DETAILED ACTION
This Action is in response to Applicant’s response filed on 09/17/2026. Claims 1-20 are still pending in the present application. This Action is made FINAL.
Information Disclosure Statement
The information disclosure statements submitted on 09/17/2026 have been considered by the Examiner and made of record in the application file.
Response to Arguments
With respect to the previous 35 USC 102(a)(1) rejection, Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection in view of Mattingly (US 2008/0235055 A1).
With respect to the previous ODP rejection, claims 1-20 are now rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of 11,978,191 B1 in view of Mattingly. See the ODP rejection below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,978,191 B1 view of Mattingly (US 2008/0235055 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because both the current independent claims and patented independent claims scan each slide of a plurality of slides, generate an initial slide image and associated scanning metadata, determine a quality control metric from the image and metadata, and rescan slides based on the quality control metric. The patented claims are narrower since they require flagging, generating at least one scanning profile and rescan flagged slides suing that profile. However, the patented claims fail to disclose the associated scanning metadata comprises at least a label indicative of a grouping of slides with a same specimen or performing the re-scan as a function of metadata of the grouping of slides with the same specimen. However, in related art, Mattingly teaches providing slides with machine-readable RFID or barcode labels containing identifying information and storing or retrieving information associated with those identifiers, see paragraphs 218-221. Mattingly teaches that a gross tissue sample is divided to prepare slides, that the RFID label for a slide includes case and slide specific information, and that a unique identifier associated with the gross tissue sample may be used to determine all slides associated with that particular tissue sample, see paragraph 221. Mattingly further teaches slide identifiers derived from a gross tissue sample identifier such that slides originating from the same specimen share specimen identifying information, see paragraph 289. Mattingly also teaches reading the encoded slide information and grouping slides having the same case information, explaining that slides of the same case may constitute all slides produced from a gross tissue sample and that slides having a common identifier are placed into the same grouping, see paragraphs 302-303. Thus, the encoded RFID information is a label indicative of a grouping of slides originating from the same specimen. Mattingly further teaches use of such label metadata in quality control processing by teachings storing QC information on or in association with the slide identifier and teaches that information associated with the RFID label may itself be used in determining a QC failure, see paragraphs 218-219. During subsequent QC processing, when a quality problem is identified, Mattingly teaches scanning the slide label to determine the slide identifier and recording information and remedial instructions associated with the quality problem, see paragraph 377.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Mattingly into the teachings of Eichorn to effectively reduce errors caused by misidentification of slides.
18/627,093 11,978,191 B1 + Mattingly
1-5
1 + paragraphs 218-221, 289, 302-303 and 377 of Mattingly, which teaches same specimen identifier and grouping metadata and identifying related slides associated with the same specimen
6
1, 6, 8
7
6, 8
8
1, 9
9
3
10
3, 6, 8
11-15
11 + paragraphs 218-221, 289, 302-303 and 377 of Mattingly, which teaches same specimen identifier and grouping metadata and identifying related slides associated with the same specimen
16
11, 16, 18
17
16, 18
18
11, 19
19
13
20
13, 16, 18
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eichhorn (US 2014/0294266 A1) in view of Mattingly (US 2008/0235055 A1).
Regarding claims 1 and 11, Eichhorn discloses a system of digitalizing a slide, wherein the system comprises: (paragraphs 70-71; Eichhorn discloses a digital pathology system in which digital pathology scans the microscope glass slide and stores a digitized microscope slide. Eichhorn further discloses a scanner system 400 and scanning system 440 for determining quality of digital microscope slides.)
at least one imaging device; and (paragraphs 82-83 and 95-6)
a computing device communicatively connected to the imaging device, wherein the computing device is configured to: (paragraphs 70-72)
scan each slide of a plurality of slides at the imaging device to generate, for each slide of the plurality of slides, an initial slide image and associated scanning metadata; (paragraphs 34, 49, 71, 74 and 77; Eichhorn discloses that the scanning system may digitize a plurality of samples to create a corresponding plurality of digital slide images and tissue sample acquisition module 505 obtains an initial digital slide image from a microscope slide scanner while managing scanner functions such as automatic focus and exposure control. Eichhorn also discloses stored image descriptors and acquisition settings. Under BRI, the acquisition settings, stored image descriptors, automatic focus information, and score map data are associated scanning metadata.)
determine a quality control metric for each slide of the plurality of slides as a function of the initial slide image and the associated scanning metadata; and (paragraphs 37-49, 52-56 and 64-67; Eichhorn determines image quality by breaking the whole digital slide image into blocks, calculating block quality scores from spatial frequency content, generating a score map, and computing a whole slide quality score. The macro-analysis summarizes slide quality, specimen measured, and artifact locations from the score map. Under BRI, Eichhorn’s block score, score map, artifact degradation score and WSQ score are quality control metrics.)
re-scan one or more slides of the plurality of slides at the imaging device as a function of the quality control metric. (paragraphs 68-69; Eichhorn discloses comparing an overall score to a threshold, determining that a slide is unsatisfactory when the score is below a threshold, and rescanning the slide. Eichhorn also discloses auto-scanning unsatisfactory slides in a batch and, in an operational scenario, identifying poor focus locations and instructing the scanner to automatically rescan the slide with special focus in those areas.)
Eichorn fails to specifically disclose the associated scanning metadata comprises at least a label indicative of a grouping of slides with a same specimen or performing the re-scan as a function of metadata of the grouping of slides with the same specimen.
However, in related art, Mattingly teaches providing slides with machine-readable RFID or barcode labels containing identifying information and storing or retrieving information associated with those identifiers, see paragraphs 218-221. Mattingly teaches that a gross tissue sample is divided to prepare slides, that the RFID label for a slide includes case and slide specific information, and that a unique identifier associated with the gross tissue sample may be used to determine all slides associated with that particular tissue sample, see paragraph 221. Mattingly further teaches slide identifiers derived from a gross tissue sample identifier such that slides originating from the same specimen share specimen identifying information, see paragraph 289. Mattingly also teaches reading the encoded slide information and grouping slides having the same case information, explaining that slides of the same case may constitute all slides produced from a gross tissue sample and that slides having a common identifier are placed into the same grouping, see paragraphs 302-303. Thus the encoded RFID information is a label indicative of a grouping of slides originating from the same specimen. Mattingly further teaches use of such label metadata in quality control processing by teachings storing QC information on or in association with the slide identifier and teaches that information associated with the RFID label may itself be used in determining a QC failure, see paragraphs 218-219. During subsequent QC processing, when a quality problem is identified, Mattingly teaches scanning the slide label to determine the slide identifier and recording information and remedial instructions associated with the quality problem, see paragraph 377.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Mattingly into the teachings of Eichorn to effectively reduce errors caused by misidentification of slides.
Regarding claims 2 and 12, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein determining the quality control metric comprises flagging a slide based on the determined quality control metric. (paragraphs 60-62 and 67-68)
Regarding claims 3 and 13, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides of the plurality of slides at the imaging device as a function of the quality control metric comprises re-scanning the flagged slides within the plurality of slides at the imaging device. (paragraphs 68-71)
Regarding claims 4 and 14, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides of the plurality of slides at the imaging device as a function of the quality control metric comprises: generating at least one scanning profile for the one or more slides as a function of the scanning metadata based on the quality control metric; and re-scanning the plurality of slides at the imaging device using the at least one scanning profile. (paragraphs 55-61 and 68-77)
Regarding claims 5 and 15, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides of the plurality of slides at the imaging device as a function of the quality control metric comprises: identifying at least one slide from the plurality of slides associated with the flagged slide; and rescanning the flagged slide as a function of the quality control metric and the at least one slide. (paragraphs 68-71; Mattingly paragraphs 221 and 302-303)
Regarding claims 6 and 16, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides of the plurality of slides at the imaging devise as a function of the quality control metric comprises: generating a plurality of scanning profiles for each of the one or more slides as a function of the quality control metric; and re-scanning the one or more slides using the plurality of scanning profiles. (paragraphs 56-61, 68-69 and 74)
Regarding claims 7 and 17, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides using the one or more scanning profiles comprises: determining a weighting for each of the one or more scanning profiles; selecting one or more scanning profiles from the plurality of scanning profiles as a function of the weightings; and re-scanning the one or more slides as a function of the one or more scanning profiles. (paragraphs 44-46, 55-61, 54 and 68-69)
Regarding claims 8 and 18, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein re-scanning the one or more slides as a function of the one or more scanning profiles comprises iteratively re-scanning each slide of the one or more slides as a function of an updated quality control metric of each re-scanned slide. (paragraphs 68-69)
Regarding claims 9 and 19, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein generating the initial slide image and associated scanning metadata for each slide of the plurality of slides comprises: imaging, using the at least one imaging device, each slide of the plurality of slides based on a default scanning profile. (paragraphs 34, 71, 74 and 77)
Regarding claims 10 and 20, Eichhorn, as modified by Mattingly, discloses the claimed invention wherein the at least a computing device is configured to: identify a sequence of scanning profiles as a function of a plurality of scanning profiles; determine at least one common parameter within the sequence of scanning profiles; and modify the default scanning profile as a function of the at least one common parameter. (paragraphs 68-77, 83 and 105-109)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BOBBAK SAFAIPOUR whose telephone number is (571)270-1092. The examiner can normally be reached Monday - Friday, 8:00am - 5:00pm.
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, Stephen Koziol can be reached at (408) 918-7630. 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.
/BOBBAK SAFAIPOUR/Primary Examiner, Art Unit 2665
Prosecution Insights