DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
2. 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.
3. 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.
4. Claim limitation “an evaluation device for evaluating microscope images, comprising means….” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 25 has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 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 § 101
5. 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.
Claim 27 is directed to claiming a software program (i.e. “A machine learning system for training” can be just a software program/program product especially without any hardware being claimed.). Whereas software programs itself are “Data structures that are not statutory because they not capable of causing functional change in the computer.” “Such claimed data structures do not define any structural or functional interrelationships between the data structure and other claimed aspects of the invention which permit the data structure’s functionality to be realized.”
A computer program (product) can range from paper on which the program is written, to a program simply contemplated and memorized by a person. The combination of a computer readable medium and a program residing on it, is statutory, only when the computer readable medium (when tangible – meaning a non-transitory computer readable medium) is itself statutory. Therefore, claims that are directed to non-transitory computer readable medium are statutory by itself as per the reason given before and claims directed to computer programs itself are not statutory, despite where they are written.
Claim 27 is directed to claiming a software program itself written on something, which is not statutory. Examiner hereby suggests the limitation be “A computer program product comprising a non-transitory computer readable medium encoded with an information processing program for use in an information processing device, the program when executed performs the operations comprising:”.
Claim Rejections - 35 USC § 101
6. 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.
The USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 22 November 2005 <http://www.uspto.gov/web/offices/com/sol/og/2005/week47/og200547.htm>), Annex IV, reads as follows:
In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program's functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
Claims that recite nothing but the physical characteristics of a form of energy, such as a frequency, voltage, or the strength of a magnetic field, define energy or magnetism, per se, and as such are nonstatutory natural phenomena. O'Reilly, 56 U.S. (15 How.) at 112-14. Moreover, it does not appear that a claim reciting a signal encoded with functional descriptive material falls within any of the categories of patentable subject matter set forth in Sec. 101.
… a signal does not fall within one of the four statutory classes of Sec. 101.
… signal claims are ineligible for patent protection because they do not fall within any of the four statutory classes of Sec. 101.
The USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 23 February 2010 <http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20>), reads as follows:
“The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. 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). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).”
7. Claim 28 is rejected under 35 U.S.C. 101 because: Claim 28 is drawn towards a computer-readable storage medium having a computer program stored thereon. Such computer executable programs are functional descriptive material that can constitute statutory products when properly claimed in combination with a computer readable storage device that allows the functionality of the program to be realized. However, while the claim defines the program in combination with a “computer readable storage medium,” the claim language is not limited to the use of statutory storage media in combination with the program. The disclosure does not specifically define what a computer readable storage medium here stands for. However, computer readable medium can be read as a storage media such as floppy disk, a flexible disk, hard disk, magnetic tape, CD-ROM and a carrier wave (or computer data signal). While the floppy disk, hard disk, magnetic tape and CD-ROM media (statutory media) are physical storage devices, but the carrier wave is a signal which is intangible energy, and therefore is not considered to be a statutory product. While the claim does read on at least some statutory embodiments (such as the floppy or hard or magnetic or optically readable disks), it also encompasses the combination of the program with the carrier wave, which is not a statutory product. Since the claimed invention encompasses non-statutory embodiments, the claim is directed towards non-statutory subject matter.
Claim 28 as a whole define a carrier wave, and "[a] transitory, propagating signal ….is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of scope and reach of subject matter patentable under 35 U.S.C § 101; thus, such a signal cannot be patentable subject matter.” (In re Petrus A.C.M. Nutijen; fed Cir, 2006-1371, 9/20/2007).
In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. 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. ). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).”
Allowable Subject Matter
8. Claims 1-26 and 29-33 are allowed.
9. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Lee et al. (U.S. patent pub. 2024/0153616 A1) teaches “using a machine learning (ML) model to obtain annotations of a pathology slide image obtained in a first imaging modality, where the ML model is trained based in part on images obtained from a second imaging modality different from the first imaging modality. The first imaging modality is a conventional scanner for whole-slide images (WSI). The second imaging modality may include one or more of multispectral imaging (MSI), polarization imaging, quantitative phase imaging, or a combination thereof. The trained ML model can generate annotations that include more details with higher accuracy in comparison to annotating based on the WSI images alone.” Lee et al. nor any other prior art of record teaches, regarding claim 1(similarly claims 25, 29, and 30), the features of “determining at least one target microscope image based on the fine stack and the virtual processing mapping, preparing an annotated data set comprising at least the target microscope image and a learning microscope image, wherein the learning microscope image is based on a coarse stack capturing the sample coarser than the fine stack and in particular has more image artefacts than the target microscope image, optimizing the processing model for carrying out the virtual processing mapping on the basis of the annotated data set of the sample type,” these, in combination with the other claim limitations. Regarding claims 2-24, 26, and 31-33, these claims are either directly or indirectly dependent from claims 1, 25, or 30, respectively, therefore, they are allowed.
Contact Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANAND BHATNAGAR whose telephone number is (571)272-7416. The examiner can normally be reached on M-F 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached on 571-272-4650. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND P BHATNAGAR/Primary Examiner, Art Unit 2668
June 27, 2026
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