DETAILED ACTION
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 1-17 were originally filed.
Claims 1-17 are currently pending and have been examined herein.
INITIAL REMARKS
Applicant is reminded that in order to be entitled to reconsideration or further examination, the Applicant or patent owner must reply to the Office action. The reply by the Applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner' s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims, be held in abeyance until allowable subject matter is indicated. The Applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Should the Applicant believe that a telephone conference would expedite the prosecution of the instant application, Applicant is invited to call 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.
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 paragraph1:
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;
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
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: “means for dispensing… means for capturing… means for detecting” in claim 15 and “processor configured to: capture… detect…” in claim 1.
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.
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:
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
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-17 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, for failing to disclose a sufficient algorithm to satisfy the written description requirement.
Re claim 1, Applicant’s recitation does not comply with the written description requirement because it sets forth a computer-implemented feature without an algorithm disclosed for achieving the particular computer-implemented feature. This rejection applies regardless of whether § 112(f) is invoked.2
Particularly, claim 1 recites the following computer-implemented feature:
“a processor configured to:.. detect a leakage…”
Applicant is respectfully reminded, for computer-implemented claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01(I).
Applicant’s specification does not describe an algorithm that performs this feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For example, Applicant’s specification generically discloses “using suitable image processing software” at [0055]. However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Applicant is also reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 USC 112(a) or pre-AIA 35 USC 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01(I).
Therefore, because an algorithm for the computer-implemented feature is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claim 1 is rejected for lack of written description.
Dependent claims 2-7 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Claims 8-17 contain language similar to claims 1-7 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 8-17 are also rejected under 35 USC § 112(a) as failing to comply with the written description requirement.
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 1-17 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Following the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (89 FR 58128 and MPEP § 2106, hereinafter 2024 GUIDANCE), the claim(s) appear to fall into one of the enumerated statutory categories and recites at least one judicial exception, as explained in the Step 2A, Prong I analysis below. Furthermore, the judicial exception(s) does/do not appear to be integrated into a practical application as explained in the Step 2A, Prong II analysis below. Further still, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception(s) as explained in the Step 2B analysis below.
STEP 2A, PRONG I:
Step 2A, prong I, of the 2024 GUIDANCE, first looks to whether the claimed invention recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes).
Re claim 1, Applicant recites the following limitations:
A leakage detection apparatus comprising:
an image capturing device configured to capture an image of at least one pipette tip; and
a processor configured to:
capture, using the image capturing device, an image of the at least one pipette tip; and
detect a leakage of the at least one pipette tip based on the image.
The highlighted steps are directed to a mental process. The 2024 GUIDANCE expressly recognizes such mental processes as constituting patent-ineligible abstract ideas. Accordingly, these limitations can reasonably be characterized as reciting a patent-ineligible abstract idea.
STEP 2A, PRONG II:
Step 2A, prong II, of the 2024 GUIDANCE, next analyzes whether the claimed invention recites additional elements that individually or in combination integrate the judicial exception into a practical application. In particular, the 2024 GUIDANCE identifies various considerations indicative of whether an additional element or combination of elements integrate the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field.
Re claim 1, in addition to reciting the above-noted abstract idea(s), the judicial exception recited in the claim is not integrated into a practical application because the remaining elements recited fail to integrate the judicial exception into a practical application. Specifically, these additional elements merely reflect insignificant extra-solution activity. An example such activity is a step of gathering data for use in a claimed process. Here, the “capturing” steps merely represents data gathering. Furthermore, nothing in the claim reasonably indicates that anything other than a generic computer (i.e., “processor”) and generic image capturing device needs to be used to carry out the abstract idea.
STEP 2B:
Step 2B of the 2024 GUIDANCE, next analyzes whether the claimed invention adds any specific limitations beyond the judicial exception that, either alone or as an ordered combination, amount to more than “well-understood, routine, conventional” activity in the field.
Re claim 1, the additional limitation(s) recited above only generally link the judicial exception to a particular technological field. Furthermore, these additional elements do not appear to be sufficient to amount to significantly more than the judicial exception because they again merely reflect insignificant extra-solution activity (i.e., capturing image data) while only generally linking the judicial exception to a particular technological field (i.e., performed by a “processor” and “image capturing device”). Further still, this/these additional limitation(s) does/do not, as an ordered combination, amount to more than “well-understood, routine, conventional” activity in the field.
Accordingly, claim 1 is rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter for at least these reasons.
Re claims 2-7, these claims do not cure the deficiencies noted above with regard to claim 1, from which they depend, as they merely add further mental steps. Accordingly, they are rejected under the same or substantially similar analysis, as outlined above.
Re claims 8-17, Applicant recites language similar to claims 1-7, as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 8-17 are also rejected under 35 USC § 101 as failing to recite patent-eligible subject matter.
ALLOWABLE SUBJECT MATTER
Claims 1-17 are would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 101, set forth in this Office action. More specifically, the prior art cited below fails to disclose an image capturing device integrated with a pipetting system to detect leaks.
RELEVANT PRIOR ART
The Examiner would like to make Applicant aware of prior art references, not relied upon in this action, but pertinent to Applicant’s disclosure. They are as follows:
US20250383365, Autrey et al. – leakage detection system for diagnostic testing devices, e.g., pipetting system
CN116399514A, Kellner – leakage test for a pipetting device
US20090155123, Williams et al. – pipetting apparatus
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M HAMMOND III whose telephone number is 571-272-2215. The Examiner can normally be reached on Monday-Friday 0800-1700.
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, Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully,
/Thomas M Hammond III/Primary Examiner, GAU 2855
1 MPEP § 2181, subsection I
2 This rejection does not rely on 35 USC § 112(f) being invoked. See MPEP § 2161.01 (“[C]laims with computer-implemented functional claim limitations may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. […]. Even if a claim is not construed as a means-plus-function limitation under 35 U.S.C. 112(f), computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description and enablement requirements of 35 U.S.C. 112(a).” (emphasis added)).
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