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 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.
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:
i. “sucker”, as recited in the claims has/have been interpreted as corresponding to “a pipette-shape arm” (see para [0025] et seq. in applicant’s corresponding US published (US 2024/0402208, hereinafter ‘208), or structural equivalents thereof; and
ii. “driver” as recited in the claims has been interpreted as a stepping motor (see para [0027] et seq. of ‘208) or structural equivalents thereof;
iii. “work content receiver 62” as recited in the claims has been interpreted as a function of a controller 60 (not positively recited), see Fig. 10 and para [0083] of ‘208;
iv. “registrar 63” as recited in the claims has been interpreted as a function of a controller (not positively recited), see Fig. 10 and para [0083] of ‘208;
v. “device controller 63” as recited in the claims has been interpreted as a function of a controller (not positively recited), see Fig. 10 and para [0083] of ‘208; and
vi. “scraping instruction receiver” as recited in the claims has been interpreted as an instruction receiver 67, wherein the instruction receiver 67 a function of a controller (not positively recited), see Fig. 10 and see para [0086] et seq., which discloses that an instruction receiver 67 is an example of a scraping instruction receiver, see Fig. 10 and para [0083] of ‘208.
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: (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 Objections
Claim 10 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
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.
Claims 1-10 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.
Claims 1 and 10 recite a “work content receiver”, “a registrar”, “a device controller”, “a scraping instruction receiver”. It is not whether applicant intends these limitations to be interpreted as devices or steps performed by the controller.
Also, it is unclear from the claim what applicant means by “work contents”. Are these instructions/procedures performed by the driver? How do “work contents” differ from the “work procedure” also recited in claims 1 and 10.
Claim 1 recites the non-execution of scraping confirmation in a work procedure is selected, drives the sucker to execute the scraping work in response to an instruction provided by the scraping instruction receiver and then drives the sucker to execute the sucking work. This confusing and indefinite since the “non-execution” of scraping confirmation includes a scraping step.
Claim 1 lines 8, 10, 15 and 18 recite “work contents”, as recited in claims 1 and 10. It is not clear what applicant means by “work contents”. Moreover, it is not clear from the claim as to whether these are all recitations of “work contents” is referring to the same or a different work contents. This is confusing and indefinite. Same deficiency was found in claims 2-9.
Claim 1 lines 8, 10, 15 and 18 recite “a work procedure”. It is not clear what applicant means by “work procedure”. Moreover, it is not clear from the claims as to whether these are referring to the same or a different work procedures. This is confusing and indefinite. Same deficiency was found in claims 8 and 10.
Claim 2, lines 4, 8 and 9 recite “a plurality of work procedures”, “a work procedure” “work contents”, and “a plurality of work contents”. It is not clear what is including in “a plurality of work procedures” in claim 1. Same deficiency was found in claim 8.
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 1-10, as best understood, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The instant rejection reflects the Guidance published in the Federal Register notice titled 2019 Revised Patent Subject Matter Eligibility Guidelines.
Framework with which to Evaluate Subject Matter Eligibility:
(1) Are the claims directed to a process, machine, manufacture or composition of matter;
(2A) Are the claims directed to a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea (Prong One); If the claims are directed to a judicial exception under Prong One, then is the judicial exception integrated into a practical application (Prong Two); and
(2B) If the claims are directed to a judicial exception and do not integrate the judicial exception, do the claims provide an inventive concept.
Framework Analysis as Pertains to the Instant Claims:
With regard to (1), the instant claims recite “a cell picking device” and therefore the answer is "yes".
With regard to (2A), Prong One, under the broadest reasonable interpretation (BRI), the instant claims recite claim control steps or method steps directed to the judicial exception that is an abstract idea of the type that is in the grouping of “mental process” or math (See MPEP 2106.04(a)(2) subsections (I) and (III)) because at least one claimed control step or method step inherently performs a mental process or mathematical calculation. The claims 1 and 8 recite “wherein the selection of work contents of the driver including selection of whether (or not) to execute sample scraping instruction” is either a mental step of making some type of comparison and/or math.
Said recited judicial exception steps appear to be functions of a control unit which is nothing different than a generic computer (controller 60 see para [0083] of ‘208), and performing the abstract idea on a general purpose computer does not preclude the claims from reciting an abstract idea (see MPEP 2106.04(a)(2)(III)(C)). It is important to note that MPEP in 2106.04(a)(2)III states: “The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.”, and also says “[n]or do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.”
Although it is not clear, applicant appears to rely on a computer (controller 60) as a tool to perform the abstract idea MPEP 21604(a)(2) III C. In this case, the claims are directed towards a controller determining/confirming whether a user has selected whether or not to execute sample scraping instructions, which can be done by a computer.
Because the claims are directed to abstract ideas, they must further be analyzed under Prong Two to determine if said judicial exceptions are integrated into a practical application as determined by further assessment of the “additional steps” recited in the claims. With respect to Prong Two, the additional elements and the rationale pertaining to why the additional elements are not integrated, are as follows:
(a) after the abstract idea of determining/executing is performed, then no action is taken. Therefore, there is no particular practical application of the abstract idea; and
(b) the abstract idea is performed by the control unit, which is just a general purpose computer. A general purpose computer is not a particular machine, and performing the abstract idea on a general purpose computer is not enough to integrate the exception into a practical application (MPEP 2106.05(b)I.).
As such, the additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
Because the claims fail under (2A), the claims are further evaluated under (2B). The claims herein do not include additional elements that are sufficient to amount to significantly more than the judicial exception under (2B) because, as discussed above with regard to integration of the recited abstract idea into a practical application, the additional elements herein amount to no more than a cell picking device that includes generic computer elements, which do not provide an inventive concept as a generic cell picking device controlled by a computer/processor is well-understood, routine and conventional (WURC). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because (1) the stage, sucker and driver are being used in their ordinary capacity and are merely tools to execute the abstract idea (See MPEP 2106.05(d)). These elements are considered WURC as evidenced by reference Backhaus et al., (US 2011/0124037) which teaches a cell picking device for sucking cells from a liquid sample in a sample container comprising: a stage 9 on which the sample container 8 is placeable; a sucker 10 (pipette arm) to which a pipette tip 10a is attachable; a driver 5b (motor) that drives the sucker to execute sample scraping work and drives the sucker to execute sample sucking work, using the pipette tip (see para [0086] of Backhaus et al., US 2011/0124037).
Additionally, see MPEP 2106.04(a) details that the claims must reflect the disclosed improvement. Note specifically MPEP 2106.05(a), 4th paragraph – the claim must include the components or steps of the invention that provide the improvement described in the specification. Looking to applicant’s specification, the problem identified is that the operation of a cell picking device is difficult for unskilled users to choose the right operating conditions for the task, efficiency, and reliability [0002]-[0005]. Skilled users may rely on experience, but inexperienced users may not know how to operate the device appropriately [0004]. The problem is therefore limited operability and the need for a simpler way to set up and repeat suitable cell-picking procedures. The invention seeks to improve usability by making procedure selection and execution more structured and user-friendly [0005]-[0007]. The solution is to let the user build, save, and later select a step-by-step work procedure from guided screens, rather than manually operating the device ad hoc each time para [0021]-[0023], [0057]-[0058]. The controller registers the chosen work contents as a method and then automatically drives the suction device, observation device, and plate changer according to that saved method para [0023], [0070]-[0072]. This reduces the need for expert judgment during repeated cell-picking tasks. Imaging and confirmation steps further support reliable operation and visual checking para [0052]-[0054], [0116]-[0117]. However, the claims do not include the any of the above components or steps that provide for the improvement.
Thus, in light of the above considerations the claims remain non-statutory, and are thus not patent eligible 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 (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 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)(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.
(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.
Claim 1-10 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by
Backhaus et al., (US 2011/0124037; hereinafter “Backhaus”) in view of Backhaus et al., (US 2007/0038411; hereinafter “Backhaus”).
As to claim 1, Backhaus teaches a cell picking device for sucking cells from a liquid sample in a sample container, comprising:
a stage 9 on which the sample container 8 is placeable;
a sucker 10 (arm) to which a pipette tip 10a is attachable;
a driver 5b that drives the sucker to execute sample scraping work and drives the sucker to execute sample sucking work, using the pipette tip (see para [0086] et seq.).
Note: as discussed above, it is not clear from the claims but the examiner has interpreted the “work content receiver”, “registrar”, “device controller” and “scraping instruction receiver” as functions/buttons on a display and used by a controller to the cell picking device. Backhaus teaches a controller 3 capable controlling the sucker as a tubular structure in the form of a pipette or cannula placed over the selected cells or cell colonies in the cell culture 8. The sucker includes a removal tool 10a that is capable scraping adherent cells and cell colonies, i.e. those adhering to the bottom of a vessel and/or suction the fluid. Following the process steps of scanning and detection of the objects of interest for the user, described further below, these objects are positioned for harvesting. The colony to be separated is enclosed with the cannula 15 (the end of the cannula lies on the bottom of the sample vessel), see para [0092] et seq. For this purpose, the selected cells or cell colonies are enclosed by the tip of a cannula 15 and released from the base by scraping as a result of a relative movement of cannula 15 and vessel. The determination whether or not to provide scraping adherent cells and/or suction the removed cells is performed by the controller 3.
As to claim 2, Backhaus teaches the device controller is configured to be capable of receiving selection of a plurality of work contents of the driver that are different for each work procedure, configured to be capable of registering a plurality of work procedures based on the received plurality of work contents of the driver receives selection of any work procedure out of a plurality of work procedures, and controls work of the driver in accordance with the received work procedure received by the selection receiver (see para [0118] et seq.)
Note: the it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. In this case a device controller configured to be capable of doing something is not a positive limitation and does not serve to limit the device controller.
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed (controller method) will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) and MPEP 2112.02.
As to claim 3, this claim is directed to functional/process language which has not received patentable weight for the reasons above. Nevertheless, Backhaus teaches the selection of work contents of the driver includes selection of picking in which a sample in the sample container is sucked into the pipette tip and the sucked sample is discharged into an accommodating plate (target plate) and removal in which a sample in the sample container is sucked into the pipette tip to be removed (see para [0118] et seq.)
As to claim 4, Backhaus teaches the selection of work contents of the driver includes selection of a discharge position to which a sample is discharged by the pipette tip, and the discharge position includes in-view and out-of-view of the microscope 1 (see para [0121] et seq.)
As to claim 5, Backhaus implicitly teaches the selection of work contents of the driver includes selection of a count that the pipette tip pipets a sample since the manipulation needle is used to seed a good cell (see para [0130] et seq.)
As to claims 6 and 7, it is implicit Backhaus that pipette would include the selection of work contents of the driver includes selection of a sample sucking capacity and sample sucking speed and/or a moving speed of the pipette tip (see para [0074] et seq.)
As to claim 8, Backhaus teaches an imager 19 “provided to be capable of” picking up an image of a sample in the sample container placed on the stage, wherein the device controller further receives selection of work contents of the imager, registers a work procedure further including work contents of the imager, the device controller further controls work of the imager in accordance with a work procedure registered by the registrar, the selection of work contents of the imager includes selection of whether to execute imaging automatically, and the imager acquires an image representing whether a sample has been sucked by the pipette tip in a case in which execution of imaging in a work procedure is selected (see para [0115] et seq.).
As to claims 9 and 10, Backhaus teaches a display 4a linked to the controller that displays choices of work contents of the driver in a display unit using a graphical user interface (see para [0073] et seq. and Fig. 10)
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art already made of record and not relied upon but is considered pertinent to applicant's disclosure include:
a. Matsumoto et al., (US 2019/0049357) a sample processing apparatus, a sample processing system, and a method of calculating measurement time, which allow an operator to efficiently capture images of cells. This invention relates to a sample processing apparatus 10 for measuring and analyzing a measurement sample 22. The sample processing apparatus 10 includes a light source 121 that irradiates light to the measurement sample 22, an imaging unit 154 that images light generated from the measurement sample 22 by irradiation with light, concentration information of cells included in the measurement sample 22 And a processing unit 11 that calculates a time required for cell imaging. The required time includes the time required for the processing of the image captured by the imaging unit 154 and the time required for the analysis of the image processed by the imaging unit 154.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached on 9:30am-7:30 pm EST.
Examiner interviews are available via telephone 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.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798
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