DETAILED ACTION
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 .
Response to Amendments
Amendments overcome the objections to the drawings. Amendment to claim 13, obviate the 35 USC 101, step 1, rejection pertaining to claim 13 not falling into a statutory category. Claim 14 was canceled so any rejections of claim 14 are now moot. Amendments do not overcome the 35 USC 101, abstract idea, rejections.
Response to Arguments
Applicant's arguments pertaining to the 35 USC 101, abstract idea, rejections have been fully considered but they are not persuasive. On page 7 of Applicant’s remarks, Applicant argues that:
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Examiner respectfully disagrees. As explained in the 35 USC 101 rejection section below, the majority of the claim limitations are either recited-math abstract ideas or mental-process abstract ideas. Note that even if abstract idea limitations are drawn to an improvement or solution to a problem, abstract idea limitations cannot incorporate into a practical application or constitute significantly more. Only additional elements, that cannot be interpreted as being a judicial exception, such as an abstract idea, can incorporate an abstract idea into a practical application or constitute significantly more than the abstract idea.
Beginning atop page 8 of Applicant’s remarks, Applicant argues that:
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Examiner respectfully disagrees. As stated above, only additional elements, that cannot be interpreted as being a judicial exception, such as an abstract idea, can incorporate an abstract idea into a practical application or constitute significantly more than the abstract idea. The additional elements that are recited in these claims pertain to generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). Also, the additional elements pertain to generically recited insignificant extra-solution activity of data gathering. Applicant has not argued that these additional elements either integrate the mental-process and recited-math abstract ideas into a practical application or constitute significantly more. Note though that in order to incorporate an abstract idea into a practical application, additional element(s) need to directly pertain to an improvement or solution to a problem as disclosed in the specification and as recited in the claim. This is not true for these amended claims and specification, and Applicant does not argue this. Additionally, in order to be significantly more than an abstract idea, additional element(s) need to more that merely well-understood, routine, conventional. This is not true for these amended claims and specification, and Applicant does not argue this.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “control module” in claims 1-15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Claim 1 recite(s):
“helping diagnosing aggressive prostate cancers” and “determine that the first portion contains an aggressive cancer if a first criterion based on the calculated first score is verified, or that the first portion does not contain an aggressive cancer if the first criterion is not verified”, which can be reasonably be interpreted as a human observer mentally diagnosing aggressive prostate cancers and mentally determine that the first portion contains an aggressive cancer if a first criterion based on the calculated first score is verified, or that the first portion does not contain an aggressive cancer if the first criterion is not verified – based on visual perception of the score according to a mental model involving a mental criterion; and
“calculate a first score” and “the first score being calculated as a function of at least one of the following quantities x.sub.1 and x.sub.2: x.sub.1=ADC+a.sub.1×W, wherein W is a value of a normalized wash-in rate or a normalized wash-out rate of the first portion, the wash-in or wash-out value being expressed in Hertz and being estimated from a set of magnetic resonance images of the first portion, ADC being a percentile of the apparent diffusion coefficient values of the first portion and being expressed in units of mm.sup.2/s, a.sub.1 being a first constant, the first constant being comprised between −6×10.sup.−3 and −10.sup.−3 mm.sup.2 and the percentile being inferior or equal to 40 when W is a normalized wash-in rate value, the first constant being comprised between 2×10.sup.−2 and 15×10.sup.−2 mm.sup.2 and the percentile being inferior or equal to 15 when W is a normalized wash-out rate value, x.sub.2=ADC+b.sub.1×TTP, wherein b.sub.1 is a second constant comprised between 10.sup.−7 and 14×10.sup.−7 mm.sup.2/s.sup.2, ADC is a percentile comprised between 20 and 45 of the apparent diffusion coefficient values of all pixels corresponding to the first portion, and TTP is a time-to-peak value of the first portion, expressed in seconds, the time-to-peak value being a time duration from a first instant to a second moment, the first instant being a time of arrival of a contrast agent in the prostate, the second instant being a time of maximum contrast concentration of an MRI signal of the first portion” is recited math.
This judicial exception is not integrated into a practical application because additional elements of:
“A system for” and “the system comprising a control module, the control module being configured to” are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer; and
“acquiring by a magnetic resonance imaging scanner at least one magnetic resonance image of a first portion of a peripheral zone of a subject's prostate; receive at least one magnetic resonance image of at least a first portion of the peripheral zone of a subject's prostate, the image comprising a set of pixels, the image comprising, for each pixel, an apparent diffusion coefficient value of a corresponding area of the prostate” are generically recited insignificant extra-solution activity of data gathering.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements of:
“A system for” and “the system comprising a control module, the control module being configured to” are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f); and
“acquiring by a magnetic resonance imaging scanner at least one magnetic resonance image of a first portion of a peripheral zone of a subject's prostate; receive at least one magnetic resonance image of at least a first portion of the peripheral zone of a subject's prostate, the image comprising a set of pixels, the image comprising, for each pixel, an apparent diffusion coefficient value of a corresponding area of the prostate” are insignificant extra-solution activity of data gathering.
Depending claims do not remedy these deficiencies:
Claims 2-6, 9, and 10 further recite math.
Claims 7 and 11 further recite limitations pertaining to insignificant extra-solution activity of data gathering. Claims 7 and 11 also recite math and the computer-related limitations. See the analysis provided above.
Claim 8 further recites mental-process limitations and the computer-related limitations. See the analysis provided above.
As per claim(s) 12, arguments made in rejecting claim(s) 1 are analogous.
Depending claims do not remedy these deficiencies:
Claims 13 and 14 further recite computer-related limitations. See the analysis provided above.
Claim 15 further recites mental process related limitations.
Allowable Subject Matter
Claims 1-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 101 set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The following limitations, in conjunction with other limitations present in the independent claim(s), distinguish over the prior art:
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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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Atiba Fitzpatrick whose telephone number is (571) 270-5255. The examiner can normally be reached on M-F 10:00am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Bee can be reached on (571) 270-5183. The fax phone number for Atiba Fitzpatrick is (571) 270-6255.
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Atiba Fitzpatrick
/ATIBA O FITZPATRICK/
Primary Examiner, Art Unit 2677