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 .
Claim Status
Claims 18-37 are newly added, and are pending and examined. Claims 1-17 are canceled.
Information Disclosure Statement
The information disclosure statement (IDS) received on 5/3/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 set of sample managers…programmed to transmit availability information…” in claims 18, 25, and 32.
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.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [0015] of the Pre-Grant Publication of the instant Application, US 2024/0264183 A1 (Menhardt et al., hereinafter “Menhardt”) teaches the sample managers each being a computer. For purposes of examination, the examiner will interpret each sample manager of the set of sample managers to each be a computer, 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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
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.
Claims 18-37 are 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.
Regarding claim 18, element b) recites a central monitor. However, it is unclear if this central monitor is the same central monitor or different from the “a central monitor” previously recited in claim 18. For purposes of compact prosecution, the above recitation in element b) has been examined as “the central monitor”.
Further regarding claim 18, element b) i) recites “receive a transit message associated with a current location and a set of samples”. However, it is unclear what the current location is of, i.e. which entity has its current location described in the transit message. Is it a current location of the set of samples, or something else? Further clarification is needed.
In claim 18, element b) ii) B) similarly recites “the current location”, and is similarly rejected. Further, claim 25 similarly recites “a current location” in step b) and “the current location” in step c) ii), and is similarly rejected, and claim 32 similarly recites “a current location” in step b) and “the current location” in step c) ii), and is similarly rejected.
Claims 19-24, 26-31, and 33-37 are rejected at least for depending on a rejected claim.
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 18-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The subject matter eligibility test for the claims is shown below:
Subject Matter Eligibility Test, Step 1
Independent claim 18 is drawn to a machine, independent claim 25 is drawn to a method, and independent claim 32 is drawn to a manufacture. Each are statutory categories.
Subject Matter Eligibility Test, Step 2A Prong One
In Step 2A Prong One, it is determined if the claims recite an abstract idea, law of nature, or natural phenomenon. In this instance, the claims recite an abstract idea. Receiving a transit message associated with a location and a set of samples, generating a routing message based on A) availability information from each testing location in a plurality of potential testing locations, and B) the current location and set of samples associated with a transit message, and providing a routing message designating a testing location from the plurality of potential testing locations is an evaluation and determination/decision-type mental process. Deciding where to transport a sample from a number of options based on the availability of the options, and the particular specifics of the sample (location, what samples are in the set) is a decision that can practically be performed in the mind. The steps involved in the evaluation/determination-type mental processes are performed at a high level of generality, and the claims do not recite a specialized computer for performing the mental processes.
Subject Matter Eligibility Test, Step 2A Prong Two
In step 2A Prong Two, it is determined if the claims recite additional elements that integrate the judicial exception into a practical application. In this instance, the claims do not recite additional elements that integrate the judicial exception into a practical application. The claims merely recite receiving and sending messages, which is not a particular practical application. Further, even if the claims were amended to recite routing the set of samples based on the routing message, this would merely amount to “apply it”, being insignificant extra-solution activity. See MPEP 2106.05(g).
Subject Matter Eligibility Test, Step 2B
In step 2B, it is determined if the claim recites additional elements that amount to significantly more than the judicial exception. In this case, the claims do not recite any element which are significantly more than the abstract idea. The independent claims additionally recite “a set of sample managers” (interpreted under 35 U.S.C. 112(f) as a set of computer, and equivalents thereof, as shown in the Claim Interpretation section of the instant Office Action) “a central monitor”, and “testing location(s) comprising one or more instruments for performing tests on samples” which are recited at a high level of generality, and are well-understood, routine, and conventional (WURC).
Further, with regards to the generically recited set of sample managers, central monitor, and testing locations comprising one or more instruments for performing tests on samples being nothing more than well-understood, routine, and conventional components that are well-known in the art, the following prior art is relied upon to show that the above elements are well-understood, routine, and conventional:
McGlennen et al. (US Pub. No. 2011/0178814; hereinafter McGlennen) teaches a set of sample managers ([0032], [0036], see Fig. 1A at remote sites 24 each having remote computers 22), a central monitor ([0032], [0036], see Fig. 1A at central site 36 having central server 38), and testing locations comprising one or more instruments for performing tests on samples ([0032]-[0033], [0036], see Fig. 1A at remote sites 24).
Eberhardt et al. (US Pub. No. 2014/0129172; hereinafter Eberhard) teaches a central monitor ([0069], see Fig. 1B at workflow management layer 50(b), which sends test orders to connected analyzers 60(b)), and testing locations comprising one or more instruments for performing tests on sample ([0069], see Fig. 1B).
Liepold (US Pub. No. 2016/0363605; hereinafter Liepold; already of record on the IDS received 5/3/2024) teaches a set of sample managers ([0048], [0074], see Fig. 1 at container 102, which contains equipment 120 that includes computers, and Fig. 3), a central monitor ([0048], [0074], see Fig. 3 at network 302 and server 304 connecting containers 102), and testing locations comprising one or more instruments for performing tests on samples ([0048], [0073]-[0074], see Fig. 1 at container 102, which contains equipment 120 that can include a LC/MS platform to analyze specimens).
Cohen (US Pub. No. 2014/0172154) teaches a set of sample managers ([0041], [0045], [0048], see Fig. 4 at first and second storage units 12 connected to central controller 16, and Fig. 5 showing that the storage units 12 comprise a processor 26. The set of sample managers has been interpreted under 35 U.S.C. 112(f) as being a set of computers, and equivalents thereof as shown in the Claim Interpretation section. As the processors perform the same function as a set of computers, are interchangeable with a set of computers, and there are not substantial differences between processors and a set of computers, the processors are an equivalent. See MPEP 2183), a central monitor ([0041], see Fig. 4 at central controller 16), and testing locations comprising one or more instruments for performing tests on samples ([0041], [0045], see Fig. 4 at first and second storage units 12 connected to central controller 16, and Fig. 5 showing that the storage units 12 comprise test regions 22A-22C, which may include different immunoassay and/or chemical tests).
Claims 19-24, 26-31, and 33-37 are rejected under 35 U.S.C. 101 as depending on a rejected claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John McGuirk whose telephone number is (571)272-1949. The examiner can normally be reached M-F 8am-530pm.
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/JOHN MCGUIRK/Examiner, Art Unit 1798
Prosecution Insights