DETAILED ACTION
This action is in response to the application filed 19 September 2023, claiming benefit back to 30 November 2022.
Claims are 1 – 20 are pending and have been examined.
This action is Non-Final.
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 .
Information Disclosure Statement
The information disclosure statements (IDSs) have been considered by the examiner.
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 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention, when the claims are taken as a whole, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A – 1: The claims recite a Judicial Exception. Exemplary independent claim 1 recites the limitations of: performing, by an automated lab management system, an automated assay workflow within a lab, the assay workflow comprising an ordered set of tasks performed by one or more lab systems within the lab;
detecting, by the automated lab management system, a stoppage within the automated assay workflow during a performance of a first task of the ordered set of tasks;
notifying, by the automated lab management system, a user of the stoppage and requesting the user manually complete the first task;
determining, by the automated lab management system, a set of parameters required to begin a performance of a second task immediately subsequent to the first task within the ordered set of tasks;
generating, by the automated lab management system, an interface for display to the user, the interface identifying each of the set of parameters;
receiving, by the automated lab management system, information representative of the set of parameters from the user via the interface; and
after the manual performance of the first task by the user, continuing the automated assay workflow by performing, by the automated lab management system, the second task using the received information representative of the set of parameters.
These limitations (bolded and highlighted), as drafted, are a process that, under its broadest reasonable interpretation, covers performing a lab assay process, determining that there is an issue with said process, requesting assistance, providing information needed to continue the process, and then continuing with the process after the assistance is performed, but for the recitation of generic computer components. The limitations of determining a set of parameters required to begin a performance of a second task immediately subsequent to the first task within the ordered set of tasks, generating, an interface for display to the user, the interface identifying each of the set of parameters, receiving information representative of the set of parameters from the user via the interface encompass certain methods of organizing human activity, more specifically managing personal behavior or relationships or interactions between people. See MPEP 2106.04(a)(2) II.
The limitation of generating, an interface for display to the user, the interface identifying each of the set of parameters, also encompasses mental processes such as performing evaluation, judgment, and opinion. Further, the limitations performing an automated assay workflow within a lab, the assay workflow comprising an ordered set of tasks performed by one or more lab systems within the lab and after the manual performance of the first task by the user, continuing the automated assay workflow by performing, by the automated lab management system, the second task using the received information representative of the set of parameters also encompasses mental processes being performed on or with computer hardware. Further, the limitation of detecting a stoppage within the automated assay workflow during a performance of a first task of the ordered set of tasks encompasses mental processes such as performing evaluation, judgment, and opinion to make a determination about detected anomalies. See MPEP 2106.04(a)(2) III.
“Unless it is clear that a claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse the claim into multiple exceptions, particularly in claims involving abstract ideas.” MPEP 2106.04, subsection II.B. However, if possible, the examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)).
(Step 2A, Prong One: YES).
Step 2A – 2: This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Independent claim 1 recites the additional limitation of an automated lab management system, however this is recited at a high level of generality, and it amounts to no more than mere instructions to apply the exception using a generic computer / hardware. See MPEP 2106.05(f).
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO).
Further, the claims do not provide for or recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
The claim is directed to the abstract idea. (Step 2A: YES).
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims, and it has been held that “[i]n defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.” (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350. )
Turning to the dependent claims, none of the claimed features of the dependent claims further limit the claimed invention in such a way to direct the claimed invention to statutory subject matter (e.g. change the scope of the claimed invention as to no longer be directed towards an abstract idea, or include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements or combination of elements in the claims other than the abstract idea per se), nor do they add limitations that, when taken as a combination, result in the claim as a whole amounting to significantly more than the judicial exception. In respect to dependent claims 2 – 7, they merely add more mental steps or further define the previously identified abstract processes from claim 1.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, explained with respect to Step 2A, Prong Two, the additional elements or combination of elements in the claims other than the abstract idea per se amount to no more than mere instructions to implement the idea on a computer, or the recitation of generic computer structure that serves to perform generic computer functions previously known to the industry1 [e.g. performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; receiving or transmitting data over a network, e.g., using the Internet to gather data] .
Applicant’s specification, at, e.g., FIG. 1, and paragraphs [0025], [00100]-[00103], provides evidence of generic computer hardware performing generic, well-known, computer functions.
Viewed as a whole, these additional claim elements, both individually and in combination, do not provide meaningful limitations to transform the above identified abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more (e.g. improvements to another technology or technical fields, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment) than the abstract idea itself. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation2.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. No. 13–298.
Allowable Subject Matter
Claims 1 – 20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
The closest prior art of record includes Gisler et al. (U.S. 2021/0181218) directed to and disclosing laboratory systems for automatically processing biological samples, use thereof and method for processing biological samples by means of such a laboratory system; Torres et al. (U.S. 2020/0049725) directed to and disclosing lab instrument status monitoring; Meller et al. (U.S. 2024/0430259) directed to and disclosing zero trust architecture with end user self-remediation; and Tekeian et al. (U.S. 2024/0212395) directed to and disclosing systems and methods for collecting and analyzing additive fabrication process results of an additive fabrication device.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
Yuan, Huey-Shin et al. US 20020138321 A1 Fault tolerant and automated computer software workflow
Karan; Jai et al. US 20120245447 A1 Devices, Systems, and Methods Associated with Analyte Monitoring Devices and Devices Incorporating the Same
Freiberger; Gerd et al. US 20100112922 A1 Packaging Equipment And Process For Controlling Of The Packaging Equipment
Aklian; Mannix US 20140040058 A1 Systems And Methods For Designing, Developing, And Sharing Assays
Driesen; Volker US 20100332585 A1 Remote Automation Of Manual Tasks
Boira Bonhora; Jordi et al. US 20240300123 A1 Machine For The Preparation Of Pharmaceutical Products
Chirica; Laura et al. US 20090222746 A1 Systems And Methods For Tracking And Providing Workflow Information
Minkin; Andrew M. et al. US 20220076165 A1 Systems And Methods For Automating Data Science Machine Learning Analytical Workflows
Ben-Dor; Amir et al. US 20190362556 A1 Method and System for Implementing Augmented Reality (AR)-Based Assistance Within Work Environment
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/ALAN S MILLER/Primary Examiner, Art Unit 3625
1 “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. Id, pages 10-11. “Likewise, the server fails to add an inventive concept because it is simply a generic computer that “administer[ s]” digital images using a known “arbitrary data bank system.” Id. at col. 5 ll. 45–46. But “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at 1347–48 (quoting Alice, 134 S. Ct at 2359). “These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea. Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate the shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324–25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a “database” and “a communication medium” “are all generic computer elements”); BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”)”. TLI Communications LLC v. AV Automotive L.L.C., (No. 15-1372, (Fed. Cir. May 17, 2016)), at *12-13.
See additionally MPEP 2106.05(d).
2 “Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted))”. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015).