Part III DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This application has been examined. Claims 1-15 are pending in this application.
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.
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.
2. Claim 1-7 are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the following limitation(s): “an image capturing module configured to capture” and “an analysis module configured to extract”. These features appear to be depicted and/or described in fig.1 , and the description thereof.
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 (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.
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
3. Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically a computer program per se.
Claim 15 is rejected under §101 because they claim a computer program per se, due to the recitation of “computer readable medium” in the preamble of independent claim 25.
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP § 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009, p. 2.
Claim 15 is directed to computer program that covers signals per se and therefore are rejected under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. However, a claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim. Cf. Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101).
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)(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.
4. Claim(s) 1-2, 8-9 and 15 are rejected under 35 U.S.C. 102(a) (2) as being anticipated by Plevritis et al. (WO 2022/173828 A1)), hereafter referred as Plevritis.
With regard to claim 1, Plevritis teaches a system for analyzing an image of a cell and/or a tissue, configured to carry an organ-on-a-chip having the cell and/or the tissue (see figs. 1-3, cell are analyzed): an image capturing module (see claim 48, the different microscopes can be use to captured the image(s) of the cell or tissue) , configured to capture the image of the cell and/or the tissue from the organ-on-a-chip (reads on figs. 1-8, the images of the detected cell is captured); and an analysis module, coupled to the image capturing module and configured to (reads on claim 45, which describes a computer that can be used to the analyze the image(s) , the computer can be connected to the microscope): extract an image feature from the image of the cell and/or the tissue; and label a classification of the cell and/or the tissue according to the image feature (see claim 36 and p[00174, 00185], and important feature is analyzed, labeled and classified).
With regard to claim 2, Plevritis further teaches wherein: the cell and/or the tissue is a cell and/or a tissue of a respiratory system; and the image of the cell and/or the tissue comprises an image of immersed cell culture, wherein the image of immersed cell culture is a bright-field cell image (reads on p0055 and/or 0215])
With regard to claims 8-9 and 15, the limitations of claims 8-9 and 15 are covered by the limitations of claims 1-2 above.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Loewke et al. (US 2015/0087240 A1) teaches a method and system for characterizing cell population.
Madabhushi et al. (US 2010/0098306 A1) teaches a malignancy diagnosis using content based image retrieval of tissue histopathology
6. Claims 3-7 and 10-14 are objected to as being dependent upon a rejected base claim, but would be allowable (as long as other rejections are overcome) if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record does not teach or suggest the features of claims 3-7 and 10-14 in combination with the features of the independent claims.
7. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Gabriel I. Garcia whose telephone number is (571)
272-7434. The examiner can normally be reached Monday-Thursday from 7:30 AM-6:00 PM.. The fax
phone number for this group is (571) 273-8600.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Benny Tieu can be reached on (571) 272-7490. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.
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/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
May 02, 2026
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