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 .
Detailed Action
The following non-final action is in response to application 18609251 filed on 03/19/2024. The communication is the first action on the merits.
Status of Claims
Claims 1-10 are currently pending and have been rejected as follows.
Drawings
The drawings filed on 03/19/2024 are accepted.
Foreign Priority
Applicant’s claim to foreign priority has been acknowledged and the corresponding documents have been received.
Domestic Benefit/National Stage
Applicant’s claim to domestic benefit/national stage has been acknowledged and the corresponding documents have been received.
IDS
The IDS has been received, and the documents within it have been considered.
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:
A measuring device
A controller
An outputting device
An inputting device
A sample receiving device
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.
Examiner has identified the corresponding structure for the measuring device 100 in Fig. 2 as it comprises a controller 110 a database 120, an outputting device 130, an inputting device 140, and a sample receiving device 150 [0027].
As for the controller, the database 300 can also be configured as a sub-component of the controller 200 [0036] and the controller 200 can be configured for use with either of the two measuring devices 100 [0037] and it is also conceivable that the controller 200 and/or the database 300 is connected to an extended network, in particular to the Internet [0040].
As for the outputting device, the outputting device 130 may comprise, for example, a screen and/or speakers [0030].
As for the inputting device, the inputting device 140 may comprise, for example, a keyboard, a touch screen [0028].
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. A subject matter eligibility analysis is set forth below. See MPEP 2106.
Claim 1 recites:
A method for controlling a measuring device, comprising:
receiving a request to perform a specific measurement by a controller;
establishing by the controller a measurement schedule of steps to be performed for the specific measurement;
and outputting the established measurement schedule to a user of the measuring
device by the controller.
The bolded language in the claim limitations indicate abstract ideas, and the remaining limitations are considered to be additional elements.
Under Step 1 of the analysis, claim 1 does belong to a statutory category, namely it is a process claim.
Under Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Under Step 2A, Prong One, the broadest reasonable interpretation consistent with the specification of the limitations recited in claim 1 recite at least one judicial exception, that being a mental process (observations/evaluation/judgement/ or opinion).
According to the specification, “establishing by the controller a measurement schedule of steps to be performed for the specific measurement” involves selecting one of the predetermined measurement schedules in the database. Alternatively, or additionally, the database 120 may comprise a plurality of information about material properties and measurement methods. In this case, the controller autonomously establishes the measurement schedule based on this plurality of information [0029].
This limitation involves a mental process given that one of ordinary skill in the art would be capable of evaluating measurement schedules given a database and selecting a measurement schedule from that database using a judgement about material properties or measurement methods, for example.
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
The additional elements in the preambles of all independent claims are recited in generality and represent insignificant extra-solution activity (field-of-use limitations) that is not meaningful to indicate a practical application.
Claim 1 recites the following additional elements:
“receiving a request to perform a specific measurement by a controller”
“outputting the established measurement schedule to a user of the measuring device by the controller”
“establishing by the controller a measurement schedule”
These claim limitations generically recite collecting/outputting by sensors/devices measurement data (all independent claims), which represents the insignificant extra-solution activity of mere data gathering/outputting results. According to the October update on 2019 SME Guidance such steps are “performed in order to gather data for the mental analysis step, and is a necessary precursor for all uses of the recited exception. It is thus extra-solution activity, and does not integrate the judicial exception into a practical application”.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. When re-evaluated under Step 2B, the claim limitations are found to be well-understood, routine, and conventional as explained by MPEP 2106.05(d)(II) (describing conventional activities that include transmitting and receiving data over a communication network) as referenced by Koeda and Yoshikawa, specifically pertaining to the bulleted additional elements listed above.
Therefore, the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1 amounts to significantly more than the abstract idea.
With regards to dependent claims 2-9, they provide additional features/steps which are part of an expanded abstract idea of the independent claims (additionally comprising abstract idea steps) and, therefore, these claims are not eligible without meaningful additional elements that reflect a practical application and/or additional elements that qualify for significantly more for substantially similar reasons as discussed with regards to claim 1.
For example, claim 7 further limits the abstract idea.
Claims 2-6 and 8-10 are recited in generality and therefore not meaningful to indicate a practical application.
Claim Rejections - 35 USC § 103
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Koeda (US 20140297226 A1) in view of Yoshikawa (US 20180190386 A1).
Regarding claim 1, Koeda teaches a method for controlling a measuring device (a sample analysis method using a sample measuring apparatus configured to operate under control of a first computer [Abstract]), comprising:
receiving a request to perform a specific measurement by a controller (The sample measuring apparatus 25 under control of the information processing unit 20 performs measurement processing upon receiving the command to start measurement [0077, Fig. 5, S101]);
establishing by the controller a measurement schedule of steps to be performed for the specific measurement (The body control module is a program having a function of causing the body (the measurement section 26 and the transport section 27) to perform measurement of necessary measurement items in accordance with measurement order information. Specifically, the body control module creates operation schedules which schedule operation necessary in order for operating parts of the body (the measurement section 26 and the transport section 27) to measure measurement items [0047]).
Koeda does not explicitly teach outputting the established measurement schedule to a user of the measuring device by the controller.
Yoshikawa teaches outputting the established measurement schedule to a user of the measuring device by the controller (A protocol object (i.e. measurement schedule) is generated pursuant to the execution of an experiment function where the protocol object is returned to the user as seen on the computer user interfaces in Figs. 1-7 [0065] where the “control” module is configured to display information about a control experiment conducted with one or more sample on an instrument for calibration and/or quality control purpose. In some embodiments the control module is the experiment module displaying control experiments [0216], and in FIG. 14, when a user opens a panel with a command (e.g., by clicking or entering the appropriate script) to invoke the experiment module for a project, the experiment module displays on the panel information relating to the experiment in the project [0236]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to receive a request to perform a specific measurement by a controller, establish by the controller a measurement schedule of steps to be performed for the specific measurement, and output the established measurement schedule to a user of the measuring device by the controller in order to provide better transparency, allowing the user to verify the exact steps, approve the process, or prepare samples and peripherals before execution.
Regarding claim 2, Koeda teaches wherein the controller accesses a database when establishing the measurement schedule (For creation of the operation schedules, predetermined body section settings (information for measurement) are referred to by the body control module (a module in IPU program 72) from storage section 22 in Fig. 4A (database) [Fig. 4A, 0047]).
Regarding claim 3, Koeda teaches the method of claim 2 as well as the database, measurement schedules and the controller, but does not explicitly teach wherein the database comprises a plurality of ready-made measurement schedules from which the controller selects one.
Yoshikawa teaches wherein the database (database 1903, Fig. 19) comprises a plurality of ready-made measurement schedules from which the controller selects one (An experiment or, in certain embodiments, two or more experiment techniques can be saved and executed. The information can be saved in a database (1903) where the information can be retrieved by other portions of the system. Execution of the experiment can be coordinated by an orchestration module (1909), which interacts with technicians (1910) for carrying out (and confirming) certain steps of the experiment [0256, Fig. 19] where in Fig. 1 it shows a user interface for selecting an experiment type to be run should one desire to rerun the same experiment in the future, a user need only reference an object associated with the experiment, e.g., protocol [123141, qPCR], to extract the exact parameters used for the experiment, thereby enabling the retrieval of a truly complete description of all steps taken in the experiment [0156]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to utilize a database that comprises a plurality of ready-made measurement schedules from which the controller selects one to enable a user to reference previously run measurement schedules, thus allowing for improved consistency in performing all the necessary steps correctly for a given experiment.
Regarding claim 4, Koeda teaches the method of claim 2 as well as wherein the database comprises a plurality of information about measurement methods (In the storage section 22, data (set values) necessary for performing the above processing, processing results, and the like are also stored [0031]…with reference back to FIG. 4A, the data 70 and 71 stored in the storage section 22 are data relating to sample measurement or analysis of measurement data [0055]…For example, data element 70 includes “measurement order information”. Data element 71 comprises body section settings (Information for Measurement) [Fig. 4A]) (measurement methods);
and the controller autonomously establishes the measurement schedule based on a plurality of information about measurement methods (The body control module is a program having a function of causing the body (the measurement section 26 and the transport section 27) to perform measurement of necessary measurement items in accordance with measurement order information. Specifically, the body control module creates operation schedules which schedule operation necessary in order for operating parts of the body (the measurement section 26 and the transport section 27) to measure measurement items. For creation of the operation schedules, predetermined body section settings are referred to. The created operation schedules are allocated to the respective operating parts by driver circuits of the body [Fig. 4A, 0047] and the information processing unit 20 creates operation schedules for mechanism parts of the measurement section 26 and the transport section 27 such that measurement in accordance with the measurement order information can be performed, and transmits the created operation schedules to the measurement section 26 and the transport section 27 [0077]).
Koeda does not explicitly teach wherein the database comprises a plurality of information about material properties and the controller autonomously establishes the measurement schedule based on a plurality of information about material properties.
Yoshikawa teaches wherein the database comprises a plurality of information about material properties and the controller autonomously establishes the measurement schedule based on a plurality of information about material properties (In some embodiments the experimental protocol is generated and included in the protocol object (experiment) when the protocol object (experiment) is created. In the preferred embodiment the experimental protocol is created when the protocol object is processed by an orchestration module [0160], and when creating a new project, the main panel 102 will display relevant information to a user and allow the user to enter suitable input. For instance, as shown in FIG. 1, from a plurality of commands (105), the user selects “Compile Experiment” [0039] where a user has access to a variety of physical properties that may be associated with samples [0038], and the system and software of the present disclosure may be advantageously configured to refuse to run physically nonsensical or dangerous combinations, e.g., creating a solid material and then attempting manipulate it with a liquid handling device [0040]);
(Information about material properties: SLL also includes functionality for tracking and querying the complete history of laboratory samples. A sample’s present properties are included, such as experiments in which it has been used; quality assurance (QA) information; information regarding its properties, such as volume, concentration, and pH; information regarding its innate properties, such as chemical composition [0062] where the system can add a step to determine the pH and concentration of the sample and then adjust them to optimal values, if needed. Prior to or absent such determination, the system can use a pre-determined default value [0072], and the system may also cross-check related parameters or dependent properties in order to assure internal consistency [0073]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to utilize a database comprising a plurality of information about material properties and measurement methods, and a controller to autonomously establishes the measurement schedule based on the plurality of information to effectively generate experiments with comprehensive measurement methods in a timely manner while avoiding running physically nonsensical or dangerous experiments.
Regarding claim 5, Koeda teaches wherein the controller updates the database after performing the measurement (a sample measuring apparatus which measures a sample under control of the computer where a first server, which is connected to the computer of the sample measuring apparatus, receives data relating to measurement of a sample or analysis of measurement data continuously transmitted from the computer, and sequentially updates data stored therein with the received data [0009]); (the new computer 20 can obtain a copy 113 of the first data replica 92 in which data update made as a result of continuation of measurement and analysis is reflected [0121, Fig. 11]).
Regarding claim 6, Koeda teaches the measurement schedule of claim 1, but does not explicitly teach wherein the measurement schedule established comprises a plurality of measurement steps which are individually outputted to the user.
Yoshikawa teaches a measurement schedule comprising a plurality of measurement steps which are individually outputted to the user (A user interface can be used in the laboratory for presenting instructions for certain steps that may need to be performed by a technician [0161, Figs. 1-7]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to use a measurement schedule comprising a plurality of measurement steps which are individually outputted to the user in order to provide better transparency, allowing the user to verify the exact steps, approve the process, or prepare samples and peripherals before execution.
Regarding claim 7, Koeda does not explicitly teach wherein the user must confirm that a measurement step has been performed before the subsequent measurement step is output.
Yoshikawa teaches wherein the user must confirm that a measurement step has been performed before the subsequent measurement step is output (a user interface can be used in the laboratory for presenting instructions for certain steps that may need to be performed by a technician where the itemed list of instructions can be presented sequentially to the technician and optionally, upon completion of each instruction, the system receives a confirmation where the confirmation can be made by the technician [0161]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to have the user confirm that a measurement step has been performed before the subsequent measurement step is output in order to provide better transparency, allowing the user to verify the exact steps, thus mitigating errors.
Regarding claim 8, Koeda teaches the measurement schedule of claim 1, but does not explicitly teach wherein the outputting of the established measurement schedule is carried out by an outputting device of the measuring device.
Yoshikawa teaches wherein the outputting of the established measurement schedule is carried out by an outputting device of the measuring device (A protocol object (i.e. measurement schedule) is generated pursuant to the execution of an experiment function where the protocol object is returned to the user as seen on the computer user interfaces in Figs. 1-7 [0065] where the “control” module is configured to display information about a control experiment conducted with one or more sample on an instrument for calibration and/or quality control purpose. In some embodiments the control module is the experiment module displaying control experiments [0216], and in FIG. 14, when a user opens a panel with a command (e.g., by clicking or entering the appropriate script) to invoke the experiment module for a project, the experiment module displays on the panel information relating to the experiment in the project [0236]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to output the established measurement schedule using an outputting device of the measuring device to mitigate transcription error, reduce transcription time and ensure real-time operational traceability.
Regarding claim 9, Koeda teaches the measurement schedule of claim 1, but does not explicitly teach wherein the outputting of the established measurement schedule comprises highlighting at least one component that comprises an inputting device or a sample receiving device, of the measuring device.
Yoshikawa teaches wherein the outputting of the established measurement schedule comprises (A protocol object (i.e. measurement schedule) is generated pursuant to the execution of an experiment function where the protocol object is returned to the user as seen on the computer user interfaces in Figs. 1-7 [0065] where the “control” module is configured to display information about a control experiment conducted with one or more sample on an instrument for calibration and/or quality control purpose. In some embodiments the control module is the experiment module displaying control experiments [0216], and in FIG. 14, when a user opens a panel with a command (e.g., by clicking or entering the appropriate script) to invoke the experiment module for a project, the experiment module displays on the panel information relating to the experiment in the project [0236]) highlighting at least one component that comprises an inputting device or a sample receiving device, of the measuring device (When selecting samples for the experiments, as shown in FIG. 3, the user can simply highlight desired samples from menu 301, and drag and drop to the appropriate areas (201 or 202). As described above, such a selection of sample will trigger generation of corresponding computer script, which will be displayed in script panel 103 [0074]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koeda with the teachings of Yoshikawa to highlight at least one component that comprises an inputting device or a sample receiving device, of the measuring device when outputting of the established measurement schedule in order to reduce setup errors, prevent sample misplacement and ensure that the measurement schedule is executed on the exact equipment needed.
Regarding claim 10, Koeda as modified by Yoshikawa would teach a measuring device configured to perform the method according to claim 1 as explained in the claim 1 analysis above.
Pertinent Prior Art
US 20220374816 A1: Optimized coordination and scheduling of use of equipment and resources within work a environment; Measurement scheduling involving temperature measurements.
US 20210306891 A1: Network monitoring system; A network monitoring system is provided for monitoring performance of a utility supply network. The system comprises an asynchronous subsystem configured to receive scheduled measurements of network performance characteristics from a plurality of user equipments (UEs) connected to the network, and to store the scheduled measurements in a database. The system also comprises a synchronous subsystem configured to receive triggered measurements of network performance characteristics from at least one UE connected to the network, and to store the triggered performance measurements in the database.
US 20140335505 A1: Systems and methods for collecting and transmitting assay results; Creating and storing measurement protocols for biological samples.
Conclusion
An inquiry concerning this communication or earlier communication from the examiner should be directed to LOGAN D COONS whose telephone number is
(571) 272-2698. (via email: logan.coons@uspto.gov “without a written authorization by applicant in place, the USPTO will not respond via internet e-mail to an internet correspondence” MPEP 502.02 II). The examiner can normally be reached on M-F 9:30am – 6pm ET.
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, SPE Shelby Turner, can be reached at (571) 272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOGAN D COONS/Examiner, Art Unit 2857
/SHELBY A TURNER/ Supervisory Patent Examiner, Art Unit 2857
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