CTNF 18/567,071 CTNF 82007 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) abstract ideas in that of mathematical calculations and/or mental steps involved in ranking order requests ( Step 2A, Prong 1 ). See MPEP 2106.04(a)(2), I& MPEP 2106.04(a)(2)III,C - Further noting therein section III “ Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C .” As in Step 2A, Prong 2 , this judicial exception is not integrated into a practical application because the processor calculating the evaluation value and determining an order of priority, as claimed, is drawn to one of the abstract ideas themselves in that of math and/or mental step in an assessment/judgment evaluation of data. Further, the “mechanism for analyzing a specimen…” to the abstract ideas at-hand does not provide a practical application as it is highly generalized and amounts to a nominal linkage to the abstract idea at-hand. Further, the provided “machine” as in the “mechanism for analyzing a specimen…” is provided at a high level of generality and does not amount to a particular machine as in MPEP 2106.05(b)I. As in Step 2B , the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the remaining aspects of the “processor which receives…”, “storage device which stores…” “the evaluation setting information,” and “multiple information elements” amount to abstract ideas themselves as being drawn to judgements and determinations that are afforded by mental steps as discussed above, are also provided at a high level of generality, and provide general discussion of data gathering that does not amount to significantly more than the abstract idea and are drawn to insignificant extra-solution activity. See MPEP 2106.05(g). Further, the provided “machine” as in the “mechanism for analyzing a specimen…” is provided at a high level of generality and does not amount to a particular machine as in MPEP 2106.05(b)I. Further, the “mechanism for analyzing a specimen with respect to each of the analysis types” does not provide significantly more than the abstract idea as the use of such a machine only contributes nominally/insignificantly to the abstract ideas at-hand in the form of a field-of-use limitation as in MPEP 2106.05(b)(III). This is likewise seen throughout the remaining dependent claims 2-14. Claim 2 provides a further abstract idea in a mental step of a user making an assessment of data in providing an order of requests. Claim 3 remains drawn to a highly generalized “machine” appended with further nominal designations to “mechanisms” that does not provide a particular machine and does not integrate the abstract ideas at-hand into a practical application. Claim 4-9 provide various nominal designations to data and recitations to prospective elements (i.e. the typified analysis types ) that amount to insignificant extra-solution activity and does not integrate the abstract ideas at-hand into a practical application. Claims 10-12 provides general discussion to a processor providing a screen, which both does not provide a particular machine (and further noting that a screen as in a display itself is not particular, nor is this provided by way of processor) and the recitation itself is drawn back to the abstract ideas at-hand in which such functions of the processor may be carried out by mental steps. Claims 13-14 are drawn to further abstract ideas as the functions of the processor may be carried out by mental steps. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 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: 1. Mechanism for analyzing… as in cl. 1. 2. Exclusive mechanism to be used for the analytical operation, and Common mechanism to be commonly used for analytical operations as in cl. 2. 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. 1,2. Unclear from the disclosure. Examiner notes discussion to various reagent dispensing mechanisms “for [x] analysis” (pars.[0032-0036] of Applicant’s pre-grant publication US 2024/0280597), but such discussion itself remains to be drawn to a nominally-designated mechanism, wherein the constituent structural elements of the mechanism are not delineated and made clear for the functionalities provided in the claims. Examiner further notes that reagent dispensing does not coincide with analyzing as provided herein. Examiner further notes that “common mechanism” is provided with exemplary, non-definitive discussion to (par.[0051]) “sample disc 102, the sample dispensing mechanism 104, and reagent storage,” which further confounds the initial “mechanism for analyzing a specimen” as it is recited in the specification with reagent dispensing functionality , and the provision of a reagent dispensing mechanism affording elements as in a sample disc, further sample dispensing mechanism, and reagent storage does not make sense. “Exclusive mechanism” is not particularly discussed in the specification. *Further clarification is required as seen below under 35 USC 112 b/2 nd * 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 § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 1-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. As discussed above the terms provided in items 1,2. in the “Claim Interpretation” section are interpreted under 35 USC 112 F/6 th and wherein the corresponding structure(s) and equivalents thereof are not made clear through the disclosure. Further, as discussed above, the specification provides discussion to reagent dispensing mechanisms, which both does not provide the particular structure(s) to the mechanism as the recitation itself is drawn to a “mechanism” (i.e. generic placeholder), and reagent dispensing does not coincide with the set forth analyzing . By this, the metes and bounds of the sought automatic analyzer as indefinitely provided. Examiner further notes that while the claims are codified as “an automatic analyzer,” that body of the claim is largely drawn to a processor for assessing and ranking data. The appended “mechanism for analyzing a specimen with respect to each of multiple analysis types” is only generally related to the processor, wherein the claims do not provide structure(s) for an analytical operation or a plurality thereof, and such recitation amounts to a vague intended use with respect to the “mechanism for analyzing…”. The claimed “automatic analyzer” provides the indefinitely set forth “mechanism for analyzing” (and likewise with respect to “exclusive” and “common” ones as in cl. 2), wherein such mechanism and its constituent structural element(s) are indefinitely set forth by the specification and further are discussed in the specification in terms of reagent dispensing , which does not amount to providing functionality to analyzing . What is the structure of such “mechanism” (and those as in cl. 2) that afford the functionality for analyzing a specimen and analyzing such with respect to each of multiple analysis types? Further to the above, as there are no other physically claimed architecture to the set forth “automatic analyzer,” it would appear that the “mechanism for analyzing…” may be an umbrella term for the entirety of the automatic analyzer, as the claims are without the tables, reaction cells, reagent/reaction solution holders, light sources, detectors, etc. to an “automated analyzer.” Additionally, the “designated analysis type” is not particularly understood and provided herein. The claim sets forth a process for receiving a request by way of a user input in which the claims are without particular provision to providing an analysis type and protocol therewith the mechanism so as to “process the corresponding analysis.” This is construed as a capability of the processor to receive an input that affects/informs operation of the mechanism until further clarity is provided. Further, the recitation “the corresponding analysis” lacks proper antecedent basis in the claims, wherein it is unclear what analysis is carried out by way of the claimed automatic analyzer. As in claim 2 , the structure(s) of the exclusive and common mechanism as claimed are indefinitely defined herein. The initial recitation “mechanism for analyzing…” is drawn to an alternative means-for recitation that is not particularly defined in terms of its structure(s) and equivalents thereof, and herein, the claim provides additional, nested “mechanisms” to the base mechanism which further confounds the metes and bounds of the structural constituency to these elements for their recited functionality. Examiner further notes that “common mechanism” is provided with exemplary, non-definitive discussion to (par.[0051]) “sample disc 102, the sample dispensing mechanism 104, and reagent storage,” which further confounds the initial “mechanism for analyzing a specimen” as it is recited in the specification with reagent dispensing functionality , and the provision of a reagent dispensing mechanism affording elements as in a sample disc, further sample dispensing mechanism, and reagent storage does not make sense. “Exclusive mechanism” is not particularly discussed in the specification. Further, the recited “cycle times” and related discussion is indefinitely understood herein. As discussed above, the claim as a whole is generally drawn to a processor assessing data and providing a ranked order, wherein provisions to “cycles” and “analytical operations” have no particular bearing herein. The claims are without infrastructure to an automated analyzer to afford such (i.e. the claims do not establish a process assembly line of elements to define a cycle and the concordant movement and procedures therewith a particularly-picked sample from a starting point to be guided therethrough various stations/modules). The limitation on a cycle time required is not understood herein as it correlates to any sort of “analyzing a specimen” (and with respect to a particular analysis type) as it is merely related to nominal qualifications afforded to the mechanisms. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1-14 , as best understood , is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Sinz et al. (US 2020/0400697), hereafter Sinz . With regard to claim 1, Sinz discloses a “mechanism for analyzing a specimen with respect to each of…” (pars.[0049-0052], for example), a “processor which receives specimen analysis request information…and controls the mechanism…” (par.[0049] to control unit 20, and also as in par.[0053]; wherein the present recitation to the “processor provides…” is also drawn to a process step not afforded patentable weight in a device claim, in which it appears Applicant may intended “configured to” language or to particularly establish an encoded/instructed software programming therewith the processor to particularly affect actions therewith), a “storage device which stores…the evaluation setting information has an evaluation value” (pars.[0065-0068]), “the multiple information elements include…” (par.[0065] wherein the “specimen type” corresponds with the “sample which would be degraded,” see also pars.[0051-0052], and further wherein information elements are not positively recited elements of the automatic analyzer but are drawn to the processor’s capability to store data), and “the processor calculates the evaluation value…and determines an order of priority” (par.[0065] to adjusting the sequence). With regard to claim 2, Sinz discloses the “processor determines an order…with respect to a cycle of the mechanism…based on the order of priority” (par.[0065] and the processor’s calculation with respect to the time at which a sample is expected to be processed and prioritizing the mechanism therewith so that this time does not elapse and degrade the sample, wherein such time coincides with “a cycle of the mechanism” in as much as understood herein as the pertains to concordant time periods afforded for the mechanism to analyze each given sample, and each analysis being its own cycle; and further noting the above discussion to the process-type recitation provided herein to the processor). With regard to claim 3, Sinz discloses the mechanism includes an exclusive mechanism and a common mechanism as claimed (pars.[0049-0052]; wherein a single PRE may affect a plurality of Ais, and a POST (“POST10”) is commonly used for analytical operations of the multiple analysis types (i.e. all analysis types undergo sample unloading and the like as in par.[0028]) (see also pars.[0049-0054], fig. 1, for example). With regard to claim 4, the recitation is drawn to nominal designations given to data wherein the claims do not positively require any particular analysis/analysis type and the commensurate processor of Sinz as discussed above that is fully capable of receiving and input to affects/informs operation of the mechanism, and wherein the mechanisms themselves are drawn to physical infrastructure wherein their “cycle time required” is not a positively provided element of the automated analyzer and herein is given as the implicit time the mechanisms of Sinz take in going through their respective actions (see also par.[0030] detailing various analysis types). With regards to claims 4-9, Examiner asserts that information elements and evaluation values are not positively recited elements of the automatic analyzer but are drawn to the processor’s capability to store data, in which Sinz provides a commensurate processor as discussed above, and is fully capable thereof. With regard to claims 10, 12, Sinz discloses that the processor provides a screen as claimed (par.[0056] and the user interface; and further noting the above discussion to the process-type recitation provided herein to the processor as in cl. 12), and the data provided to the screen is not positively claimed but is drawn to functionality of the screen , wherein the screen of Sinz is commensurate to that of the claimed screen and fully capable thereof in as much as recited and required herein. With regards to claim 11, as discussed above, Sinz provides a screen as claimed and such screen is fully capable the functionality provided as the screen of Sinz is commensurate to that of the screen of the claims, and further the recitation to the “the storage device stores” reads on the capability of the storage to store data wherein Sinz likewise provides a storage fully capable of storing such data in as much as claimed and required herein (see also par.[0056-0057]), and wherein the present recitation to the “processor provides…” is also drawn to a process step not afforded patentable weight in a device claim, in which it appears Applicant may intended “configured to” language or to particularly establish an encoded/instructed software programming therewith the processor to particularly affect actions therewith. With regard to claim 13, Sinz discloses the “processor changes the priority of an item or a value…or the evaluation value…” (par.[0065], for example; and further noting the above discussion to the process-type recitation provided herein to the processor). With regard to claim 14, Sinz discloses that “processor switches ON/OFF with respect to application…” wherein it is noted, as likewise and more particularly discussed above as in cl. 1, that the recitation is to a process-type recitation provided herein that is not afforded patentable weight in a device claim. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NEIL N TURK/Primary Examiner, Art Unit 1798 Application/Control Number: 18/567,071 Page 2 Art Unit: 1798 Application/Control Number: 18/567,071 Page 3 Art Unit: 1798 Application/Control Number: 18/567,071 Page 4 Art Unit: 1798 Application/Control Number: 18/567,071 Page 5 Art Unit: 1798 Application/Control Number: 18/567,071 Page 6 Art Unit: 1798 Application/Control Number: 18/567,071 Page 7 Art Unit: 1798 Application/Control Number: 18/567,071 Page 8 Art Unit: 1798 Application/Control Number: 18/567,071 Page 9 Art Unit: 1798 Application/Control Number: 18/567,071 Page 10 Art Unit: 1798 Application/Control Number: 18/567,071 Page 11 Art Unit: 1798 Application/Control Number: 18/567,071 Page 12 Art Unit: 1798 Application/Control Number: 18/567,071 Page 13 Art Unit: 1798 Application/Control Number: 18/567,071 Page 14 Art Unit: 1798 Application/Control Number: 18/567,071 Page 15 Art Unit: 1798
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