DETAILED ACTION
Information Disclosure Statement
The information disclosure statements submitted on 03/26/2025, 02/10/2025 and 04/04/2024 have been considered by the Examiner and made of record in the application file.
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. 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. Thus, the pending independent claims are broader than, and encompass, the patented claimed invention and are not patentably distinct.
18/895,188 11,978,191 B1
1-5
1
6
1, 6, 8
7
6, 8
8
1, 9
9
3
10
3, 6, 8
11-15
11
16
11, 16, 18
17
16, 18
18
11, 19
19
13
20
13, 16, 18
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 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eichhorn (US 2014/0294266 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 a operational scenario, identifying poor focus locations and instructing the scanner to automatically rescan the slide with special focus in those areas.)
Regarding claims 2 and 12, Eichhorn 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 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 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 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)
Regarding claims 6 and 16, Eichhorn 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 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 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 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 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
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.
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/BOBBAK SAFAIPOUR/Primary Examiner, Art Unit 2665
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