DETAILED ACTION
Response to Amendment
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s response to the last Office Action filed on 12/31/2025, as well as amendment to claims, filed on 03/31/2026 have been entered and made of record.
Terminal Disclaimer
The terminal disclaimer filed on 03/31/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of full Statutory term of the US Patent Nos. 9,805470, 10,572998, and 11, 257585 has been reviewed and is accepted. The terminal disclaimer has been recorded.
In light of Applicant’s cancellation of the second Claim 30, the objection of record with respect to Claim 30 has been withdrawn.
In light of Applicant’s amendment of the independent claims and persuasive arguments reflected in Pages 10 and 11 of its remarks, the rejection of claims under 35 U.S.C. 101 based on Abstract Idea has been withdrawn.
Claims Status
Claims 21-26, 28-34, and 36-41 are pending. Claims 1-20, 27, and 35 are canceled.
Response to Applicant’s Arguments
Examiner has reviewed Applicant’s arguments and the amended claims filed with the Office on March 31, 2026. Examiner has found Applicant’s argument with respect to traversal of rejection of the pending claims, as amended, under 35 U.S.C. 103 persuasive, and in light of Applicant’s amendment of independent Claims 21, 29, and 37, Examiner has withdrawn the rejections of record with respect to the cited prior art references. However, as analyzed below, the amended claims are rejected under 35 U.S.C. 112(a) (or Pre-AIA 35 U.S.C. 112, first paragraph) for introducing “new matter” to the claims not supported by specification. Although, in Pages 11-12 of Applicant’s remarks, Applicant states “By this Reply, Applicant has incorporated aspects of the allowable subject matter into independent claims 21, 29, and 37 and has canceled claims 27 and 35”; Examiner notes that the language of original Claims 27 and 35 differ from the added limitations of the amended independent claims of the instant application.
THIS ACTION IS MADE FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21-26, 28-34, and 36-41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention. Specifically, Applicant’s amended independent claims recite “determining, for each of the one or more data sets, a cluster associated with the data set based on similarities between the preliminary scans of the data set and preliminary scans of one or more training data sets”. The only recitation of the term “similarities” in Applicant’s specification is found in Paragraph [0028], wherein it is recited as “ In some embodiments, the clusters may refer to groupings of data, e.g., bundles or networks of the data sets based on similarities in patient characteristics associated with each data set, as well as data set associations with the acquisition device type” (emphasis added). This language differs from “a cluster associated with the data set based on similarities between the preliminary scans of the data set and preliminary scans of one or more training data sets”. In addition, “preliminary scans of one or more datasets” and “preliminary scans of one or more training datasets” are not disclosed in Applicant’s disclosure. Does Applicant intends to recite “the datasets of preliminary scans of a patient” and “training dataset of preliminary scans of a patient”? Accordingly, independent Claims 21, 29, and 37 are rejected under this section of the rules. The pending dependent claims of the instant application are rejected under this section of the rules due to their dependency from the rejected independent claims.
Allowable Subject Matter
The claims of this application are not rejected over prior art, and will be allowed once the above-described rejection of claims under 35 U.S.C. 112(a) is overcome.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Siamak HARANDI whose telephone number is (571)270-1832. The examiner can normally be reached Monday - Friday 9:30 - 6:00 ET.
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/Siamak Harandi/Primary Examiner, Art Unit 2662
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