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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “measuring instrument divided into N channels”, “system for analyzing a sample”, “processor connected to the measuring instrument via a communication link”, and “wherein the measuring instrument is a spectrometer” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 2, 4, and 5 are objected to because of the following informalities: the claims have periods in the list. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). MPEP 608.01(m). Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: the specification does not have section headers. See MPEP 608.01(a), 37 CFR 1.77(b).
Appropriate correction is required.
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: “measuring instrument divided into N channels” in claims 1 and 8.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1 and 4 recite “a method” comprising “acquiring” data, “selecting” data, and “determining” data; claim 6 recites “means for” performing the method; and claim 8 recites “a system for ” “acquiring” data, “wherein the system performs the method”. The broadest reasonable interpretation of the claimed invention is to acquire data and perform mathematical analysis on said data. As a result of that broadest reasonable interpretation, these limitations amount to a mental process that could be practically performed in the human mind. Such a process is considered an abstract idea in view of, for example, CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ 2d 1690, 1695 (Fed. Cir. 2011), as the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.
This judicial exception is not integrated into a practical application because direct application of a judicial exception in a meaningful way to the analysis. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no positively recited steps are to how the data is measured; instead, the claim only requires acquiring and analyzing data. Without any meaningfully claimed limitation as to how the data is measured, it is not possible for the claimed abstract idea to be integrated into a judicial exception.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for similar reasons as set forth above as to why the claim is not integrated into a practical application. There do not appear to be any additional limitations in the claim other than the abstract idea of acquiring data and analyzing data. Since there are no additional limitations, it is not possible for the claim to include additional elements that are sufficient to amount to significantly more than the judicial exception.
While claims 4-9 are interpreted as comprising computer processors performing the method, this is not sufficient to provide significantly more than the abstract idea. A claim can still recite a mental process even if the limitations found in the claim are claimed as being performed on a computer, particularly when the mental process is performed on a generic computer. The courts have held that a mental process that is performed on a generic computer is considered to be an abstract idea as per Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). Additionally, even if the claimed abstract idea was performed on a special purpose computer, it has also been held that using a computer as a tool to perform a mental process is not significantly more than the judicial exception when the steps of the process are recited at a high level of generality and merely use computers as a tool to perform the process. See Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018).
See also Example 47, claim 2, in the July 2024 Subject Matter Eligibility Examples. Available here: https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf
Regarding claims 2 and 5, the claim recites further abstract ideas of creating data.
Regarding claim 3, the claim further defines the data.
Regarding claims 8 and 9, the recitation of the “measurement instrument” and “wherein the measurement instrument is a spectrometer” is not significantly more than abstract, as the devices recited are generically claimed and do not qualify as significantly more than the abstract.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to a computer program per se. A computer program is not one of the statutory subject matter categories. See MPEP 2106 I. Gottschalk v. Benson, 409 U.S. at 72 (1972). This rejection may be overcome by amending the claim to read "A non-transitory computer readable medium, storing a computer program" or the like.
Claim Rejections - 35 USC § 102
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.
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 –
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Sperling (US 5844680 A).
Regarding claim 1, Sperling discloses a method for analyzing a sample from data generated by a measuring instrument divided into N channels (abstract, Fig. 6), comprising at least the following method steps:
i. acquiring measurement data y(x) with at least one set of the N channels of the measuring instrument in a range of x overlapping between the selected channels (acquiring data from sensors S1 to S8; col. 11, lines 3-30);
ii. selecting a value xj from the overlapping range of x (col. 7, lines 40-60; col. 11 lines 30-60);
iii. determining coefficients quantifying the respective share of the selected channels in the total response ytot(xj) recorded at xj (col. 7, lines 40-60; col. 11 lines 30-60);
iv. repeating steps ii. and iii. for M values {xj,m}m=1 M (col. 7, line 60 – col. 8, line 25).
Regarding claim 2, Sperling discloses wherein the following method step is performed after method step iv.: v. creating the coefficient matrix containing the coefficients determined in steps iii. and iv. for unmixing the shares of the selected channels in the total response (col. 7, line 60 – col. 8, line 50).
Regarding claim 3, Sperling discloses wherein M=N (col. 7, line 60 – col. 8, line 50).
Regarding claim 4, Sperling discloses a computer-implemented method for analyzing a sample from data generated by a measuring instrument divided into N channels (abstract, Fig. 6), comprising at least the following method steps:
a. acquiring measurement data y(x) with at least one set of the N channels of the measuring instrument in a range of x overlapping between the selected channels (acquiring data from sensors S1 to S8; col. 11, lines 3-30);
b. selecting a value xj from the overlapping range of x (col. 7, lines 40-60; col. 11 lines 30-60);
c. determining coefficients quantifying the respective share of the selected channels in the total response ytot(xj) recorded at xj (col. 7, lines 40-60; col. 11 lines 30-60);
d. repeating steps ii. and iii. for M values {xj,m}m=1 M (col. 7, line 60 – col. 8, line 25).
Regarding claim 5, Sperling discloses wherein the following method step is performed after method step d.: e. creating the coefficient matrix containing the coefficients determined in steps c. and d. for unmixing the shares of the selected channels in the total response (col. 7, line 60 – col. 8, line 50).
Regarding claim 6, Sperling discloses a data processing apparatus comprising means for carrying out the computer-implemented method according to claim 4 (col. 6, lines 45-55).
Regarding claim 7, Sperling discloses a computer program product comprising instructions which, when the program is executed by a computer, cause the computer to perform the method according to claim 4 (col. 6, lines 45-55).
Regarding claim 8, Sperling discloses a system for analyzing a sample, comprising a measuring instrument divided into N channels for acquiring data of the sample and a processor connected to the measuring instrument via a communication link, wherein the system performs the method for analyzing a sample from data according to claim 1 (As shown in Fig. 6; col. 4, lines 30-45).
Regarding claim 9, Sperling discloses wherein the measuring instrument is a spectrometer (col. 4, lines 30-45).
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spigulis et al. (WO 2013/135311 A1), hereinafter “Spigulis”.
Regarding claim 1, Spigulis discloses a method for analyzing a sample from data generated by a measuring instrument divided into N channels (abstract, Figs. 1-3; page 6, line 11 – page 9, line 25), comprising at least the following method steps:
i. acquiring measurement data y(x) with at least one set of the N channels of the measuring instrument in a range of x overlapping between the selected channels (Fig. 2; page 6, line 11 – page 7, line 9);
ii. selecting a value xj from the overlapping range of x (page 6, line 11 – page 7, line 9);
iii. determining coefficients quantifying the respective share of the selected channels in the total response ytot(xj) recorded at xj (page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5);
iv. repeating steps ii. and iii. for M values {xj,m}m=1 M (page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5).
Regarding claim 2, Spigulis discloses wherein the following method step is performed after method step iv.: v. creating the coefficient matrix containing the coefficients determined in steps iii. and iv. for unmixing the shares of the selected channels in the total response (page 5, line 20- page 6, line 10; page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5).
Regarding claim 3, Spigulis discloses wherein M=N (page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5).
Regarding claim 4, Spigulis discloses a computer-implemented method for analyzing a sample from data generated by a measuring instrument divided into N channels (abstract, Figs. 1-3; page 6, line 11 – page 9, line 25), comprising at least the following method steps:
a. acquiring measurement data y(x) with at least one set of the N channels of the measuring instrument in a range of x overlapping between the selected channels (Fig. 2; page 6, line 11 – page 7, line 9);
b. selecting a value xj from the overlapping range of x (page 6, line 11 – page 7, line 9);
c. determining coefficients quantifying the respective share of the selected channels in the total response ytot(xj) recorded at xj (page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5);
d. repeating steps ii. and iii. for M values {xj,m}m=1 M (page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5).
Regarding claim 5, Spigulis discloses wherein the following method step is performed after method step d.: e. creating the coefficient matrix containing the coefficients determined in steps c. and d. for unmixing the shares of the selected channels in the total response (page 5, line 20- page 6, line 10; page 7, lines 12-24, page 8 lines 5-19, page 9, lines 1-5).
Regarding claim 6, Spigulis a data processing apparatus comprising means for carrying out the computer-implemented method according to claim 4 (page 9, ).
Regarding claim 8, Spigulis a system for analyzing a sample, comprising a measuring instrument divided into N channels for acquiring data of the sample and a processor connected to the measuring instrument via a communication link, wherein the system performs the method for analyzing a sample from data according to claim 1 (page 9, lines 5-25).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Siess (US20220228913A1) teaches an analysis method and appears to anticipate at least the independent claims.
Zeng (US20170223316A1) teaches an analysis method and appears to anticipate at least the independent claims.
Spigulis, Janis, Dainis Jakovels, and Liene Elste. "Towards single snapshot multispectral skin assessment." Multimodal Biomedical Imaging VII. Vol. 8216. SPIE, 2012, teaches an analysis method and appears to anticipate at least the independent claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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, Uzma Alam can be reached at (571) 272-3995. 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.
/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877