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 .
Status of Claims
This action is in response to application 18/780875 filled on 07/23/2024.
Claims 1-20 are currently pending and have been examined.
Detailed Action
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.
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of U.S. Patent No. 12067526 and claims 1-15 of U.S. Patent No. 11107032. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the system and method of recited in the claims of ‘526, and ‘032 and the system and method claims of the instant application would have been deemed obvious by one skilled in the art. For example, claim 1 of ‘526 teaches “capturing, by a processor at a mobile device, information about a specimen sample within a container, wherein the captured information comprises a digital image of the specimen sample and a barcode or other indicator information of the specimen sample; transmitting, by the processor at the mobile device, the captured information in an encrypted format to an external server; receiving, at the external server, an additional image of the specimen sample, the additional image captured upon arrival of the specimen sample at a laboratory; comparing, using image analysis, the digital image and the additional image to determine differences between the digital image and the additional image; detecting, based on the differences between the digital image and the additional image, a status of the container with respect to being broken or compromised; providing, by the external server, a data-managing interface, the data-managing interface further providing access to scheduling information, and notifications corresponding to the captured information and the status of the container; and sending, from the external server to the mobile device, in real-time or near real- time, at least the notifications corresponding to the status of the container.” Accordingly, while the language varies slightly as between the two claims, the language in each of these claims is describing a feature that is the same or a mere obvious variation of that recited in the other claim. The remaining claims of the instant application similarly encompass features that one skilled in the art would recognize as the same or obvious variants of features recited in claims 1-20 of ‘526.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-20 are drawn to a method and system, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One:
Independent claims 1, 8, and 15 recite comparing the capture information and the additional information to determine a status of the specimen. The recited limitations, as drafted, under their broadest reasonable interpretation, cover certain methods of organizing human activity by identifying and reporting events preceding a pattern in a set of user data. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea (Step 2A Prong One: YES).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including a processor, smartphone, and a mobile device, which are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
The claims recite the additional element of “capturing information about a specimen; receiving additional information, and sending notifications, which are considered limitations directed to insignificant extra-solution activity that do not amount to an inventive concept because the limitations do not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. In the claimed context, the claimed receiving and transmitting limitation are incidental to the performance of the recited abstract idea of identifying and reporting events preceding a pattern in a set of user data. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Hence, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See: MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea. The originally filed specification supports this conclusion at Figure 1, and
Paragraph 6, where “a mobile application running on mobile devices, a cloud- hosted service, and a web-based application. In another embodiment, a system includes a mobile device, a data store, and a wireless communications system configured to perform the method described herein.”
Paragraph 12, where “Using a portable electronic device, such as a smartphone equipped for digital imaging, a digital image (or images) of the inventory item associated with a pre-printed barcode or other indicator is created. The image and other data is captured in the file by a mobile application executed on the mobile device and then synchronized with a management system over the Internet or other wireless connection or direct data transfer. The cloud-based data store may then automatically create and store the information for every specimen sample, associating the specimen sample image with the barcode detected in the image (if the barcode or other indicator is optically recognizable) as well as with any other data included in the file.”
Paragraph 21, where “The system may include a mobile device 200 with a digital imaging subsystem 201 configured to receive image data and indicator information for a captured image associated with a biological inventory item 202. The mobile device 200 may be further configured to determine at least one physically attribute of the biological inventory item 202 based on the image data and indicator information. The system may also include a data store 204 configured to receive and store image data and indicator information for the biological inventory item 202 and a wireless communication network 203 for communicating the image data and indicator information for the biological inventory item 202 between the mobile device 200 and data store 204.”
The claims recite the additional element of capturing information, receiving additional information and sending notifications, which amounts to extra-solution activity concerning mere data gathering and displaying. The specification (e.g., as excerpted above) does not provide any indication that the additional elements are anything other than well‐understood, routine, and conventional functions when claimed in a merely generic manner (as they are here). See: MPEP 2106.05(g).
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Dependent claim(s) 2-7, 9-14, and 16-20 when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
Claim Rejections - 35 USC § 103
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.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parpia et al. (US 2014/0344118 A1) in view of Juncker et al. (US 2009/0316977 A1).
In claim 1, a method comprising:
Parpia teaches:
capturing, by a processor at a mobile device, information about a specimen sample, wherein the captured information is discernable by a smartphone equipped for digital imaging (Para. 126 teaches wherein a mobile device can capture an image of inventory. Para. 104 teaches wherein client devices includes smartphones. Parpia does not explicitly teach wherein the inventory data is of a specimen, however Juncker teaches tracking location of a specimen as seen in Para. 79) ;
Parpia
transmitting, by the processor at the mobile device, the captured information in an encrypted format to an external server (Fig. 1 and Para. 102 wherein information is shared and transmitted over the network. Parpia does not explicitly teach wherein the data is encrypted however Juncker teaches the encryption of data as seen in Para. 98);
Parpia further teaches:
receiving, at the external server, additional information about the specimen sample (Para. 120 and 126 wherein receiving additional information about the expected inventory information is taught);
comparing the captured information and the additional information to determine a status of the specimen sample (Para. 126 wherein image data is compared to the expected image data); and
sending, from the external server to the mobile device, in real-time or near real-time, notifications corresponding at least to the status of the specimen sample (Para. 110 and 126-127 wherein notifications of the status of the inventory is taught).
Since each individual element and its function are shown in the prior art, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the combination itself - that is in the substitution of the specimen tracking of Juncker for the inventory tracking of Parpia. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious. See MPEP 2143(B).
As per claim 2, Parpia teaches the method of claim 1, wherein the captured information comprises metadata corresponding to the specimen sample, wherein the metadata comprises (i) text information pertaining to the specimen sample, (ii) a location of the specimen sample, (iii) capture time of the captured information, (iv) information input by a user, or (v) any combination thereof (Para. 56 wherein location of the inventory is taught).
As per claim 3, Parpia teaches the method of claim 1, wherein the captured information comprises a barcode associated with the specimen sample (Para. 181).
As per claim 4, Parpia teaches the method of claim 1, wherein the captured information comprises a captured image of the specimen sample, and the additional information comprises an additional image of the specimen sample (Para. 151 wherein multiple images can be taken of the inventory).
As per claim 5, Parpia teaches the method of claim 4, further comprising:
comparing, using image analysis, the captured image and the additional image to determine differences between the captured image and the additional image (Para. 120); and
detecting, based on the differences between the captured image and the additional image, the status of the specimen sample (Para. 110 wherein status information of inventory is taught).
As per claim 6, Parpia teaches the method of claim 1, further comprising:
accessing an electronic calendar for the specimen sample (Para. 140-143),
determining, based on the electronic calendar, a collection expectation state of the specimen sample (Para. 140-143 wherein inventory movement in a particular time is tracked and inferences are generated for the product); and
providing, based on the collection expectation state, a reminder or a prompt for the collection expectation state (Para. 127).
As per claim 7, Parpia teaches the method of claim 1, wherein the notifications further comprise tracking information (Para. 8-9).
Claims 8-20 recite substantially similar limitation as seen in claims 1-7 and hence are reject rejected for similar rationale as noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kong et al. (US 9505554 B1) teaches “image difference determiner 308 may compare two images of an inventory area and determine a difference between the two images. The difference may be an image of the item that was missing from one of the images. In another example, image difference determiner 308 may compare a known image of an item to an image of an inventory area to determine if and/or where the item appears in that inventory area”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAROUN P KANAAN whose telephone number is (571)270-1497. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAROUN P. KANAAN
Primary Examiner
Art Unit 3687
/MAROUN P KANAAN/ Primary Examiner, Art Unit 3687