSTA: ¶ 0049).
Yet, Chirica and D'COSTA does not explicitly teach, but Williamson teaches, in the same field of endeavor,
generate a machine readable code to uniquely identify a biopsy sample (Williamson: ¶ 0077, i.e., “Each biopsy container would have a machine-readable indicator such as an RFID tag, bar code, laser etched code, etc., which would contain the DRC assigned during the admitting process of the patient or initiation into the laboratory system…later steps associated with processing the sample, such as for specific slide staining for a particular type of cell or disease”; ¶ 0095); wherein the biopsy sample is processed by performing a plurality of functions comprising obtaining one or more slides from the biopsy sample, and digitizing the one or more slides (Williamson: ¶ 0096-0097);
generate one or more scannable codes associated with the one or more slides (Williamson: ¶ 0080; ¶ 0107, i.e., “receiving the cassette/paraffin block 52, sectioning it and applying the ribbon sections 152 to appropriately labeled microscope slides 150 with associated machine-readable indicators 140”), wherein each slide of the one or more slides comprises a biopsy slice from the biopsy sample, a slide label, and a scannable code of the one or more scannable codes (Williamson: ¶ 0087-088);
cause at least one electronic record to be updated or created to comprise a case identifier, and to logically associate the machine readable code of the biopsy sample with the one or more scannable codes of the one or more slides (Williamson: ¶ 0070);
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include generate a machine readable code to uniquely identify a biopsy sample to be processed by performing a plurality of functions comprising obtaining one or more slides from the biopsy sample, and digitizing the one or more slides; generate one or more scannable codes associated with the one or more slides, wherein each slide of the one or more slides comprises a biopsy slice from the biopsy sample, a slide label, and a scannable code of the one or more scannable codes; cause at least one electronic record to be updated or created to comprise a case identifier, and to logically associate the machine readable code of the biopsy sample with the one or more scannable codes of the one or more slides as taught by Williamson, with the system of Chirica and D'COSTA, with the motivation of “The processing efficiency will be improved by the ability to use all of the sample information in conjunction with a computer program instead of manually batching like tissue samples” (Williamson: ¶ 0097).
Regarding (currently amended) claim 2, Chirica, D'COSTA, and Williamson teach the laboratory information system of claim 1, wherein the machine readable code comprises at least one of a barcode (D'COSTA: ¶ 0092, i.e., “the label portion (including barcode)”) or a quick response (QR) code.
The obviousness of combining the teachings of Chirica, D'COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 3, Chirica, D'COSTA, and Williamson teach the laboratory information system of claim 1, wherein the plurality of functions further comprises:
accessioning the biopsy sample,
grossing the biopsy sample (Williamson: ¶ 0096),
performing tissue processing on the biopsy sample (Williamson: ¶ 0102),
cutting and embedding the biopsy sample to obtain the one or more slides (Williamson: ¶ 0107), or
staining at least a portion of the biopsy sample on the one or more slides (Williamson: ¶ 0108).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 6, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1, wherein the scanned sample information originates from a scanner device of at least one technician station (D'COSTA: figure 1b, i.e., scanning system 100 includes “Scanning Device” 110; ¶ 0050; ¶ 0078, i.e., “at least one preview scan image of a biological sample disposed on a microscope slide is generated by scanning device 110 and received by scanning interface application 120”).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 7, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1, wherein the scanned sample information originates from a camera of at least one technician station (D'COSTA: figure 1b, i.e., scanning system 100 includes “Scanning Device” 110; ¶ 0050; ¶ 0062; ¶ 0078, i.e., “at least one preview scan image of a biological sample disposed on a microscope slide is generated by scanning device 110 and received by scanning interface application 120”).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 8, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1, wherein the instructions, if executed by the one or more processors, are to further cause the device to:
dynamically determine a subsequent interface of the series of graphical user interfaces, based on a combination of the scanned sample information and the function-related data received via one or more prior interfaces of the series of graphical user interfaces (D'COSTA: ¶ 0084-0085).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 9, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 8, wherein the subsequent interface is determined by:
determining a template interface for the subsequent interface (D'COSTA: ¶ 0084, i.e., “if the intermediate scan is not satisfactory, the sample may be rescanned with yet a further different set of user configurable scanning settings”); and
modifying the template interface for the subsequent interface based on the combination of the scanned sample information and the function-related data received via the one or more prior interfaces (D'COSTA: ¶ 0084, i.e., “at least one setting is changed”).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 10, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 9, wherein the template interface for the subsequent interface is modified by at least one of:
adding, removing, or modifying a pressable button,
adding, removing, or modifying text (D'COSTA: ¶ 0084, i.e., “at least one setting is changed”),
adding, removing, or modifying an interface prompt directed to a technician,
adding, removing, or modifying one or more pre-generated phrases that are selectable as input,
adding, removing, or modifying one or more values that are selectable as input, or
adding, removing, or modifying free text form fields.
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 11, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1,wherein the instructions, if executed by the one or more processors, are to further cause the device to:
dynamically determine a subsequent interface of the series of graphical user interfaces based at least in part on a template (D'COSTA: figure 4a, i.e., “Capture settings” panel 403 comprises incomplete input fields which include dropdown lists for entering information; ¶ 0071, i.e., “The GUI rendered 128 may also provide a workspace such that a user may interact with the scanning system 100 and/or control operations of the scanning device 110. In some embodiments, such as depicted in FIGS. 4A and 4B, the workspace includes…a panel allowing the selection of user configurable scanning parameters 403”; ¶ 0082-0083); and
cause the subsequent interface to be displayed (D'COSTA: figure 4a, i.e., “Capture settings” panel 403 comprises incomplete input fields which include dropdown lists for entering information; ¶ 0071, i.e., “The GUI rendered 128 may also provide a workspace such that a user may interact with the scanning system 100 and/or control operations of the scanning device 110. In some embodiments, such as depicted in FIGS. 4A and 4B, the workspace includes…a panel allowing the selection of user configurable scanning parameters 403”; ¶ 0082-0083).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 12, Chirica, D’COSTA, and Williamson teach the device of claim 1, wherein the instructions, if executed by the one or more processors, are to further cause the device to:
cause an electronic record, corresponding to the biopsy sample, to be created or updated for each function of the plurality of functions based on the function- related data received for the function (D'COSTA: ¶ 0084, i.e., “At step 205, the user may again make a determination as to whether the intermediate scan generated is satisfactory (i.e. meets predetermined scanning criteria) and, if so, may store the intermediate scan or generate a higher resolution version of the intermediate scan (using the same set of scanning settings) for storage (step 206)”; ¶ 0085).
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 13, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1, wherein the interface comprises at least one of the following interface objects:
a case identifier to uniquely identify a biopsy case to which the biopsy sample corresponds (D'COSTA: figure 4a, i.e., interface portion 401 includes “Filename”; ¶ 0092, i.e., “each placeholder 400 is adapted to convey image data corresponding to a scan of an entire microscope slide, including the microscope slide's label portion (see, for example, FIG. 5D for a whole slide scan). In some embodiments, the label portion may include a bar code or other alphanumeric information or indicia. In some embodiments, the label portion supplies identifying information as to…the case number”),
a name of a physician associated with the biopsy sample,
a name of a clinic associated with the biopsy sample,
a patient name,
clinical notes regarding the biopsy case or the biopsy sample,
historical information about the biopsy case or the biopsy sample,
a name or identifier of a technician working on the biopsy sample,
a button to enable text to be included in the interface,
one or more pre-generated phrases describing a condition or feature of the biopsy sample, the one or more pre-generated phrases to be included in the interface upon selection, or
a button to cause at least one cassette label to be printed.
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (currently amended) claim 16, claim 16 recites substantially similar limitations analogous to those already addressed in claim 1, and thus, claim 16 is similarly analyzed and rejected in a manner consistent with the rejection of claim 1.
Regarding (currently amended) claim 18, claim 18 recites substantially similar limitations analogous to those already addressed in claim 3, and thus, claim 18 is similarly analyzed and rejected in a manner consistent with the rejection of claim 3.
Regarding (currently amended) claim 19, Chirica, D’COSTA, and Williamson teach the method of claim 16, wherein the at least one technician terminal is at one or more technician stations (D'COSTA: figure 1b, i.e., scanning system 100 includes “Processing Subsystem” 102; ¶ 0051) that comprise:
one or more station-specific devices to perform one or more of the plurality of functions (D'COSTA: figure 1b, i.e., scanning system 100 includes “Content Renderer” 124; ¶ 0051; ¶ 0055; ¶ 0069), and
at least one of:
at least one scanner device (D'COSTA: figure 1b, i.e., scanning system 100 includes “Scanning Device” 110; ¶ 0050),
at least one camera to capture image information at the one or more technician stations; or
at least one printer to print the one or more scannable codes and the cassette.
The obviousness of combining the teachings of Chirica, D’COSTA, and Williamson are discussed in the rejection of claim 1, and incorporated herein.
Regarding (previously presented) claim 21, claim 21 recites substantially similar limitations analogous to those already addressed in claim 6, and thus, claim 21 is similarly analyzed and rejected in a manner consistent with the rejection of claim 6.
Regarding (previously presented) claim 22, claim 22 recites substantially similar limitations analogous to those already addressed in claim 7, and thus, claim 22 is similarly analyzed and rejected in a manner consistent with the rejection of claim 7.
Regarding (previously presented) claim 23, claim 23 recites substantially similar limitations analogous to those already addressed in claim 8, and thus, claim 23 is similarly analyzed and rejected in a manner consistent with the rejection of claim 8.
Regarding (previously presented) claim 24, claim 24 recites substantially similar limitations analogous to those already addressed in claim 12, and thus, claim 24 is similarly analyzed and rejected in a manner consistent with the rejection of claim 12.
Regarding (previously presented) claim 25, claim 25 recites substantially similar limitations analogous to those already addressed in claim 13, and thus, claim 25 is similarly analyzed and rejected in a manner consistent with the rejection of claim 13.
Regarding (previously presented) claim 26, claim 26 recites substantially similar limitations analogous to those already addressed in claim 14, and thus, claim 26 is similarly analyzed and rejected in a manner consistent with the rejection of claim 14.
Regarding (previously presented) claim 27, claim 27 recites substantially similar limitations analogous to those already addressed in claim 15, and thus, claim 27 is similarly analyzed and rejected in a manner consistent with the rejection of claim 15.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2009/0222746 A1 (hereinafter referred to as "Chirica") in view of U.S. Patent App. Pub. No. US 2020/0400930 A1 (hereinafter referred to as "D'COSTA") and U.S. Patent App. Pub. No. US 2010/0167334 A1 (hereinafter referred to as “Williamson"), as applied to claims 1-3, 6-13, 16, 18-19, 21-27, further in view of U.S. Patent App. Pub. No. US 2017/0220775 A1 (hereinafter referred to as "De La Torre-Bueno").
Regarding (currently amended) claim 4, Chirica, D’COSTA, and Williamson teach the laboratory information system of claim 1.
Yet, Chirica, D’COSTA, and Williamson do not explicitly teach, but De La Torre-Bueno teaches, in the same field of endeavor, wherein the instructions, if executed by the one or more processors, are to further cause the device to:
cause the printer to print the machine readable code and the one or more scannable codes (De La Torre-Bueno: ¶ 0037, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood “the barcodes” of De La Torre-Bueno as the “associated machine-readable indicators 140” of Williamson, which is the claimed machine readable code and the one or more scannable codes; ¶ 0051).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include cause the printer to print the machine readable code and the one or more scannable codes, as taught by De La Torre-Bueno, with the system of Chirica, D’COSTA, and Williamson, with the motivation of “The processing efficiency will be improved by the ability to use all of the sample information in conjunction with a computer program instead of manually batching like tissue samples” (Williamson: ¶ 0097).
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 02/23/2026.
In the remarks, Applicant argues in substance that:
Regarding the 101 rejections,
“Claims 1 and 16 therefore recite detailed language for the laboratory information system, and the method performed by a laboratory information system. For example, claim 1 specifically recites that the plurality of technician stations include a location for processing tissue samples and entering tissue sample and patient information into the system…which are activities for "enhancing the efficiency and accuracy with which tissue samples are recorded, processed, and tracked for pathology" (Abstract) by being associated with a technician station and dynamic technician interface. As another example, claim 16 specifically recites that the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes. The one or more scannable codes can then be associated with a patient identifier, to be inked or etched onto a cassette. These claims as amended therefore recite how various steps that are performed can improve efficiency and accuracy in handling tissue samples for pathology, and such steps are not merely performed mentally, or merely performed by a computer”;
“The instant specification makes clear that the claimed systems and methods improve the processes of recording, processing, and tracking tissue samples for pathology, and improves the efficiency of associating specific, individual slides to a patient. Claim 1 recites "a machine readable code," "a case identifier" and "a patient identifier"… Claim 16 also recites a "machine readable code," and "patient identifier," each of which may be used for uniquely identifying a case and patient, as reviewed above. Furthermore, these codes can be physically printed on a cassette used for storage of samples… the present claims provide improvements to the handling of biopsy samples, and processed biopsy samples, such as slides created from such samples, and would understand the need for an efficient identifier system for the multiple slides that could be associated with a single patient or sample. Paragraph [0039] and at least FIG. 3 describe how the claimed systems and methods provide such improvements”; and
“Claims 1 and 16 each recite specific elements that are chosen for their particular importance in tying processing a biopsy sample to using the technician interface and series of prompts, selectable objects, and pre-generated values to more quickly and efficient track the processed sample. These are also tied to printing a cassette with at least a patient identifier for further tracking. When each of the independent claims is taken as a whole, it provides a practical application for not only processing but also tracking and identifying biopsy samples, and printing physical identifiers for the samples.”
Regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations.
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the 101 rejections,
“Claims 1 and 16 therefore recite detailed language for the laboratory information system, and the method performed by a laboratory information system. For example, claim 1 specifically recites that the plurality of technician stations include a location for processing tissue samples and entering tissue sample and patient information into the system…which are activities for "enhancing the efficiency and accuracy with which tissue samples are recorded, processed, and tracked for pathology" (Abstract) by being associated with a technician station and dynamic technician interface. As another example, claim 16 specifically recites that the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes. The one or more scannable codes can then be associated with a patient identifier, to be inked or etched onto a cassette. These claims as amended therefore recite how various steps that are performed can improve efficiency and accuracy in handling tissue samples for pathology, and such steps are not merely performed mentally, or merely performed by a computer”:
It is respectfully submitted that per broadest reasonable interpretation of the claim in light of the specification, the claims of the present invention encompass the activity of (to paraphrase) rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data), which covers the sub-grouping of managing personal behavior or relationships or interactions between people in the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and not a concept performed in the human mind in the “Mental Processes” grouping, as Applicant now argues. Put another way, the claimed invention amounts to a series of rules or steps that a user (i.e., laboratory technician) would follow to collect, analyze, and provide data regarding slides. This is an abstract idea. That the steps are performed on one or more well-known, general purpose computer (i.e., a laboratory information system having computing stations having a terminal with interfaces with selectable interface objects, a server, a non-transitory, computer-readable medium, one or more processors, a memory storing instructions) does not remove the invention from being directed to an abstract idea.
Applicant argues “the plurality of technician stations include a location for processing tissue samples and entering tissue sample and patient information into the system…which are activities for "enhancing the efficiency and accuracy with which tissue samples are recorded, processed, and tracked for pathology" (Abstract) by being associated with a technician station and dynamic technician interface. As another example, claim 16 specifically recites that the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes. The one or more scannable codes can then be associated with a patient identifier, to be inked or etched onto a cassette. These claims as amended therefore recite how various steps that are performed can improve efficiency and accuracy in handling tissue samples for pathology, and such steps are not merely performed mentally, or merely performed by a computer.” However, the claim limitations to which Applicant seem to refer (i.e., “a dynamic technician interface,” “a plurality of technician stations having a location for processing tissue samples, and entering tissue sample and patient information into a server of the laboratory information system”) are not part of the abstract idea, but an additional element to be interpreted under Step 2A, Prong Two, which is described at a high level of generality, such that it amounts to no more than mere instructions to apply the exception using generic computer components. Furthermore, “tissue samples being recorded, processed, and tracked for pathology” addresses administrative problems, and not a technical problem to any specific devices, technology, or computers for that matter, and thus, the claims do not provide a technical solution. For example, the abstract describes: “minimize the quantity of inputs and/or potential errors that may be made by a technician. Also provided are solutions for monitoring, analyzing, and correcting improper or inefficient technician conduct.” The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data). However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Applicant argues “claim 16 specifically recites that the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes. The one or more scannable codes can then be associated with a patient identifier, to be inked or etched onto a cassette. These claims as amended therefore recite how various steps that are performed can improve efficiency and accuracy in handling tissue samples for pathology, and such steps are not merely performed mentally, or merely performed by a computer.” However, it is noted that the features upon which applicant relies (i.e., “the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, Applicant fails to specify how the claim limitations describing “the processing of a biopsy sample at such a technician station creates one or more slides which can then be associated with one or more scannable codes. The one or more scannable codes can then be associated with a patient identifier, to be inked or etched onto a cassette… can improve efficiency and accuracy in handling tissue samples for pathology.” As stated previously above, the “handling tissue samples for pathology” to which Applicant refer seems to address administrative problems, and not a technical problem to any specific devices, technology, or computers for that matter, and thus, the claims do not provide a technical solution. The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data). However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Thus, the claims recite an abstract idea.
“The instant specification makes clear that the claimed systems and methods improve the processes of recording, processing, and tracking tissue samples for pathology, and improves the efficiency of associating specific, individual slides to a patient. Claim 1 recites "a machine readable code," "a case identifier" and "a patient identifier"… Claim 16 also recites a "machine readable code," and "patient identifier," each of which may be used for uniquely identifying a case and patient, as reviewed above. Furthermore, these codes can be physically printed on a cassette used for storage of samples… the present claims provide improvements to the handling of biopsy samples, and processed biopsy samples, such as slides created from such samples, and would understand the need for an efficient identifier system for the multiple slides that could be associated with a single patient or sample. Paragraph [0039] and at least FIG. 3 describe how the claimed systems and methods provide such improvements”:
Applicant argues “the claimed systems and methods improve the processes of recording, processing, and tracking tissue samples for pathology, and improves the efficiency of associating specific, individual slides to a patient” and “the present claims provide improvements to the handling of biopsy samples, and processed biopsy samples, such as slides created from such samples, and would understand the need for an efficient identifier system for the multiple slides that could be associated with a single patient or sample.” However, the “processes of recording, processing, and tracking tissue samples for pathology, and…associating specific, individual slides to a patient,” “the handling of biopsy samples, and processed biopsy samples, such as slides created from such samples,” and identifying “the multiple slides that could be associated with a single patient or sample” to which Applicant refer seems to address administrative problems, and not a technical problem to any specific devices, technology, or computers for that matter, and thus, the claims do not provide a technical solution. The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data). However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Applicant argues “Claim 1 recites "a machine readable code," "a case identifier" and "a patient identifier"… Claim 16 also recites a "machine readable code," and "patient identifier," each of which may be used for uniquely identifying a case and patient, as reviewed above. Furthermore, these codes can be physically printed on a cassette used for storage of samples.” However, Applicant fails to specify how the aforementioned claim limitations provide the alleged improvements. Regardless, the "machine readable code," "case identifier," and "patient identifier" are interpreted as rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data), which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Also, “a printer” and “printing a cassette with the patient identifier onto a surface of the cassette by inking or etching” only invokes the printer merely as a tool in its ordinary capacity to perform an existing process (i.e., printing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “Paragraph [0039] and at least FIG. 3 describe how the claimed systems and methods provide such improvements.” However, Examiner cannot find and Appellant has not identified any problem caused by the technological environment to which the claims are confined (i.e., a well-known, general purpose computer). While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement to computer technology, a physical improvement to the computer, or any other technical improvement. See MPEP § 2106.04(d)(1) and 2106.05(a).
Thus, the claim as a whole does not integrate the recited judicial exception into a practical application.
“Claims 1 and 16 each recite specific elements that are chosen for their particular importance in tying processing a biopsy sample to using the technician interface and series of prompts, selectable objects, and pre-generated values to more quickly and efficient track the processed sample. These are also tied to printing a cassette with at least a patient identifier for further tracking. When each of the independent claims is taken as a whole, it provides a practical application for not only processing but also tracking and identifying biopsy samples, and printing physical identifiers for the samples”:
Applicant argues “Claims 1 and 16 each recite specific elements that are chosen for their particular importance in tying processing a biopsy sample to using the technician interface and series of prompts, selectable objects, and pre-generated values to more quickly and efficient track the processed sample. These are also tied to printing a cassette with at least a patient identifier for further tracking.” However, Applicant fails to specify the claim limitations to which Applicant refer. Regardless, the claim limitations describing “processing a biopsy sample to using the technician interface and series of prompts, selectable objects, and pre-generated values” are interpreted as rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data), which is the abstract idea, but for the recitation of generic computer components, and not additional elements to be interpreted in Step 2A, Prong Two. Also, “a printer” and “printing a cassette with the patient identifier onto a surface of the cassette by inking or etching” only invokes the printer merely as a tool in its ordinary capacity to perform an existing process (i.e., printing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “more quickly and efficient track the processed sample.” However, as stated previously above, “track the processed sample” addresses administrative problems, and not a technical problem to any specific devices, technology, or computers for that matter, and thus, the claims do not provide a technical solution. The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to collect data, analyze the collected data, and provide relevant data according to the analysis (i.e., recording data). However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Thus, the claim as a whole does not amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-4, 6-13, 16, 18-19, 21-27, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
In response to Applicant’s argument that (b) regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations:
It is respectfully submitted that Examiner has updated passages and citations to the amended claims and applied new passages and citations accordingly, at the present time, as addressed in the above Office Action, and the analogous independent claims and the remaining dependent claims have been taught by the applied/recited passages and citations, as addressed in the above Office Action.
Thus, the cited prior art references teach the aforementioned amended claim limitations.
Conclusion
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/EMILY HUYNH/Primary Examiner, Art Unit 3683