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 .
DETAILED ACTION
2. This communication is responsive to the RCE filed on 01/05/2026.
3. Claims 1-21 are currently pending in this Office action.
Claim Rejections - 35 USC § 101
4. Applicant’s arguments [pages 8-9 of Remarks filed on 01/05/2026] are acknowledged but are not persuasive. More specifically, when the claims are considered as a whole, they do not integrate the abstract idea into a practical application; they do not confine the use of the abstract idea to a particular technology; they do not solve a problem rooted in or arising from the use of a particular technology; they do not improve a technology by allowing the technology to perform a function that it previously was not capable of performing; and they do not provide any limitations beyond generally linking the use of the abstract idea to a particular technological environment and/or field of use. More particularly, applicant’s arguments regarding “Claim 1 not directed to an abstract idea at least because Claim 1 provides a technological solution to a technological problem…” is not persuasive because “the technological solution” upon which applicant relies [paragraphs 0017-0019 of Specification] is not recited in the rejected claims. In addition, it should be noted that the claim limitation of “communicate, in a bidirectional manner, with the scientific instrument” [emphasis added] is not significant because the claimed communication is no more than querying and receiving data (i.e. in view of the applicant response [page 7 of Remarks] to the 35 U.S.C. 112 second paragraph rejection). Thus, the claims were held not to amount to significantly more than the abstract idea and the examiner maintains the rejection as set forth below:
5. Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, hereinafter 2019 PEG.
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is noted that the method(s) of claims 1-21 are directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. In accordance with Step 2A, prog one of the 2019 PEG:
In claim 1-10, the limitations directed to additional elements include: an electronic computing device, and an electronic processor; in claims 11-18 and 20, the limitations directed to additional elements include: a computing device; in claim 19, the limitations directed to additional elements include: one or more processing devices; or in claim 21, the limitations directed to additional elements include: an electronic memory.
In exemplary claim 1, limitations reciting the abstract idea are as follows:
(1) parse a template associated with a scientific instrument; (2) query the scientific instrument according the schema; and (3) receive data from the scientific instrument responsive to the query.
These limitations, under the broadest reasonable interpretation, recite mental processes because these limitations can be performed in the human mind or using pen and paper. The examiner believes that the steps disclosed in claim 1 [parsing, querying, and receiving data] can be performed by a human, using observation, evaluation, and judgment, because the steps involve making identifications and determinations, which are mental tasks humans routinely perform in the course of producing and performing queries.
Claims 11, 19 and 21 recite the similar limitations as claim 1. Thus, claims 11, 19 and 21 are rejected due to the similar reasons set forth regarding claim 1.
A claim recites a mental process when the claim encompasses acts the person can perform using the mind or pen and paper [determining that a claim whose ‘steps can be performed in the human mind, or by a human using a pen and paper’ is directed to an unpatentable mental process]. This is true even if the claim recites, as they do here, that a generic computer component performs the acts.
As noted above, if a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. Here, the examiner is not persuaded that the aforementioned steps in claims 1, 11, 19 or 21 cannot practically be performed in the human minds, or using pen and paper, but for the generic computing device.
Step 2A. In accordance with Step 2A, prog two of the 2019 PEG:
With respect to Step 2A, prog two, the judicial exception is not integrated into a practical application. The additional elements are directed to a computing device, one or more processing devices or an electronic memory. However, these elements do not (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. In other words, the aforementioned additional element (or combination of elements) recited in the claims do not integrate the judicial exception into a practical application.
In other words, the claimed processes fail to improve the functioning of either a computing device, one or more processing devices or an electronic memory. Rather, these additional elements merely link the underlying abstract idea (i.e., mental processes or using pen and paper) to a particular technological environment, i.e., search query processing. Thus, the claimed process uses conventional computers to automate tasks that would have otherwise been very labor intensive by a human searcher. Such claims are not patent eligible. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”).
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitations are directed to a computing device, one or more processing devices or an electronic memory, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. Such general-purpose computing device, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible.
The additional elements (i.e., parsing, querying, and retrieving processes) are broadly applied to the abstract idea at a high level of generality and they operate in a well-understood, routine, and conventional manner. Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amount to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog.
The dependent claims have been fully considered, however, similar to the findings for claims above, these claims are similarly directed to the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG, without integrating it into a practical application and with, at most, a general-purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims. The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fail to amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 112
6. Applicant’s response [page 7 of Remarks], the 35 U.S.C. 112 second paragraph rejection made in the prior Office action is withdrawn. However, new 112 rejection is presented as set forth below:
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.
7. Claims 1, 3, 5, 7, 9, 11, 13, 15-17, 19 and 21 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 claims 1, 3, 5, 7, 9, 11, 13, 15-17, 19 and 21, these claims recite the phrase of “scientific instrument.” However, it is unclear what exactly constitutes the phrase of “scientific instrument.” Clarification is required.
Claim Rejections - 35 USC § 103
8. 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 (i.e., changing from AIA to pre-AIA ) 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.
9. 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.
10. Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,838,397 (hereinafter Schibler) in view of US 2022/0374249 (hereinafter Nair).
Regarding claims 1 and 19, Schibler discloses a system for performing scientific instrument support, the system comprising:
an electronic computing device including an electronic processor, the electronic processor configured to:
process, with the data collector service, the scientific instrument according to the schema; and receive data from the scientific instrument responsive to the query (col. 4, lns. 6-19; col. 4, lns. 45-col. 5, lns. 17; col. 7, lns. 47-60; fig. 6 as shown below).
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While Schibler discloses the teachings of the user selecting and partitioning the row data [i.e., partitioning of data from Row 5 into elements 690 and 695 as shown in figure 6 above; and “Referring back to FIG. 5, a user can also zoom into the displayed full-sized plot. If the user selects a particular region of interest from the displayed full-sized plot (560), the GUI presentation module 220 presents a more detailed plot of the selected region of interest (565)”], the reference does not explicitly disclose the features of wherein parse, with a data collector service, a template associated with a scientific instrument to extract a schema for the scientific instrument; communicating, in a bidirectional manner, with the scientific instrument, wherein the electronic processor is configured to query and receive data. However, Nair discloses that “…parse the UI template; and render the UI template as an interactive UI for distribution to an end user based at least in part on a predefined rendering library” ([0003]). Nair also discloses that “In some embodiments, the processor is further configured to: store the UI template in a storage; manage version control of the UI template; and govern workflow entitlement of the UI template. In some embodiments, processor is further configured to: query the storage based on one or more attributes of the UI template; and enable access to the UI template by a user based at least in part on at least one of the version control or the workflow entitlement of the UI template.” ([0007]). In addition, Nair discloses that “In some embodiments, in order to parse the UI template, the processor may be configured to implement parsing logic. Parsing may begin with selecting the first section from the group of sections. In some embodiments the order in which the sections are stored in the Section array may be instructive. Relevant properties of the section may be added to the JSON, followed by all the subsections that are direct children of this section, each of which are fetched and iterated…” ([0077-0078]) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Nair in the system of Schibler in view of the desire to enhance the chromatographic analysis by detecting and selecting digital documents resulting in improving the efficiency of improving the data analytical process.
Regarding claims 2 and 12, Schibler in view of Nair discloses the system wherein the electronic processor is further configured to:
transmit, with a data relay agent, the data from the scientific instrument to a remote data service according to the schema (Schibler: col. 4, lns. 27-42).
Regarding claims 3 and 13, Schibler in view of Nair discloses the system wherein the electronic processor is further configured to:
process the data from the scientific instrument with the data collector service according to the schema to generate processed data, wherein transmitting the data from the scientific instrument to the remote data service includes transmitting the processed data (Schibler: col. 7, lns. 47-col. 8, lns. 2; figs. 4 and 6-7).
Regarding claims 4 and 14, Schibler in view of Nair discloses the system wherein processing the data includes at least one selected from a group consisting of standardizing the data, aggregating the data, anonymizing the data, and contextualizing the data (Schibler: figs. 4, 6-7 and 9).
Regarding claims 5 and 15, Schibler in view of Nair discloses the system wherein transmitting the data from the scientific instrument to the remote data service includes transmitting the data from the scientific instrument according to a schedule defined by the schema (Schibler: col. 4, lns. 38-54; col. 7, lns. 3-12).
Regarding claims 6-7 and 16-17, Schibler in view of Nair discloses the system wherein the electronic processor is further configured to:
identify, in an electronic memory, a second template associated with a second scientific instrument; responsive to identifying the second template, restart the data collector service; parse, with the data collector service, the second template to extract a second schema for the second scientific instrument; query, with the data collector service, the second scientific instrument according to the second schema; receive data from the second scientific instrument responsive to the query; and transmit, with a data relay agent, the data from the second scientific
instrument to a remote data service according to the second schema (Schibler: col. 4, lns. 6-19; col. 4, lns. 45-col. 5, lns. 17; col. 8, lns. 36-col. 9, lns. 5) and (Nair: [0007 and 0077-0078]). Therefore, the limitations of claims 6-7 and 16-17 are also rejected in the analysis of claims 1 or 11, and the claims are rejected on that basis.
Regarding claim 8, Schibler in view of Nair discloses the system wherein the electronic processor is further configured to: retrieve the template from a pre-defined location in an electronic memory (Schibler: col. 5, lns. 18-29).
Regarding claim 9, Schibler in view of Nair discloses the system wherein: the schema is associated with an instrument driver for the scientific instrument; and the data collector service queries the scientific instrument via the instrument driver (Schibler: col. 3, lns. 53-col. 4, lns. 5; fig. 1).
Regarding claims 10 and 18, Schibler in view of Nair discloses the system wherein the schema includes at least one selected from a group a group consisting of a data type, a data collection condition, a data collection schedule, a data filter, a data processing directive, and a data transmission schedule (Schibler: figs. 4, 6-7 and 9).
Regarding claims 11 and 21, Schibler discloses an automated method performed via a computing device for providing scientific instrument support system, the method comprising:
retrieving, with a data collector service from a pre-defined location in an electronic memory, a template associated with a scientific instrument; processing, with the data collector service, an instrument driver for the scientific instrument according to the schema; and receiving, from the instrument driver, scientific instrument data responsive to the query (col. 4, lns. 6-19; col. 4, lns. 45-col. 5, lns. 17; col. 7, lns. 47-60; fig. 6 as shown below).
While Schibler discloses the teachings of the user selecting and partitioning the row data [i.e., partitioning of data from Row 5 into elements 690 and 695 as shown in figure 6 above; and “Referring back to FIG. 5, a user can also zoom into the displayed full-sized plot. If the user selects a particular region of interest from the displayed full-sized plot (560), the GUI presentation module 220 presents a more detailed plot of the selected region of interest (565)”], the reference does not explicitly disclose the features of parsing, with the data collector service, the template to extract a schema for the scientific instrument; communicating, in a bidirectional manner, with the scientific instrument, wherein the electronic processor is configured to query and receive data. However, Nair discloses that “…parse the UI template; and render the UI template as an interactive UI for distribution to an end user based at least in part on a predefined rendering library” ([0003]). Nair also discloses that “In some embodiments, the processor is further configured to: store the UI template in a storage; manage version control of the UI template; and govern workflow entitlement of the UI template. In some embodiments, processor is further configured to: query the storage based on one or more attributes of the UI template; and enable access to the UI template by a user based at least in part on at least one of the version control or the workflow entitlement of the UI template.” ([0007]). In addition, Nair discloses that “In some embodiments, in order to parse the UI template, the processor may be configured to implement parsing logic. Parsing may begin with selecting the first section from the group of sections. In some embodiments the order in which the sections are stored in the Section array may be instructive. Relevant properties of the section may be added to the JSON, followed by all the subsections that are direct children of this section, each of which are fetched and iterated…” ([0077-0078]) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Nair in the system of Schibler in view of the desire to enhance the chromatographic analysis by detecting and selecting digital documents resulting in improving the efficiency of improving the data analytical process.
Response to Arguments
11. Applicant’s arguments have been considered but are deemed to be moot in view of new grounds of rejections as presented in this Office action. Schibler in view of Nair discloses the applicant’s claimed invention as explained in the rejection above.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA M PYO whose telephone number is (571)272-8192. The examiner can normally be reached Monday-Friday 8am-4pm.
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, APU MOFIZ can be reached at 571-272-4080. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA M PYO/ Primary Examiner, Art Unit 2161