DETAILED ACTION
Status of Submission
This Office action is responsive to the preliminary amendment filed on September 4, 2024, which has been entered.
Claims Subject to Examination
Amended1 patent claims 1-10, 12-21 and 28-35 are subject to examination. Patent claims 11 and 22-27 have been canceled.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 11,440,057 B2, which issued from Application No. 16/924,885, which claimed priority to US Provisional Application No. 62/872,844. The “original disclosure” is the disclosure of Application No. 16/924,885 as filed on July 9, 2020. Any subject matter added to the disclosure (including the claims) during either the earlier-concluded examination of Application No. 16/924,885 or the examination of the instant reissue application does not constitute a part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
Objection to Amendment – New Matter Added to Instant Application
The amendment filed on September 4, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the reasons given below.
The original disclosure describes a sorting system that comprises:
A pupae detection system 288 in the form of an optical detection device (e.g., laser gate or light curtain) that (i) is positioned along a primary channel 118 of an isolation device 100, (ii) projects a light beam 290 onto a light sensor, and (iii) detects when a pupa enters a data gathering zone by detecting the pupa traversing intersection 124g of the isolation device 100 when the light beam 290 is blocked by the pupa. See Fig. 2; col. 7, ll. 8-12, 28-32 and 51-54; col. 9, ll. 28-36; col. 15, ll. 3-122. The alternative embodiment of Fig. 6 includes a similar pupa detection sensor 612. See col. 11, ll. 11-15; col. 11, l. 60 to col. 12, l. 4.
A valve 254 that is closed so as to shut (or partially close) an outlet 112 of the isolation device 100 in response to the pupae detection system 288 detecting that a single pupa has passed the intersection 124g to position the single pupa in the data gathering zone for viewing/imaging and identification. See Fig. 2; col. 7, ll. 8-18, 32-36 and 51-54; col. 9, ll. 43-61. Additional valves 262, 264, 266, 268, 270 and a diaphragm 282 are used to finely adjust the position of the pupa for viewing or imaging. See col. 16, ll. 25-37.
An optical sensor 258 in the form of a camera positioned above the isolation device 100 and aimed to observe or capture an image of the single pupa through a transparent cover 296 when the single pupa is in the data gathering zone located underneath the optical sensor 258. See Fig. 2; col. 7, ll. 16-32; col. 9, l. 62 to col. 10, l. 3; col. 16, ll. 25-28 and 55-57. The single pupa imaged by the optical sensor 258 may be identified using object recognition techniques or image recognition techniques. See col. 9, ll. 55-58. The optical sensor 258 may include any suitable combination of image sensors, lenses, computer hardware, or computer software. See col. 10, ll. 4-7. The alternative embodiment of Fig. 6 includes a similar optical sensor 606 for capturing images of the isolated pupa. See col. 11, ll. 11-23 and 38-50; col. 17, ll. 49-54.
As issued, the patent claims recited the following subject matter corresponding to the disclosed pupae detection system 288, the disclosed optical sensor 258, and the processing of data produced thereby:
Pupae detection system 288
Optical Sensor 258
“an optical sensor positioned proximate the outlet of the isolation device to capture images of pupae from the third flow of liquid, wherein the optical sensor is positioned between the first intersection and the outlet” (patent claim 1, ll. 12-15)
“further comprising a pupa detection system for detecting when a single insect pupa passes the first intersection of the primary channel and the first secondary channel” (patent claim 4, depending from claim 1)
“wherein the optical sensor is configured to capture the image when the single insect pupa passes the first secondary channel” (patent claim 6, depending from claim 4)
“determining that an individual pupa has passed the first secondary channel” (patent claim 8, ll. 10-11)
“after the individual pupa has passed the first secondary channel: capturing an image of the individual pupa using an optical sensor positioned between the first intersection and the outlet” (patent claim 8, ll. 12-16)
“wherein determining that the individual pupa has passed the first secondary channel comprises using a laser gate across the primary channel adjacent to the first secondary channel” (patent claim 13, depending from claim 8)
“an optical sensor positioned between the first intersection and the outlet to capture an image of an insect pupa in the isolation device” (patent claim 15, ll. 9-11)
“determine the insect pupa has passed the first secondary channel” (patent claim 15, ll. 17-18)
“receive an image of the insect pupa from the optical sensor” (patent claim 15, ll. 19-20)
“receive the image of the insect pupa when the insect pupa passes the first secondary channel” (patent claim 16, depending from claim 15)
“capturing an image of the individual pupa using an optical sensor positioned between the second channel and a first and second pupae outlet” (patent claim 28, ll. 12-14)
“wherein the optical sensor is positioned adjacent the first pupae outlet or the second pupae outlet” (patent claim 30, depending from claim 29)
Amended patent claim 1 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “[an optical]a sensor positioned proximate the outlet of the isolation device to [capture images of]detect pupae from the third flow of liquid, wherein the [optical] sensor is positioned between the first intersection and the outlet” (ll. 9-11). This constitutes new matter because the original disclosure does not provide support for the sensor of the pupae detection system 288 being (i) positioned proximate the outlet, or (ii) positioned between the first intersection and the outlet.3 Further, the original disclosure does not describe the optical sensor 258 as a sensor that functions to detect pupae. rather, the pupae detection system 288 is described as performing this detecting function.
Patent claim 4 (depending from amended patent claim 1) now requires (i) the sensor of claim 1 that reads on the pupae detection system 288 while introducing (ii) a pupae detection system. This constitutes new matter because the original disclosure does not provide support for a sorting system having multiple pupae detection systems/sensors.
Amended patent claim 8 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “after the individual pupa has passed the first secondary channel: [capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the first intersection and the outlet” (ll. 8-10) and “sorting the individual pupa based on [the pupa type]a sensor signal from the sensor” (ll. 12-13). This constitutes new matter because the original disclosure does not provide support for (i) the sensor of the pupae detection system 288 being positioned between the first intersection and the outlet,4 or (ii) sorting the individual pupa based on a sensor signal from the sensor of the pupae detection system 288. Further, the original disclosure does not describe the optical sensor 258 as a sensor that performs the function of sensing individual pupa; rather, the pupae detection system 288 is described as performing this sensing/detecting function.
Amended patent claim 8 recites “determining that an individual pupa has passed the first secondary channel” (l. 7) in combination with “after the individual pupa has passed the first secondary channel: [capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the first intersection and the outlet” (ll. 8-10). This constitutes new matter because the original disclosure does not provide support for a method in which the sensor of the pupae detection system 288 (i) performs the function of determining that an individual pupa has passed the first secondary channel, and (ii) subsequently performs the function of sensing the individual pupa.
Amended patent claim 10 recites “wherein sorting the individual pupa based on the [pupa type]sensor signal from the sensor comprises opening a valve downstream of the outlet of the primary channel to direct the individual pupa to a container system”. As explained above with respect to claim 8, this constitutes new matter because the original disclosure does not provide support for sorting the individual pupa based on a sensor signal from the sensor of the pupae detection system 288.
Patent claim 13 (depending from amended patent claim 8) now requires (i) the sensor of claim 8 that reads on the pupae detection system 288 while introducing (ii) a laser gate (i.e., a specific form of pupae detection system) used to determine that the individual pupa has passed the first secondary channel. This constitutes new matter because the original disclosure does not provide support for a method of sorting using multiple pupae detection systems/sensors.
Amended patent claim 15 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “[an optical]a sensor positioned between the first intersection and the outlet to [capture an image of]sense an insect pupa in the isolation device” (ll. 8-9), “receive [an image of the insect pupa from] a sensor signal from the [optical ] sensor” (ll. 15-16), and “cause the insect pupa to travel into holding tank of the storage system based at least in part on the [pupa characteristic]sensor signal from the sensor. This constitutes new matter because the original disclosure does not provide support for the sensor of the pupae detection system 288 being positioned between the first intersection and the outlet,5 or (ii) sorting the pupa based on a sensor signal from the sensor of the pupae detection system 288. Further, the original disclosure does not describe the optical sensor 258 as a sensor that functions to sense an insect pupa; rather, the pupae detection system 288 is described as performing this sensing/detecting function.
Amended patent claim 15 recites “determine the insect pupa has passed the first secondary channel” (l. 14) in combination with “receive [an image of the insect pupa from] a sensor signal from the [optical ] sensor” (ll. 15-16). This constitutes new matter because the original disclosure does not provide support for a method in which the sensor of the pupae detection system 288 (i) performs the function of determining that a pupa has passed the first secondary channel, and (ii) subsequently or separately performs the function of producing a sensor signal.
Amended patent claim 16 replaces limitations directed exclusively to the optical sensor 258 with limitations that read on the pupae detection system 288 such that it now recites “wherein the processor executable instructions are further configured to receive[the image of]the sensor signal [the insect pupa ] when the insect pupa passes the first secondary channel”. This constitutes new matter for similar reasons given above with respect to claim 15.
Amended patent claim 18 recites “to cause the outlet to open after [capturing the image of]sensing the insect pupa”. As explained above with respect to claim 15, this constitutes new matter because the original disclosure does not provide support for sorting the individual pupa (by opening the outlet) based on a sensor signal from the sensor of the pupae detection system 288.
Amended patent claim 21 recites “to cause selective closure of the outlet to position the insect pupa for [imaging]sensing”. This constitutes new matter because the original disclosure does not provide support for selective closing of the outlet to position the insect pupa for sensing/ detecting the pupa by the sensor of the pupae detection system 288.
Amended patent claim 28 replaces limitations directed exclusively to the optical sensor 606 with limitations that read on the pupae detection sensor 612 such that it now recites “[capturing an image of]sensing the individual pupa using [an optical ]a sensor positioned between the second channel and a first and second pupae outlet” (ll. 7-8) and “providing a third flow of liquid to sort the individual pupa into the first pupae outlet or the second pupae outlet based on [the pupa type]output from the sensor” (ll. 10-11). This constitutes new matter because the original disclosure does not provide support for (i) the pupae detection sensor 612 being positioned between the second channel and first and second pupae outlets,6 or (ii) sorting the individual pupa based on output from the sensor of the pupae detection sensor 612. Further, the original disclosure does not describe the optical sensor 258 as a sensor that performs the function of sensing individual pupa; rather, the pupae detection system 288 and the pupae detection sensor 612 are described as performing this sensing/detecting function.
Amended patent claim 30 replaces limitations directed exclusively to the optical sensor 606 with limitations that read on the pupae detection sensor 612 such that it now recites “wherein the [optical ]sensor is positioned adjacent the first pupae outlet or the second pupae outlet, and wherein determining the number of pupae comprises receiving [data ]additional output from the [optical ]sensor. This constitutes new matter because the original disclosure does not provide support for (i) the pupae detection sensor 612 being positioned adjacent the first pupae outlet or the second pupae outlet, or (ii) determining the number of pupae based on additional output from the s pupae detection sensor 612.
Amended patent claim 32 recites “providing the second flow of liquid comprises opening the first pupae outlet or the second pupae outlet based on the [pupa type]output from the sensor”. This constitutes new matter because the original disclosure does not provide support for positioning the individual pupa (by providing the second flow of liquid) based on output from the pupae detection sensor 612.
Applicant is required to cancel the new matter in response to this Office action.
New Matter Added in Earlier Examination
The amendment filed in Application No. 16/924,885 on April 13, 2022 failed to comply with 35 USC 132(a) because it improperly introduced new matter for the reasons given below.
Claim 32 (later renumbered as patent claim 31) was amended to read “wherein adjusting the first flow of liquid comprises introducing the second flow of liquid in a second direction opposite the first direction”. This constitutes new matter because the original disclosure does not provide support for introducing the second flow of liquid in a second direction opposite the first direction (the first direction being a flow direction through the first channel per patent claim 28).
New claim 36 was added (later renumbered as patent claim 33), with this claim reciting “wherein substantially all of the first flow of liquid, the second flow of liquid, and the third flow of liquid that enters the primary channel exits the primary channel at the outlet”. This constitutes new matter because the original disclosure does not provide support for the third flow entering the primary channel.
New claim 37 was added (later renumbered as patent claim 34), with this claim reciting “wherein the inlet of the primary channel is the only inlet of the primary channel and the outlet of the primary channel is the only outlet of the primary channel”. This constitutes new matter because the original disclosure does not provide support for the inlet of the primary channel being the only inlet thereof, or for the outlet of the primary channel being the only outlet thereof.
New claim 38 was added (later renumbered as patent claim 35), with this claim reciting “wherein the outlet is selectively operable between an open position and a closed position such that, when the outlet is in the closed position, a first insect pupae of the adjacent insect pupae is separated from other insect pupae of the adjacent insect pupae by remaining stagnant in the third flow of liquid while the other insect pupae are carried by the third flow towards the inlet of the primary channel”. This constitutes new matter because the original disclosure does not provide support for the outlet being selectively operable between open and closed positions; rather, a valve is disclosed as being opened and closed. Further, this constitutes new matter because the original disclosure does not provide support for a first insect pupae being separated from other insect pupae by remaining stagnant “in the third flow of liquid”.
Applicant is required to cancel the new matter in response to this Office action.
Effective Filing Date
The instant application seeks reissue of US Patent No. 11,440,057 B2, which issued from Application No. 16/924,885, which claimed priority to US Provisional Application No. 62/872,844. Provisional Application No. 62/872,844 only discloses the embodiment(s) shown in Figs. 1-5 of US Patent No. 11,440,057 B2. Thus, Provisional Application No. 62/872,844 fails to provide support in the manner required by 35 USC 112(a) for any claims directed exclusively to the embodiment(s) shown in Figs. 6-10 of US Patent No. 11,440,057 B2. Thus, aside from the new matter addressed above:
The effective filing date of claims 1-21 and 33-35 is July 11, 2019, i.e., the filing date of Provisional Application No. 62/872,844.
The effective filing date of claims 28-32 is July 9, 2020, i.e., the filing date of Application No. 16/924,885.
Reissue Oath/Declaration
The reissue declaration filed on September 4, 2024 is defective because it fails to specifically and properly identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the reissue declaration states the following:
The patent claims more than applicant had a right to claim in view of U.S. Patent No. 7,452,725, which describes an image-based analyzer device 24 having exciters 40 and detectors 44, and using CCD-image analysis. See 8:38 to 20:11. As an example, claim 1 of the patent is amended in this reissue application to exclude the image-based sensors and analysis described in U.S. Patent No. 7,452,725.
This statement is not accurate or proper because it states that the patent claims “more” than applicant had the right to claim, but the amendments filed in this reissue application are not consistent with this statement. If applicant’s claim scope exceeded their right, then the reissue claims should be narrowed relative to the patent claims. However, in this case, the reissue claims are broadened relative to the patent claims at least because the reissue claims do not require an optical sensor that captures an image(s) of a pupa or pupae.
The reissue declaration filed on September 4, 2024 is also defective because it fails to specifically identify an original patent claim that the instant broadening reissue application seeks to broaden. See 37 CFR 1.175(b) and MPEP 1414-1414.01. As required by 37 CFR 1.175(b), for an application that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. While claim 1 is mentioned in the reissue declaration, the declaration fails to state applicant’s intent to broaden this patent claim.
Claim Interpretation – BRI Standard
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
Claim Interpretation – Means-Plus-Function Exception to BRI Standard
An exception to the BRI standard occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 U.S.C. 112(f), formerly 35 U.S.C. 112, 6th paragraph. See MPEP 2181.
Do the claims invoke 35 U.S.C. 112(f)?
I.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Egenara, Inc. v. Cisco Systems, Inc.
Altiris Inc. v. Symantec Corp.
Ex Parte Smith (informative)
Ex parte Erol (informative)
Ex parte Marc E. Davis et al. (instructive)
I.B. Do system claims 15-21 recite computer-implemented functional claim limitations?
Claims 15-21 require that the claimed system has a “processor configured to execute processor executable instruction stored in a non-transitory computer-readable medium configured to cause the processor to” (claim 15, ll. 12-13) perform the functions listed in the following table:
Function #1
(claim 15)
Determine the insect pupa has passed the first secondary channel
Function #2
(claim 15)
Receive a sensor signal from the sensor
Function #3
(claim 15)
Cause the insect pupa to travel into holding tank of the storage system based at least in part on the sensor signal from the sensor
Function #4
(claim 16)
Receive the sensor signal when the insect pupa passes the first secondary channel
Function #5
(claim 17)
Cause the outlet to close after determining the insect pupa has passed the first secondary channel
Function #6
(claim 18)
Cause the outlet to open after sensing the insect pupa
Function #7
(claim 19)
Causing the insect pupa to travel into the holding tank comprises sorting the insect pupa based on a pupa characteristic that comprises at least one of male, female, larva, and waste
Function #8
(claim 20)
Cause a fluid inlet to add fluid at the outlet when more than one insect pupa passes the first secondary channel
Function #9
(claim 21)
Cause selective closure of the outlet to position the insect pupa for sensing
Since claims 15-21 recite functional claim limitations, it must be determined whether such limitations are implemented by a computer(s). Claim 15 explicitly requires implementation by a computer by reciting that the claimed system has a “processor configured to execute processor executable instruction stored in a non-transitory computer-readable medium” (ll. 12-13). Further, applicant’s disclosure states that:
The claimed system has one or more computers configured to perform particular operations by virtue of having software, firmware, hardware, or a combination thereof. See col. 1, ll. 39-43.
The isolation and sorting systems may be automated and performed or operated by a computing device. See col. 4, ll. 2-5.
A computing device 292 outputs a signal to close the valve 254 when the pupae detection system 288 detects or determines that a single pupa has passed the intersection 124g, thereby positioning the pupa for identification using object recognition techniques or image recognition techniques based on input from the optical sensor (i.e., camera) 258. See col. 9, l. 43 to col. 10, l. 7.
The computing device/system 292 actuates each valve 254, 262, 264, 266, 268, 270 and 284 by an appropriate signal, e.g., a logical ‘0’ or ‘1’ to fully open or close the valve, or by sending an analog voltage to set any desired position between fully open and fully closed. See col. 10, ll. 62-67.
The computer device/system 292 is any suitable electronic device configured to execute computer-executable instructions to perform operations and including a processor, e.g., personal computer, hand-held device, server computer, server cluster, virtual computer, etc. See col. 10, l. 67 to col. 11, l. 5.
The computer device/system 292 determines that a first insect pupa has passed the intersection 124g (based on input from the pupae detection system 288). See col. 16, ll. 15-19.
The computer device/system 292 closes the outlet 112 (by operating valve 254) in response to detecting that the first pupa has passed the intersection 124g. See col. 16, ll. 20-24.
The computer device/system 292 controls the diaphragm 282 or inlet 286 (i.e., valve 284) in concert with the valves 262, 264, 266, 268 and 270 to finely adjust the position of the insect for imaging by the optical sensor (i.e., camera) 258. See col. 16, ll. 25-54.
Following the capturing of an image of the insect by the optical sensor 258, the computer device/system 292 identifies the insect using any number of identifying techniques based on size or imaging. See col. 16, ll. 55-64.
After identifying an insect type, the computer device/system 292 opens a valve 262, 264, 266, 268 or 270 associated with a sorting tank corresponding to a trait by which the insect pupa is sorted. See col. 16, l. 65 to col. 17, l. 14.
Accordingly, claims 15-21 are considered to recite computer-implemented functional claim limitations.
I.C. Do computer-implemented system claims 15-21 invoke 35 U.S.C. 112(f), i.e., do these claims (i) define the invention in terms of functions to be performed, but (ii) fail to recite sufficient structure for performing all of the claimed functions?
Claims 15-21 require that the claimed processor executes computer instructions stored in non-transitory computer-readable medium to perform the computer-implemented functions identified above. Since claims 15-21 define the invention in terms of functions to be performed, the question becomes whether these claims recite sufficient structure for performing all of the claimed functions.
Claims 15-21 do not define the claimed processor (or associated computer system) as having specific structure or a specific arrangement of structural components. These claims fail to provide POSITA with an understanding of the structural elements/arrangements necessary to carry out the claimed functions.
Further, applicant’s computer device/system 292 is not disclosed as having specific structure or a specific arrangement of structural components. Thus, applicant’s disclosure does not support a finding that the claimed processor constitutes sufficient structure for performing all of the claimed functions.
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that:
An ordinary, off-the-shelf computer system is structure. Thus, in reciting a general-purpose, computer-implemented “processor”, claims 15-21 recite some structure for performing the claimed functions. The question is whether this structure is sufficient for performing all of the claimed functions.
The hardware components of a computer system that includes a processor are old and well known.
Based upon the special functions required by claims 15-21, and based upon the description provided by applicant’s disclosure, the claimed “processor” is necessarily implemented using a computer system having a particular configuration.7 That is, a general purpose computer system must be specially equipped, i.e., provided with special programming (i.e., the claimed processor executable instructions), in order to transform it into a special-purpose computer system for performing the specific functions and achieving the intended outcomes described in applicant’s disclosure and recited in the claims.
Based on the above findings, applicant’s claimed invention is not only a computer-implemented invention, but primarily a software-implemented invention. That is, the distinctive features of the invention arise from the special programming instructions that are necessarily required to be executed by a special-purpose computer processor in order to implement the claimed computer-implemented invention and perform the special functions required by the claims.
Accordingly, a general-purpose, computer-implemented “processor”, as recited generically in claims 15-21, does not constitute sufficient structure for performing all of the claimed functions since it lacks the special programming required. Further, while claim 15 requires “processor executable instructions”, the actual algorithm or step-by-step instructions are not recited in claims 15-21.
Conclusion: Independent computer-implemented system claims 15-21 invoke 35 U.S.C. 112(f) because these claims:
(i) Recite Function #1 to Function #9 and, therefore, define the invention in terms of functions to be performed.
(ii) Fail to recite sufficient structure for performing all of the claimed functions because the claimed “processor”, i.e., general-purpose computer processor that lacks special programming, is not capable of performing all of the claimed functions.
For claims that invoke 35 U.S.C. 112(f), does the specification disclose adequate corresponding structure to perform all of the claimed functions?
II.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology
Ex Parte Smith
Ex parte Erol
II.B. For computer-implemented system claims 15-21, does the specification disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform all of the claimed functions?
Based upon a review of the applicant’s original disclosure, the examiner finds that the closest structure disclosed as corresponding to the claimed “processor” is the processor that forms part of the disclosed computer device/system 292.
In the case of computer-implemented inventions that rely upon special software (special programming) to execute the claimed functions, the structure disclosed in the specification must be more than a general-purpose computer or processor. Rather, the “corresponding structure” is an algorithm(s) for performing the claimed functions. This may be may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure. Regardless of the manner in which it is expressed, the algorithm(s), by definition, must constitute a finite sequence of specific logic steps for performing a particular task.
There is a distinction between language that simply describes the function to be performed and the required disclosure of an algorithm(s) by which it is performed. In other words, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of a specific algorithm(s) that describes how the claimed function(s) is performed.
Further, it is not sufficient for the applicant to simply state or later argue that POSITA could theoretically write the necessary algorithm(s) and/or would know what software to employ to accomplish the claimed function(s), i.e., to show that the enablement requirement of 35 U.S.C. 112(a) is met. The inquiry is whether one skilled in the art would understand the patent specification itself to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithm(s) used by applicant for performing the claimed function(s).
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that:
Function #1, which pertains to evaluating a signal(s) from a sensor of a pupae detection system to determine that a pupa has passed a channel, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to process sensor inputs and carry out the claimed determination.
Function #3 and Function #7, which pertain to directing a pupa into a holding tank based on a pupa characteristic determined from a signal(s) from a sensor, are not relatively basic computer-implemented functions. Rather, complex algorithms are required in order to (i) process a signal(s) from a sensor to determine a pupa characteristic, and (ii) direct a pupa to a holding tank based on the determined characteristic.
Function #4, which pertains to receiving sensor input after determining the pupa has passed a channel, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to time the receipt of the sensor input based on the determination that the pupa has passed a channel.
Function #5 and Function #9, which pertain to selectively closing an outlet to position the pupa for sensing after determining the pupa has passed a channel, are not relatively basic computer-implemented functions. Rather, a specific algorithm(s) is required in order to time the closing of the outlet based on the determination that the pupa has passed a channel.
Function #6, which pertains to selectively opening an outlet after sensing the pupa, is not a relatively basic computer-implemented function. Rather, a specific algorithm(s) is required in order to time the opening of the outlet based on the conclusion of the sensing of the pupa.
Function #8, which pertains to controlling a fluid inlet to add fluid at the outlet based on a determination that more than one pupa passes a channel, is not a relatively basic computer-implemented function. Rather, complex algorithms are required in order to (i) process inputs so as to determine that more than one pupa passes a channel, and (ii) time the control of the fluid inlet to add fluid based on the presence of more than one pupa.
With respect to the algorithms required for performing Function #1 and Function #3 to Function #9, the examiner finds that the disclosure contains language that describes the functions to be performed, but it fails to include the required disclosure of an algorithm(s) by which the functions are performed. That is, applicant merely discloses desired results or intended outcomes while failing to disclose the means of achieving those results/outcomes in the form of specific algorithms that describe how the claimed functions are performed.
Accordingly, applicant has failed to disclose algorithms or step-by-step processes for performing each of the claimed functions. It is not enough that POSITA could theoretically write the necessary algorithms and/or would know what software to employ; rather, the specification must explain applicant’s “corresponding structure”, i.e., the necessary algorithms used by applicant for performing the claimed functions.
Conclusion: For computer-implemented system claims 15-21, the specification fails to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithms or step-by-step processes, used by applicant for performing each of the claimed functions, i.e., Function #1 and Function #3 to Function #9.
III. Lack of Compliance with 35 USC 112
Due to the failure to disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform claimed Function #1 and Function #3 to Function #9, a rejection under 35 USC 112(b) is set forth below.
IV. How to Prevent Invoking 35 U.S.C. 112(f)
If applicant does not intend to have the above-discussed limitations of claims 27-52 invoke 35 U.S.C. 112(f), applicant may amend the claims so they will clearly not invoke 35 U.S.C. 112(f).
Moreover, if applicant believes the claimed “processor” of claims 15-21 to have a structural meaning known to POSITA, applicant should expressly state on the record that this limitation has a structural meaning known to POSITA and provide appropriate evidence in support thereof (e.g., a prior art U.S. patent). Additionally, in order to show that the above-discussed limitations of the claims do not invoke 35 U.S.C. 112(f), applicant must also state on the record and provide evidence in support thereof that the claimed structure can perform the claimed functions in their entirety.
Applicant is reminded that, should the applicant amend a claim limitation so that it does not invoke 35 U.S.C. 112(f) or successfully argue that the limitation does not invoke 35 U.S.C. 112(f), elements from the specification (including any algorithms) will not be read into the claims since the Federal Circuit has repeatedly and clearly held that it will not read unstated limitations into claim language.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
GROUND 2: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is explained above.
GROUND 3: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). See also MPEP 1412.02.
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Step 1: Claims 1-10, 12-21 and 28-35 of the instant reissue application are broader in scope than patent claims 1-35 at least because the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. See the further explanation above.
Step 2: During the original prosecution (Application No. 16/924,885), the previous examiner initially rejected claims 1-22 and 24-35 based upon prior art while indicating that dependent claim 23 would be allowable if rewritten in independent form. See the Office action mailed on December 17, 2021. In the response filed on April 13, 2022, applicant responded to the rejections by narrowing the scope of the claims as follows and arguing that these limitations defined over the prior art:
Claim 1 was amended to require (i) a first secondary channel that intersects a primary channel at a first intersection between an inlet and outlet of the primary channel, and (ii) the claimed optical sensor is positioned between the first intersection and the outlet.
Claim 8 was amended to require (i) providing the claimed (first) flow of fluid at an inlet of a primary channel toward an outlet of the primary channel, (ii) providing the claimed second flow of fluid through a first secondary channel and at a first intersection with the primary channel, and (iii) capturing the claimed image of the individual pupa using an optical sensor positioned between the first intersection and the outlet.
Claim 15 was amended to require (i) a first secondary channel intersecting a primary channel at a first intersection between an inlet and outlet, and (ii) the claimed optical sensor is positioned between the first intersection and the outlet.
Claim 23 was canceled and its subject matter was incorporated into claim 22.
Claim 29 was amended to require (i) adjusting a first flow of liquid in the claimed first channel by introducing a second flow of liquid via a second channel to position an individual pupa in an imaging portion of the first channel, and (ii) capturing the claimed image of the individual pupa using an optical sensor positioned between the second channel and a first and second pupae outlet.
Because of the amendments and arguments filed on April 13, 2022, the previous examiner withdrew the prior art rejections and issued the Notice of Allowability on May 10, 2022. The examiner’s reasons for allowance cited the subject matter added to claims 1 and 22. The claims were renumbered, upon allowance, in the same order presented. Thus, independent claims 1, 8, 15 and 22 became patent claims 1, 8, 15 and 22, respectively, while independent claim 29 was renumbered as patent claim 28.
The broader aspects of reissue claims 1-10, 12-21 and 28-35 relate to subject matter surrendered in the original prosecution because these claims fail to recite subject matter that was added to patent claims 1, 8, 15 and 28 and argued for patentability during the earlier-concluded examination. Also, claims 1-10, 12-21 and 28-35 are broader in certain respects than the surrendered versions of claims 1, 8, 15 and 29 filed in Application No. 16/924,885 on July 9, 2020.
Overlooked Aspects Inquiry: When an examiner determines in Step 2 that the broadening aspects of reissue claims relate to subject matter that applicant previously surrendered during the prosecution of the original application, the overlooked aspects inquiry may be applicable. See MPEP 1412.01, subsection II, and MPEP 1412.02, subsection II.B. The term “overlooked aspects” refers to claims to separate inventions/embodiments/species that were never presented (i.e., were not claimed) in the original application. Since overlooked aspects were never claimed, they were never surrendered. Thus, claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application.
In this case, the subject matter of reissue claims 1-10, 12-21 and 28-35 does not constitute “overlooked aspects” because the patent claims recite the pupae detection system that is now covered by the reissue claims. For example, patent claim 4 recites a pupa detection system for detecting when a single insect pupa passes the first intersection. Also, patent claim 8 recites the step of determining that an individual pupa has passed the first secondary channel (which method step is performed using the pupae detection system according to the patent specification). Further, patent claim 13 recites a laser gate as one form of a pupa detection system. In addition, patent claim 15 recites a processor that executes instructions to determine the insect pupa has passed the first secondary channel (which function is performed based on input from the pupae detection system according to the patent specification).
Step 3: First, the reissue claims must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. See In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
In this case, reissue claims 1-10, 12-21 and 28-35 violate the recapture rule because they are broader in scope than the surrendered versions of claims 1, 8, 15 and 29 filed in Application No. 16/924,885 on July 9, 2020 due to:
The omission from claim 1 of the requirements of an optical sensor positioned proximate the outlet of the isolation device to capture images of pupae from the third flow of liquid, and a storage unit system into which insect pupae of a first type are directed based at least in part on the captured images.
The omission from claim 8 of the requirements of capturing an image of the individual pupa, determining a pupa type of the individual pupa based on the image, and sorting the individual pupa based on the pupa type.
The omission from claim 15 of the requirements of an optical sensor to capture an image of an insect pupa, a processor configured to execute instructions so as to receive an image of the insect pupa from the optical sensor, determine a pupa characteristic based on the image, and cause the insect pupa to travel into a holding tank based at least in part on the pupa characteristic.
The omission from claim 28 of the requirements of adjusting the flow of liquid to position an individual pupa in an imaging portion of the first channel, capturing an image of the individual pupa, determining a pupa type of the individual pupa based on the image, and providing a flow of fluid to sort the individual pupa into a first pupae outlet or a second pupae outlet based on the pupa type.
Second, it must be determined whether the reissue claims omit or broaden any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. See Pannu v. Storz Instruments Inc., 258 F.3d at 1371-72, 59 USPQ2d at 1600. However, if the patentee modifies the added or argued limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. See In re Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4.
In this case, reissue claims 1-10, 12-21 and 28-35 violate the recapture rule because:
Claims 1-10 and 12-21 completely omit the requirement of an optical sensor positioned between the second channel and a first and second pupae outlet while substituting a requirement that reads on the sensor of the disclosed pupae detection system 288 rather than on the originally-claimed optical sensor 258. Thus, claims 1-10 and 12-21 completely omit limitations that were added to the claims and/or argued for patentability in order to secure allowance.
Claims 28-32 completely omit the requirement of an optical sensor positioned between the second channel and a first and second pupae outlet while substituting a requirement that reads on the disclosed pupae detection sensor 612 rather than on the originally-claimed optical sensor 606. Thus, claims 28-32 completely omit limitations that were added to the claims and/or argued for patentability in order to secure allowance.
For the above reasons, claims 1-10, 12-21 and 28-35 of the instant reissue application improperly recapture broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
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.
GROUND 4: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. The added material which is not supported by the original disclosure is explained above.
GROUND 5: Claims 13, 29, 30 and 32 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. It is not enough that a skilled artisan could theoretically construct his/her own version of the claimed invention. Rather, applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. Rather, the specification must explain how the invention is structured and how it functions in order to achieve the desired results. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims which enable the claimed invention to achieve the desired results.
Problems satisfying the written description requirement often occur when claim language is generic or functional, or both. Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed, i.e., an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries. Similarly, the written description requirement is not satisfied when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, simply restating the functions recited in the claims is not necessarily sufficient. The algorithm or steps/procedure taken to perform the functions must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. See MPEP 2161.01, section I.
It is not enough that a skilled artisan could theoretically write a computer program(s) to achieve the claimed functions because a specification must explain how the inventor intends to achieve the claimed functions to satisfy the written description requirement. Further, a description that merely renders the invention obvious does not satisfy the written description requirement. Sufficient information must be provided to show that the inventor had possession of the claimed invention, including details about how a disclosed general-purpose computer or processor is programmed to achieve the desired outcomes defined by the claimed functions.
With respect to claim 13, the patent specification mentions the possibility of using a laser gate for the disclosed pupae detection system 288. However, no details are given concerning the construction of the laser gate or the manner in which it is arranged in the overall system to accomplish the detection of a pupa that passes the intersection 124g. While claim 13 calls for the laser gate to be across the primary channel adjacent to the first secondary channel, the specification fails to explain how the laser gate is incorporated into the overall system in order to be arranged in this manner. Absent a complete description of each of the essential features recited in the claims which enable the claimed invention to achieve the desired results, the specification fails to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention at the time the application was filed.
With respect to claims 29 and 30, the patent specification provides no explanation as to how applicant determines a number of pupae sorted into the first pupae outlet or the second pupae outlet (claim 29), or how applicant determines the number of pupae by receiving additional output from the sensor (claim 30). Thus, applicant’s claims recite desired/intended outcomes, but applicant’s disclosure fails to sufficiently disclose the required means for achieving those outcomes. Assuming that the claimed determination is performed using applicant’s disclosed computer system, the examiner finds that applicant’s disclosure fails to describe the algorithm(s) or step-by-step process(es) that achieve the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
With respect to claim 32, the patent specification provides no explanation as to how (i) opening the first pupae outlet or the second pupae outlet functions to provide the second flow of liquid that adjusts the first flow of liquid, or (ii) applicant opens the first or second pupae outlet based on the output from the sensor. Thus, applicant’s claims recite desired/intended outcomes, but applicant’s disclosure fails to sufficiently disclose the required means for achieving those outcomes. Assuming that the claimed functions are performed using applicant’s disclosed computer system, the examiner finds that applicant’s disclosure fails to describe the algorithm(s) or step-by-step process(es) that achieve the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
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.
GROUND 6: Claims 15-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
NOTE: This rejection is based on the underlying finding that the rejected claims invoke 35 U.S.C. 112(f), i.e., these claims (i) define the invention in terms of functions to be performed, but (ii) fail to recite sufficient structure for performing all of the claimed functions.
The claims are indefinite due to the failure to disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform claimed Function #1 and Function #3 to Function #9. See the detailed explanation in the above section with the heading Claim Interpretation – Means-Plus-Function Exception to BRI Standard.
GROUND 7: Claims 1-10, 12-21 and 28-35 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In addition to the basis of GROUND 6, the claims are indefinite for the reasons given below.
Claims 1-10, 12-21 and 28-35 have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. See the further explanation above. This renders the claims indefinite because the pupae detection system/sensor 288 or 612 is not disclosed (i) as an alternative to the optical sensor 258 or 606, or (ii) as capable of performing the same functions originally claimed as being performed by the optical sensor 258 or 606.
In claim 2, the introduction of “at least one container” (l. 3) is indefinite because it is unclear how this “at least one container” relates to the container previously introduced in claim 1. Does claim 2 recite the same container as claim 1, or does claim 2 require an additional container(s)?
Claim 3 is indefinite because the recitations “corresponding to a size of the insect pupae” (ll. 2-3) and “smaller than a dimension of the insect pupae” (ll. 4-5) define a size and a dimension of the claimed sorting system in comparison to unclaimed insect pupae that do not have any specified size or dimension, and whose size or dimension can vary. Thus, it is impossible to determine what size and dimension are required by the claim, i.e., what size(s) and dimension(s) are encompassed by the claim scope, and what sizes and dimensions are excluded from the claim scope.
Claim 4 is indefinite because it depends from claim 1, but claim 4 fails define how the “sensor” (claim 1, l. 9) relates to the “pupa detection system” (claim 4, l. 2). Is the sensor part of the pupa detection system? It would appear that it is since the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. However, the “further comprising” language of claim 4 defines the pupa detection system as distinct from the sensor.
In claim 5, the recitation “the outlet comprises a closing device” fails to accurately characterize the invention as it is described in the specification. The disclosed valve 254 is not a part of the outlet 112. Rather, Fig. 2 shows the valve 254 spaced from the outlet 112.
Claim 6 is indefinite because it depends from claim 4, but claim 6 fails define how “the…sensor” (claim 6, ll. 1-2) relates to the “pupa detection system” (claim 4, l. 2). Is the sensor part of the pupa detection system? It would appear that it is since the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. However, claim 6 implies that the sensor is distinct from the pupa detection system.
Claim 7 is indefinite because it recites “a second secondary channel that intersects the primary channel between the first intersection and the outlet at a second intersection”. Since claim 7 depends from claim 1, this recitation in claim 7 requires the sensor of claim 1 to be upstream of the second intersection. This fails to accurately characterize the invention as it is described in the specification. The pupae detection system 288 and its sensor detect when the pupa passes the last intersection 124g. Thus, the claimed sensor is not disclosed as being upstream of the claimed second intersection.
Claim 8 is indefinite because the recitation “corresponding to a size of a representative pupa of the pupae” (l. 4) defines a size of the claimed primary channel in comparison to an unclaimed pupa that does not have any specified size or dimension, and whose size or dimension can vary. Thus, it is impossible to determine what size is required by the claim, i.e., what size(s) is encompassed by the claim scope, and what sizes are excluded from the claim scope.
In claim 9, the term “the flow of fluid” (l. 3) is indefinite because claim 8 introduces more than one flow of fluid. Which of the flows of fluid is claim 9 referring to?
Claim 13 is indefinite because it depends from claim 8, but claim 13 fails define how the “sensor” (claim 8, l. 10) relates to the “laser gate” (claim 13, l. 2). Is the sensor part of the laser gate? It would appear that it is since the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. However, the language of claim 13 defines the laser gate as distinct from the sensor.
Claim 14 is indefinite because the recitation “sorting the individual pupa based on a [the] pupa type” (l. 2) is contradicted by the recitation of “a larvae; or debris”. That is, larvae and debris do not constitute types of individual pupa.
Claim 15 is indefinite because it recites “determine the insect pupa has passed the first secondary channel” (l. 14) followed by the recitation “receive…a sensor signal from the…sensor” (ll. 15-16). This fails to accurately characterize the invention as it is described in the specification since the claims have been amended by replacing limitations directed exclusively to the optical sensor 258 or 606 with limitations that read on the pupae detection system/sensor 288 or 612. Since the pupae detection system/sensor 288 is used to perform the function of determining the pupa has passed the first secondary channel, the invention is not disclosed as subsequently receiving a sensor signal from the sensor of the pupae detection system/sensor 288.
In claim 15, the recitation “into holding tank” (l. 18) is indefinite because it is unclear how this “holding tank” relates to the at least one holding tank previously introduced in claim 15 (l. 10). Does line 18 recite the same holding tank as line 10, or is it a different holding tank?
In claim 17, the recitation “to cause the outlet to close” fails to accurately characterize the invention as it is described in the specification. The disclosed valve 254 is not a part of the outlet 112. Rather, Fig. 2 shows the valve 254 spaced from the outlet 112. Thus, the outlet itself does not close.
In claim 18, the recitation “to cause the outlet to open” fails to accurately characterize the invention as it is described in the specification. The disclosed valve 254 is not a part of the outlet 112. Rather, Fig. 2 shows the valve 254 spaced from the outlet 112. Thus, the outlet itself does not open and close.
In claim 18, the recitation “to cause the outlet to open after…sensing the insect pupa” fails to accurately characterize the invention as it is described in the specification. In fact, the specification states just the opposite, i.e., that the valve 254 is closed (to close the outlet) after the pupae detection system/sensor 288 detects the pupa.
Claim 19 is indefinite because the recitation “sorting the individual pupa based on a [the] pupa characteristic” (ll. 2-3) is contradicted by the recitation of “larva; or debris”. That is, larva and debris do not constitute characteristics of individual pupa.
Claim 20 is indefinite because the specification fails to describe or explain how fluid is added at the outlet ‘when more than one insect pupa passes the first secondary channel”. Absent such disclosure, it is impossible to determine the scope of the claim with a reasonable degree of certainty.
In claim 21, the recitation “to cause selective closure of the outlet” fails to accurately characterize the invention as it is described in the specification. The disclosed valve 254 is not a part of the outlet 112. Rather, Fig. 2 shows the valve 254 spaced from the outlet 112. Thus, the outlet itself does not close.
Claim 28 is indefinite because the recitation “corresponding to a size of a representative pupa of the pupae” (l. 4) defines a size of the claimed first channel in comparison to an unclaimed pupa that does not have any specified size or dimension, and whose size or dimension can vary. Thus, it is impossible to determine what size is required by the claim, i.e., what size(s) is encompassed by the claim scope, and what sizes are excluded from the claim scope.
With respect to claims 29 and 30, the patent specification provides no explanation as to how applicant determines a number of pupae sorted into the first pupae outlet or the second pupae outlet (claim 29), or how applicant determines the number of pupae by receiving additional output from the sensor (claim 30). Thus, applicant’s claims recite desired/intended outcomes, but applicant’s disclosure fails to sufficiently disclose the required means for achieving those outcomes. Given the lack of supporting disclosure, the scope of the claims cannot be determined with a reasonable degree of certainty.
Claim 31 fails to accurately characterize the invention as it is described in the specification because the claimed second flow is not disclosed as being in a second direction opposite the claimed first direction.
With respect to claim 32, the patent specification provides no explanation as to how (i) opening the first pupae outlet or the second pupae outlet functions to provide the second flow of liquid that adjusts the first flow of liquid, or (ii) applicant opens the first or second pupae outlet based on the output from the sensor. Thus, applicant’s claims recite desired/intended outcomes, but applicant’s disclosure fails to sufficiently disclose the required means for achieving those outcomes. Given the lack of supporting disclosure, the scope of the claims cannot be determined with a reasonable degree of certainty.
Claim 33 is indefinite because it is inconsistent with claim 1 from which it depends. Claim 33 requires all of the third flow that enters the primary channel to exit at the outlet, but claim 1 does not define the third flow as entering the primary channel. The specification also fails to define the third flow in this manner.
In claim 35, the recitation “the outlet is selectively operable between an open position and a closed position” fails to accurately characterize the invention as it is described in the specification. The disclosed valve 254 is not a part of the outlet 112. Rather, Fig. 2 shows the valve 254 spaced from the outlet 112. Thus, the outlet itself is not operable between open and closed positions.
In claim 35, the recitation “a first insect pupae of the adjacent insect pupae is separated from other insect pupae of the adjacent insect pupae by remaining stagnant in the third flow of liquid while the other insect pupae are carried by the third flow towards the inlet of the primary channel” fails to accurately characterize the invention as it is described in the specification. The specification does not describe a first insect pupae being separated from other insect pupae by remaining stagnant “in the third flow of liquid”.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Bonner et al.”
US Patent No. 3,826,364
“Du et al.”
US Publication No. 2020/0359608 A1
“Göhde et al.”
US Patent No. 4,756,427
“Herranz et al.”
EP Publication No. 3 430 900 A1
“Kaduchak et al.”
US Publication No. 2018/0284009 A1
“Kawano et al.”
US Publication No. 2003/0209059 A1
“Leary et al.”
US Patent No. 7,452,725 B2
“Livne et al.”
US Publication No. 2022/0254182 A1
“Sheridan et al.”
US Publication No. 2020/0029541 A1
“Wada et al.”
US Publication No. 2003/0027225 A1
Claim Rejections - 35 USC § 103
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.
GROUND 8: Claims 1, 3, 4, 6-8, 12-16, 19, 28-31 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. in view of Du et al. and Kaduchak et al.
With respect to claims 1, 8, 15 and 28, Wada et al. discloses an isolation and sorting system comprising:
An isolation device comprising:
A reservoir 216 or 501 containing a mixture of liquid and objects to be isolated and sorted. See Figs. 2 and 5; ¶¶ 0027, 0033, 0047, 0055, 0062.
A primary channel 202, 206a, 206b to deliver a first flow of the mixture of liquid and objects, the first flow flowing from an inlet (adjacent the reservoir 216 or 501) toward an outlet 214 of the primary channel. See Figs. 2 and 5; ¶¶ 0032-0033, 0047, 0050, 0055, 0062. See also annotated Fig. 2 below, with the primary channel shown in bold.
A first secondary channel 208 that intersects the primary channel 202, 206a, 206b at a first intersection (see annotated Fig. 2 below) between the inlet (adjacent the reservoir 216 or 501) and the outlet 214 to deliver a second flow of liquid (from a buffer liquid reservoir 226 or 503) into the primary channel 202, 206a, 206b to generate a third flow of liquid (i.e., to adjust the first flow of liquid) and to separate adjacent objects being transported through the primary channel such that the objects flow in single file (which Wada et al. refers to as focusing the flowing objects). See Figs. 2 and 5; ¶¶ 0032-0033, 0041, 0047, 0062; claims 16-17.
An optical sensor 304 positioned proximate the outlet 214 of the isolation device to detect/sense/image the single-file objects from the third flow of liquid, wherein the optical sensor 304 is positioned between the first intersection (see annotated Fig. 2 below) and the outlet 214 such that the optical sensor 304 detects/senses/ images the single-file objects when the objects are in a detection window 240 or 511 and after they have passed the first secondary channel 208 and the first intersection. See Figs. 2-3; ¶¶ 0038, 0041, 0047-0048, 0055, 0062.
A storage unit system coupled to the outlet 214, the storage unit system including containers (holding tanks) defined in a robotically-operated multi-well storage unit 310 into which objects of a first type are directed based on the detecting/ sensing/imaging by the optical sensor 304. See Figs. 2-3; ¶¶ 0036, 0049-0050, 0055.
A flow controller/material transport system 302 that includes pressure or vacuum sources to direct the flows of fluid through isolation and sorting system. See Fig. 3; ¶¶ 0034-0035, 0040, 0046-0047, 0049.
A computer or microprocessor 306 that records the data received from the optical sensor 304 and uses that data to control the operation of the robotic storage unit system and the flow controller/material transport system 302. See Fig. 3; ¶¶ 0039, 0041, 0043-0044.
PNG
media_image2.png
710
624
media_image2.png
Greyscale
Wada et al. teaches that the channels have a dimension between about 0.1 μm and 500 μm (i.e., between about 0.0001 mm and 0.5 mm). See ¶ 0028. The upper range of about 0.5 mm is slightly smaller than applicant’s disclosed (but unclaimed) channel dimension of around 1 to 2 mm. Wada et al. also teaches that the channels are sized to prevent clogging of the flow by the objects in the fluid. See ¶ 0041.
With respect to claims 1, 8, 15 and 28, Wada et al. fails to teach that (i) the objects in the first flow of liquid are insect pupae, (ii) a dimension of the primary channel corresponds to a size of a representative pupa, (iii) the optical sensor functions to detect/sense/image individual pupa (as the single-file objects), and (iv) the storage unit system is configured to sort insect pupae and direct them into the container based on sensor signals from the optical sensor. In short, Wada et al. fails to teach adapting the isolation and sorting system for use in isolating and sorting insect pupae.
Du et al. teaches an insect larvae isolation device comprising:
A container (reservoir) 150 containing a mixture of liquid and insect larvae. See Figs. 1 and 3; ¶¶ 0028, 0037.
A first primary channel 161 to deliver a first flow of the mixture of liquid and larvae, the first flow flowing from an inlet (adjacent the container 150) toward an outlet (see Figs. 1 and 4) of the primary channel. See Figs. 1 and 3-4; ¶ 0040.
The channel 161 having a diameter of 1.0 mm to 6.0 mm and being sized so that the larvae pass through the channel 161 one at a time (i.e., single file). See ¶¶ 0005-0006, 0040, 0067; claim 4.
A larvae counting module 180 having an upper funnel portion 186 for receiving the first flow from the channel 161, and having a lower funnel portion 188 defining a second primary channel 189. See Figs. 1 and 4; ¶ 0042.
A secondary channel 112 that delivers a second flow of liquid into the upper funnel portion 186 to generate a third flow of liquid (i.e., to adjust the first flow of liquid) that flows into the second primary channel 189. See Figs. 1 and 4; ¶ 0043.
The second primary channel 189 also has a diameter of 1.0 mm to 6.0 mm so that the larvae pass through the channel 189 one at a time (i.e., single file). See ¶¶ 0007, 0013, 0028, 0042, 0069; claim 5.
An optical sensor 182 positioned proximate an outlet 190 of the counting module 180 that functions together with a light source 183 to detect/sense/image the single-file larvae from the third flow of liquid, wherein the optical sensor 182 is positioned between the secondary channel 112 and the outlet 190 such that the optical sensor 182 detects/senses/images the single-file larvae when they are in a detection window and after they have passed the secondary channel 112. See Figs. 1 and 4; ¶¶ 0043-0045, 0068-0069.
The optical sensor 182 can be (i) a CCD image sensor for capturing images of the single-file larvae, (ii) an optical counter for detecting passage of the single-file larvae, or (iii) a laser sensor for detecting passage of the single-file larvae. See ¶¶ 0044, 0069.
Valves 114, 162, 184 that control the flow through the secondary channel 112, the first primary channel 161 and the second primary channel 189. See Figs. 1 and 4; ¶¶ 0037, 0040, 0043, 0050, 0057.
A processor unit 194 that uses the data received from the optical sensor 182 to (i) count the larvae that passes through the counting module 180, and (ii) compare the counted larvae to a desired size and length to identify those matching the desired size and length. See Figs. 1 and 4; ¶¶ 0044, 0047-0048, 0069. The processor unit 194 also controls the valves 162, 184 to control the flow through the secondary channel 112, the first primary channel 161 and the second primary channel 189. See Figs. 1 and 4; ¶ 0048.
Kaduchak et al. teaches:
It is known to transport cells or particles past one or more laser-based optical sensors in order to determine the presence or absence of properties such as particle shape. See ¶ 0003.
It is necessary to avoid “coincidence”, which occurs when more than one cell or particle is in the laser beam (i.e., in the detection window) simultaneously. See ¶ 0004.
It is desirable to have an instrument that both (i) collect traditional flow cytometry data at high event rates and low coincidence, and (ii) create high resolution images of the particles. See ¶ 0040.
In a basic implementation: (i) individual particles pass between a first illumination source 102 and an optical detector 104 at a first position 180a while traveling at a first higher velocity v1 to collect traditional flow cytometry data with short interrogation times and low coincidence; and (ii) the individual particles pass between a second illumination source 106 and an optical image detector (i.e., camera) 110 at a second position 180b while traveling at a second lower velocity v2 (v2 < v1) to collect high resolution images of the particles. See Fig. 1; ¶¶ 0036-0038, 0047-0050.
The higher velocity zone can precede the slower velocity zone, or the slower velocity zone can precede the higher velocity zone. See ¶¶ 0065-0066.
In a more advanced implementation: (i) the particles enter a primary channel 320 as part of a first flow of liquid and move from the first position 380a to the second position 380b while traveling within the primary channel 320; and (ii) secondary channels 340, 342 intersect the primary channel 320 and introduce secondary flows of fluid to generate a third flow of liquid (i.e., modify the first flow) in order to increase the velocity of the particles. See Fig. 3A; ¶¶ 0054-0057. By adding or subtracting more flow, it is possible to modify a positional distribution of the particles (e.g., to increase the spacing between the particles). See ¶¶ 0063-0064.
The primary channel 320 has a dimension (e.g., diameter) between about 50 μm and 10,000 μm (i.e., between about 0.05 mm and 10 mm). See ¶¶ 0140. This wide range of possible dimensions enables objects having a wide range of sizes to be detected and imaged (including insect larvae and pupae).
In another more advanced implementation: (i) individual particles pass between a first illumination source 714 and an optical detector 770 at a first position 720a and between a second illumination source 712 and another optical detector 772 at a second position 720b to collect traditional flow cytometry data with short interrogation times and low coincidence; (ii) the individual particles pass between a third illumination source 710 and an optical image detector (i.e., camera) 774 at a third position 720c to collect high resolution images of the sorted particles; and (iii) the particles pass through a sorting module 790 that sorts the particles based on characteristics, such as size/shape, that are determined based on the captured images. See Fig. 7; ¶¶ 0079-0083.
In still another more advanced implementation: (i) individual particles pass between a first illumination source 834 and an optical detector 840 at a first position 820a and between a second illumination source 832 and another optical detector 842 at a second position 820b to collect traditional flow cytometry data with short interrogation times and low coincidence; (ii) the particles pass through a sorting module 830 (or multiple sorting modules) that separates particles with a desired characteristic (sorted particles) from particles lacking the desired characteristic (unsorted particles); and (iii) the individual sorted particles travel past a third illumination source 850 and an optical image detector (i.e., camera) 860 at a third position 820e to collect high resolution images of the sorted particles. See Fig. 8; ¶¶ 0084-0089.
From the teachings of Du et al. and Kaduchak et al., it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Wada et al. by adapting the isolation and sorting system for use in isolating and sorting insect larvae or pupae, with such adaptation including sizing the primary channel based on a size of a representative larva or pupa. The skilled artisan would have been led to modify Wada et al. in this manner so that the isolation and sorting system could be used to isolate and sort insect larvae or pupae for effective evaluation and control of harmful insects.
With respect to claim 3, Kaduchak et al. teaches that the channel dimensions can be adjusted to control the desired velocity of the particles. See Fig. 2; ¶¶ 0051-0053, 0063-0064. Further, Fig. 3A of Kaduchak et al. shows that the secondary channels 340, 342 have a smaller cross-sectional dimension than the primary channel 320. Such channels can have a wide range of dimensions (i.e., between about 0.05 mm and 10 mm). See ¶¶ 0140.
With respect to claims 4 and 13, the optical sensor 304 of Wada et al. constitutes an object detection system for detecting when a single object passes. Further, Kaduchak et al. teaches the use of an optical detector (object detection system) in combination with an optical image detector (i.e., camera). With respect to claim 13, Du et al. teaches the use of a laser sensor, i.e., a laser gate, for detecting passage of the single-file larvae.
With respect to claims 4, 6, 8, 15, 16 and 28, the optical sensor 304 of Wada et al. detects/senses/images the single-file objects shortly after they have passed the first secondary channel 208 and the first intersection. Thus, Wada et al. is considered to teach determining that an individual object has passed the first secondary channel and the first intersection. Further, the optical sensor 182 of Du et al. is used by the processor unit 194 to count the individual larva as they pass through the counting module. Thus, Du et al. determines (by counting) that an individual pupa has passed the counting module (and, thus, has passed the channel upstream of the counting module).
With respect to claims 7 and 12, Wada et al. teaches a second secondary channel 212 that intersects the primary channel 202, 206a, 206b between the first intersection and the outlet 214 at a second intersection to selectively deliver a fourth flow of liquid (from a buffer liquid reservoir 230) into the primary channel to augment the third flow of liquid and to further separate the adjacent insect pupae being transported through the primary channel, wherein the second flow of liquid and the fourth flow of liquid are independently and selectively deliverable into the primary channel. See Fig. 2; ¶¶ 0032, 0040, 0044, 0046-0047, 0049.
With respect to claims 8 and 28, the claimed methods are taught by the combination of Wada et al., Du et al. and Kaduchak et al. for the reasons explained above.
With respect to claims 14 and 19, Du et al. teaches detection of larvae. Kaduchak et al. teaches a wide range of possible dimensions that enables objects having a wide range of sizes to be detected and imaged (including insect larvae and pupae). Wada et al. teaches sorting between objects with desired characteristics and waste (or debris).
With respect to claim 15, Wada et al. teaches that the isolation device comprises a top portion (or cover), a bottom portion (or substrate), and an interior portion defining the channels, wherein the top potion is bonded to the bottom portion such that the channels are sealed (or fully-enclosed). See ¶¶ 0029, 0031. Wada et al. further teaches that the optical sensor 304 is positioned adjacent to a transparent or translucent portion of a channel segment. See ¶ 0038, 0041.
With respect to claim 28, Wada et al. teaches the primary channel outlet 214, which constitutes a first object outlet. Wada et al. also teaches an additional channel 210 having a second object outlet in communication with a waste reservoir 222 or 504. See Figs. 2 and 5; ¶¶ 0049-0050, 0062. Wada et al. controls the pressures in the various reservoirs in order to produce fluid flows that direct objects with a desired characteristic out of the first object outlet 214, and direct other objects out of the second object outlet (into the waste reservoir).
With respect to claims 29 and 30, the optical sensor 182 of Du et al. is used by the processor unit 194 to count the individual larva as they pass through the counting module.
With respect to claim 31, the secondary channel 208 of Wada et al. is broadly considered to introduce the second flow in a second direction opposite the first direction of the flow through the primary channel 202, 206a, 206b. Note that the flow through the primary channel changes direction since the primary channel is not linear in Wada et al.
With respect to claim 34, the primary channel 202, 206a, 206b of Wada et al. has one inlet (adjacent the reservoir 216) and one outlet 214.
GROUND 9: Claims 2, 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. in view of Du et al. and Kaduchak et al. (GROUND 8) and further in view of Du et al., Kaduchak et al. and Leary et al.
As explained above, Wada et al. teaches a flow controller/material transport system 302 that includes pressure or vacuum sources to direct the flows of fluid through isolation and sorting system. Wada et al. fails to teach a valve(s) that (i) is positioned between the isolation device and the storage container, (ii) selectively opens for directing a sorted object into the container, and (iii) selectively closes to close the outlet of the primary channel when the object passes the first intersection.
As also explained above, Du et al. teaches valves 114, 162, 184 that are controlled by the processor unit 194 to control the flow through the secondary channel 112, the first primary channel 161 and the second primary channel 189.
As further explained above, Kaduchak et al. teaches that the particles pass through a sorting module 790 or 830 (or multiple sorting modules) that sorts the particles based on characteristics, such as size/shape, that are determined based on the captured images, with the sorting module separating particles with a desired characteristic (sorted particles) from particles lacking the desired characteristic (unsorted particles). Kaduchak et al. further teaches:
The use of flow controllers comprising pumps, valves and the like. See ¶¶ 0059-0060.
The use of the sorting modules in the form of valve sorters. See ¶ 0082.
Leary et al. teaches a sorting system comprising flow controllers in the form of valves 26 located downstream of optical object imaging devices 24, with the valves 26 being selectively controlled by a control apparatus 33 to direct sorted objects to additional downstream flow streams based on characteristics of the objects determined from the outputs of the imaging devices 24. See Figs. 3-6A; col. 10, ll. 23-63; col. 12, ll. 1-37; col. 13, ll. 1-43; col. 13, l. 53 to col. 14, l. 27; col. 18, l. 38 to col. 20, l. 25.
From the teachings of Du et al., Kaduchak et al. and Leary et al., it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Wada et al. by using valves to control the fluid flows and direct the sorted objects to the desired locations, including by providing a valve(s) that (i) is positioned between the isolation device and the storage container, (ii) selectively opens for directing a sorted object into the container, and (iii) selectively closes to close the outlet of the primary channel when the object passes the first intersection. The skilled artisan would appreciate that the use of such control valves is conventional is fluid flow control systems and provides the advantage of economical and accurate control of the fluid flows.
GROUND 10: Claims 4, 8, 12-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. in view of Du et al. and Kaduchak et al. (GROUND 8) and further in view of Kaduchak et al. and Bonner et al.
In an alternative interpretation to that relied upon in GROUND 8, claims 4, 8, 13 and 15 are considered to necessarily require both a pupa detection system for detecting when a single pupa passes the first intersection, and a separate sensor for detecting/sensing the pupa.
As explained above, the optical sensor 304 of Wada et al. and the optical sensor 182 of Du et al. both function to capture images of (i.e., detect/sense) objects passing through a detection window. Further, Kaduchak et al. teaches the use of an optical detector (object detection system) in combination with an optical image detector (i.e., camera).
Bonner et al. teaches a sorting system in which particles (i) flow between a first laser 46 and a first photodetector 52 that detect all of the particles present in the flow (i.e., a particle detection system), and (ii) subsequently flow between a second laser 56 and a second photodetector 60 that detect selected particles with a desired characteristic, wherein a sorting system uses the outputs of both detectors to direct particles with the desired characteristic into one container 68C and particles lacking the desired characteristic into another container 68B. See Fig. 1A-1B; col. 2, ll. 50-54; col. 3, l. 63 to col. 4, l. 39; col. 4, l. 65 to col. 5, l. 66. Bonner et al. further teaches that the sensing of particles is not limited to any particular type of sensing (such as the laser-based optical detectors shown in Fig. 1A) since a number of different sensing means are known in the art. See col. 3, ll. 60-63.
From the teachings of Kaduchak et al. and Bonner et al., it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Wada et al. by using a pupa detection system for detecting when a single pupa passes the first intersection, and a separate sensor for detecting/sensing the pupa. As taught by Kaduchak et al., this two-detector approach allows for the collection of both (i) traditional flow cytometry data with short interrogation times and low coincidence, and (ii) high resolution images. As taught by Bonner et al., this two-detector approach provides more data for use by the sorting system in carrying out more complex sorting.
With respect to claim 13, Du et al. teaches the use of a laser sensor, i.e., a laser gate, for detecting passage of the single-file larvae. Bonner et al. teaches a similar laser gate 36, 52.
With respect to claims 12, 14, 16 and 19, see the explanation in GROUND 8.
Pertinent Prior Art
The following prior art is considered pertinent to applicant’s disclosure.
Göhde et al. teaches a sorting system including a primary passage 1 delivering a first flow of liquid including particles, a first sensing location 2 along the primary passage 1, a waste passage 5 that intersects the primary passage 1 at an intersection downstream of the first sensing location 2, and a second sensing location 24 downstream of the intersection.
Herranz et al. teaches an insect pupae sorting system including a camera 9 used to image individual pupa for determining their size and sex.
Kawano et al. teaches a sorting system including a first passage 11 delivering a first flow of liquid including particles, a second passage 12 that intersects the first passage 11 and delivers a second flow to modify the first flow, a guide 19 for guiding particles one-by-one in a row with spacing therebetween, an optical detector 3 used to sense individual particles, and an information detector 33 that uses data from the optical detector 3 to determine a dimension of the individual particles.
Livne et al. only constitutes prior art with respect to claims 28-32. Livne et al. discloses a pupa detection system including a passage 24 delivering a first flow of liquid including pupae, a detection region 28 in which the pupae are sensed, a processor 32 that analyzes data captured in the detection region 28, and a sorting region 30 controlled by the processor 32 based on the data captured in the detection region 28.
Sheridan et al. names the same applicant as the instant application. Sheridan et al. teaches an insect pupae sorting system including a first passage 120 delivering a first flow of liquid including pupae, a fluid source 112 supplying a second passage that intersects the first passage 120 and delivers a second flow to modify the first flow, a singulator 130 for guiding pupae single file, an optical sensor 132 used to sense individual pupa, and computing devices 150, 152 that use data from the optical sensor 132 to determine the size and sex of the individual pupa.
Specification
The specification is objected to under 37 CFR 1.75(d)(1) as failing to provide proper antecedent basis for the claimed subject matter. See MPEP 608.01(o). Specifically, the specification fails to describe:
A valve “positioned on a conduit” (claim 2).
A fluid inlet to add fluid at the outlet “when more than one insect pupa passes the first secondary channel” (claim 20).
A step of “determining a number of pupae sorted into the first pupae outlet or the second pupae outlet” (claim 29).
A sensor “positioned adjacent the first pupae outlet or the second pupae outlet” (claim 30).
The step of determining the number of pupae “comprises receiving…additional output from the…sensor” (claim 30).
Providing the second flow of fluid “comprises opening the first pupae outlet or the second pupae outlet based on the…output from the sensor” (claim 32).
The specification is objected to because:
At col. 6, l. 25, “channel 120a” should read “channel [120a] 122a”.
At col. 6, l. 29, “channel 120a” should read “channel [120a] 122a”.
At col. 6, l. 63, “from the secondary channel” should read “from one of the secondary [channel] channels”.
At col. 6, l. 65, “but the second” should read “but not the second”.
At col. 12, l. 41, “constriction” should read “constriction 654”.
At col. 12, l. 50, “passage 626” should read “passage [626] 646”.
At col. 13, ll. 34-35, “channel prevents” should read “[channel prevents] channels prevent”.
At col. 13, l. 57, “inlet 624” is inaccurate because element 624 is an outlet (elements 622, 626, 630 and 634 are inlets).
At col. 14, l. 17, “inlet 624 or outlet 626” is inaccurate because element 624 is an outlet and element 626 is an inlet (elements 622, 626, 630 and 634 are inlets, and elements 624, 628, 638 are outlets).
At col. 14, l. 23, “FIGS. 6-8” should read “FIGS. [6-8] 7-8”.
At col. 14, l. 24, “channel 652” should read “channel [652] 752”.
At col. 14, l. 25, “channel 652” should read “channel [652] 752”.
At col. 15, l. 4, “sensor 258” appears to be inaccurate since the paragraph appears to describe the function of the pupae detection system 288 (not the optical sensor in the form of a camera 258).
At col. 15, l. 8, “sensor 258” appears to be inaccurate since the paragraph appears to describe the function of the pupae detection system 288 (not the optical sensor in the form of a camera 258).
At col. 16, l. 42, “sensor 258” appears to be inaccurate since the context appears to describe the function of the pupae detection system 288 (not the optical sensor in the form of a camera 258).
At col. 17, l. 41, “inlet 624” is inaccurate because element 624 is an outlet (elements 622, 626, 630 and 634 are inlets).
At col. 17, l. 42, “outlet 626” is inaccurate because element 626 is an inlet (elements 624, 628, 638 are outlets).
At col. 18, l. 1, “inlets 624” is inaccurate because element 624 is an outlet (elements 622, 626, 630 and 634 are inlets).
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a) for failing to show every feature of the invention specified in the claims. The following features must be shown or canceled from the claims. No new matter should be entered.
A second secondary channel that intersects the primary channel between the first intersection and the outlet (claim 7).
A laser gate across the primary channel adjacent to the first secondary channel (claim 13).
The drawings are objected to because:
The following reference characters appear in the specification but not in the drawings. Reference characters mentioned in the description must appear in the drawings. See 37 CFR 1.84(p)(5).
Reference number 122 (col. 5, l. 15; col. 6, l. 7; col. 12, l. 31; col. 14, l. 49; col. 14, l. 53).
Reference number 124 (col. 6, l. 8).
Reference characters 120a-g (col. 6, l. 35; col. 6, l. 51; col. 7, l. 55; col. 9, l. 8; col. 9, l. 15; col. 9, l. 16; col. 9, l. 18; col. 9, l. 20; col. 9, l. 22; col. 9, l. 25; col. 16, l. 53).
Reference number 283 (col. 10, l. 49; col. 10, l. 50).
Fig. 2 includes reference number 260 which does not appear in the specification. Reference characters not mentioned in the description shall not appear in the drawings. See37 CFR 1.84(p)(5).
Fig. 8 does not comply with 37 CFR 1.84(h)(3). Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty.
Figs. 7-8 use reference number 652 to label the first restriction, but Fig. 9 uses reference number 752 to label the first restriction. The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character. See 37 CFR 1.84(p)(4).
Figs. 7-8 use reference number 654 to label the second restriction, but Fig. 9 uses reference number 754 to label the second restriction. The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character. See 37 CFR 1.84(p)(4).
The objections to the drawings will not be held in abeyance.
Response Period
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g).
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Disclosure Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the patent for which reissue is sought is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP 1404, 1442.01 and 1442.04.
Filing and Contact Information
All correspondence relating to this reissue application should be directed:
By Patent Center8: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail9 to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Reexamination Specialist, Art Unit 3993
Conferees:
/WILLIAM E DONDERO/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
APPENDIX
Discussion of Cases Dealing with Computer-Implemented
Functional Claim Limitations and Compliance with 35 U.S.C. 112
Williamson v. Citrix Online, LLC
In Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), the Federal Circuit clarified the standard for determining whether 35 U.S.C. 112(f)10 applies to a claim limitation that (i) defines the invention in terms of a function(s) to be performed, but (ii) does not include the word “means”. Specifically, the en banc section of Williamson:
Expressly overruled previous Federal Circuit decisions, which found that: (a) the presumption flowing from the absence of the term “means” is a strong one that is not readily overcome; and (b) 35 U.S.C. 112(f) does not apply in the absence of the term “means” unless the limitation essentially is devoid of anything that can be construed as structure.
Explained the Federal Circuit’s concern that such an unjustified heightened burden resulted in a proliferation of functional claiming untethered to 35 U.S.C. 112(f).
Emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by those of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
Clarified that, when a claim term lacks the word “means”, the presumption can be overcome and 35 U.S.C. 112(f) will apply if it is demonstrated that the claim term:
Fails to recite sufficiently definite structure, or else
Recites a function without reciting sufficient structure for performing that function.
Because “or else” is used to introduce the second of two alternatives, the standard clarified by the en banc section of Williamson constitutes two distinct (i.e., alternative) tests for determining whether the presumption flowing from the absence of the term “means” is overcome. These will be referred to herein as “Williamson Test 1” (i.e., the claim term fails to recite sufficiently definite structure), and “Williamson Test 2” (i.e., the claim term recites a function without reciting sufficient structure for performing that function.
[TextBox: NOTE: In this case, the examiner relies on Williamson Test 2 as the basis for determining that 35 U.S.C. 112(f) is invoked by claim terms that (i) define the invention in terms of a function(s) to be performed, but (ii) do not include the word “means”. Accordingly, any argument that challenges the invocation of 35 U.S.C. 112(f) on the basis of Williamson Test 1 cannot be considered dispositive.]
In Williamson, the Federal Circuit also addressed (a) the proper manner of construing a claim limitation that invokes 35 U.S.C. 112(f), (b) the proper standard for determining whether “corresponding structure” is disclosed pursuant to 35 U.S.C. 112(f) in cases involving a computer-implemented invention, and (c) the question of whether such a claim limitation is definite under 35 U.S.C. 112(b)11. Specifically:
Construing a means-plus-function claim term is a two-step process:
First, one must identify the claimed function.
Then, one must determine what structure, if any, disclosed in the specification corresponds to the claimed function.
Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.
Even if the specification discloses corresponding structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function.
Where there are multiple claimed functions, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.
In the case of computer implemented inventions that rely upon special software (special programming) to execute the claimed functions, the structure disclosed in the specification must be more than a general purpose computer or microprocessor. Rather, the “corresponding structure” is an algorithm(s) for performing the claimed functions. The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.
The testimony of one of ordinary skill in the art (or other extrinsic evidence) cannot supplant the total absence of structure from the specification.
If the patentee fails to disclose adequate corresponding structure, the claim is indefinite. In other words, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function(s) in the claim, a means-plus-function clause is indefinite.
In Williamson, the Federal Circuit specifically addressed the term “module for…” and held that:
The “module for…” invoked 35 U.S.C. 112(f) because it did not recite sufficiently definite structure. Rather, the “module for…” merely replaced the term “means” with the well-known nonce word “module” such that it set forth the same black box recitation of structure for providing the same specified function as if the term “means” had been used.
The patent’s written description made clear that the “module for…” cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer, i.e., a general purpose computer programmed to perform particular functions pursuant to instructions from program software.
The patent’s drawings and written description did not disclose an algorithm for performing each of the claimed functions of the claimed “module”.
The “module for…” was indefinite under 35 U.S.C. 112(b) due to the failure to disclose any structure corresponding to at least one of the functions performed by the claimed “module”.
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology
In Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the Federal Circuit addressed (a) the proper manner of construing a claim limitation that invokes 35 U.S.C. 112(f), (b) the proper standard for determining whether “corresponding structure” is disclosed pursuant to 35 U.S.C. 112(f) in cases involving a computer-implemented invention, and (c) the question of whether such a claim limitation is definite under 35 U.S.C. 112(b). The explanation and findings in Aristocrat preceded and are consistent with similar findings in Williamson (discussed above).
In Aristocrat, the Federal Circuit explained:
The purpose of means-plus-function claiming, as provided in and restricted by 35 U.S.C. 112(f), is to avoid pure functional claiming.
If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function of a means-plus-function limitation, then the patentee has not paid the price required by 35 U.S.C. 112(f). Rather, the patentee is improperly attempting to claim in functional terms unbounded by any reference to structure in the specification.
In cases involving a computer implemented invention, where a limitation invokes 35 U.S.C. 112(f), the disclosure of only a general purpose computer as the structure that performs a particular function amounts to pure functional claiming. Because general purpose computers can be programmed in very different ways to perform a given task, simply disclosing a general purpose computer does not limit the scope of the claim to the “corresponding structure” required by 35 U.S.C. 112(f).
The disclosure of a standard (i.e., general purpose) microprocessor with “appropriate programming”, without any guidance to determine the meaning thereof, is not sufficient because the specification does not set forth any specific algorithm or any step-by-step process for performing the recited function(s).
Computer-implemented means-plus-function limitations lack sufficient disclosure of the corresponding structure when the specification fails to disclose the specific algorithm(s) required to transform a general purpose computer into a special purpose computer equipped to perform the claimed function(s). Thus, the “corresponding structure” is an algorithm(s) for performing the claimed functions.
There is a distinction between language that simply describes the function to be performed and the required disclosure of an algorithm(s) by which it is performed. In other words, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of a specific algorithm(s) that describes how the claimed function(s) is performed.
The specification is not required to include a listing of source code or a highly detailed description of the algorithm. It is required, however, to provide a sufficiently detailed description of the algorithm required to perform the claimed function(s).
The disclosure of “corresponding structure” required by 35 U.S.C. 112(f) should not be conflated with the less strict enablement requirement of 35 U.S.C. 112(a)12 because it serves the very different purpose of limiting the scope of the claim to the particular structure disclosed.
It is not sufficient for the patentee to simply state or later argue that persons of ordinary skill in the art would know what structures to use (i.e., what specific algorithm to employ) to accomplish the claimed function(s), i.e., to argue that the enablement requirement is met. The inquiry is whether one skilled in the art would understand the patent specification itself to disclose, in sufficient detail, the “corresponding structure” (i.e., the necessary software-based algorithm) for performing the claimed function(s).
If the patentee fails to disclose adequate corresponding structure, the claim lacks specificity and is indefinite.
Egenara, Inc. v. Cisco Systems, Inc.
In Egenara, Inc. v. Cisco Systems, Inc., 972 F.3d 1367 (Fed. Cir. 2020), the Federal Circuit:
Explained that patentees are not permitted to freely engage in functional claiming while circumventing 35 U.S.C. 112(f) simply by avoiding the use of the word “means”.
Relied upon the two-test standard clarified in Williamson in conjunction with other decisions finding that 35 U.S.C. 112(f) will apply if it is demonstrated that the claim term amounts to a generic term, a black box recitation of structure and/or a coined nonce word that fails to recite sufficiently definite structure.
Stressed the importance of giving due consideration to Williamson while cautioning against relying on pre-Williamson precedent.
Emphasized that the essential inquiry is not whether a claim term recites any structure but whether it recites sufficient structure for performing all of the claimed functions, i.e., a claim limitation is subject to 35 U.S.C. 112(f) if it recites functions without reciting sufficient structure for performing each of those functions.
Noted that the patent’s specification is consistent with an understanding of the claimed “logic to…” as an abstraction for the set of steps designed to accomplish the claimed functions because the specification discloses that the logic has to be implemented via software.
Reiterated that the question is not whether “logic” is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions. Further, mere inclusion of a limitation within a structure does not automatically render the limitation itself sufficiently structural. While the claimed “logic” may connote some structure in the general sense of software, firmware or circuitry, it was not shown to amount to sufficient structure for performing each of the claimed functions.
Concluded that the claimed “logic to…” was no more than a black box recitation of structure for performing the claimed functions and, thus, was merely a generic substitute for “means for…”
Thus, Egenara shows that it is proper to rely on Williamson Test 2 (i.e., the claim term recites one or more functions without reciting sufficient structure for performing those functions) as the basis for determining that 35 U.S.C. 112(f) is invoked.
Altiris Inc. v. Symantec Corp.
In Altiris Inc. v. Symantec Corp., 318 F3d 1363 (Fed. Cir. 2003), the Federal Circuit construed a “means of booting” limitation that was defined in the claims as “including a first set of commands…for booting…and a second set of commands…for booting…” The patent owner argued that the recitation of the first and second set of commands in the claim itself was sufficient structure to perform the entire claimed function since the “commands” are structure in the form of software that will carry out the booting function(s). The Federal Circuit disagreed because, while the recited “commands” constitute structure, they do not constitute sufficient structure to perform the entirety of the claimed function(s). The commands are described solely in functional terms, and one must refer to the specification to determine the structure of those “means” or “commands”. Further, the software-based “commands” are so broad as to give little indication of the particular structure used such that one must still look to the specification for an adequate understanding of the structure of that software. Accordingly, the Federal Circuit ultimately held that the “means of booting” invoked 35 U.S.C. 112(f) because the “commands” were not sufficient structure to perform the entire claimed function.
Thus, like Egenara, Altiris shows that it is not enough to merely claim some structure. The critical question is whether the claim itself recites sufficient structure for performing the entire claimed function—even if there is some structure in the claimed phrase.
Informative PTAB Decisions
The Patent Trial and Appeal Board (PTAB) has issued informative decisions that support the Examiner’s position that Williamson Test 2 may be the basis for invoking 35 U.S.C. 112(f). Although these decisions do not expressly rely on “Williamson Test 2”, they use essentially the same rationale for invoking 35 U.S.C. 112(f). The first of these decisions also addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
Ex Parte Smith
In Ex Parte Smith (Appeal 2012-007631 decided 14 March 2013),13 the PTAB construed a “processor programmed to…” limitation set forth using functional language. The PTAB found a skilled artisan would not recognize “processor” as the name of sufficiently definite structure for performing each of the claimed functions because (a) the claimed functions cannot be executed by a commercially available off-the-shelf (i.e., general purpose) processor without additional programming, (b) the claim did not recite any structure connected to the “processor” other than “memory”, which is not sufficient structure for performing the recited functions, and (c) the term “processor” is different from the terms “circuit” and “circuitry” because the recited processor and associated claim language does not convey to a skilled artisan anything about the internal components, structure, or specific operation of the processor. The PTAB concluded that the claimed “processor” is a non-structural term that would not be understood by one of ordinary skill in the art as having sufficiently definite structure to perform all the recited functions. Rather, “processor programmed to…” was used as merely a substitute for the term “means for…” and thus invoked 35 U.S.C. 112(f).
Since 35 U.S.C. 112(f) was invoked, the PTAB looked to the specification for the disclosure of sufficient “corresponding structure” for performing the claimed functions. Following Aristocrat, the PTAB evaluated whether the specification disclosed an algorithm that transforms a general purpose computer into a special purpose computer that performs the claimed functions. The PTAB found that the specification contained a flow chart and accompanying description that simply restated the claimed functions without conveying to one of ordinary skill in the art how the processor ensured that the claimed functions are performed. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that it failed to describe sufficient “corresponding structure” pursuant to 35 U.S.C. 112(f) and, therefore, “processor programmed to…” was indefinite under 35 U.S.C. 112(b).
In Ex Parte Smith, the PTAB also construed a claim directed to a computer-implemented method reciting steps (i.e., functions) that paralleled the functions used to define the “processor programmed to…” limitation. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that the method claim failed to satisfy the written description requirement of 35 U.S.C. 112(a). The PTAB noted that a description that merely renders the invention obvious does not satisfy the written description requirement. This finding correlates with Part II of the USPTO guidance (hereinafter, the “2019 § 112 Guidance”) entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112”, 84 Fed. Reg. 57 (Jan. 7, 2019) 14, which (i.e., Part II) addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
Ex Parte Erol
In Ex parte Erol (Appeal 2011-001143 decided 13 March 2013),15 the PTAB construed a “processor adapted to…” limitation set forth using functional language. The PTAB found a skilled artisan would not recognize “processor” as the name of sufficiently definite structure for performing each of the claimed functions because (a) the claimed functions cannot be executed by a commercially available off-the-shelf (i.e., general purpose) processor without additional programming, (b) the term “processor” is different from the term “circuit” because the recited processor and associated claim language does not convey how each of the recited functions is achieved, (c) the claim did not recite any structure connected to the “processor” other than a “reader”, which is not sufficient structure for performing the recited functions, and (d) the claims did not recite and the written description did not delineate the internal components of the “processor” or in another way convey structure to skilled artisans to support a conclusion that the claimed “processor adapted to…” is not a purely functional limitation. The PTAB concluded that the claimed “processor” is a non-structural term that would not be understood by one of ordinary skill in the art as having sufficiently definite structure to perform all the recited functions. Rather, “processor adapted to…” was used as merely a substitute for the term “means for…” and thus invoked 35 U.S.C. 112(f).
Since 35 U.S.C. 112(f) was invoked, the PTAB looked to the specification for the disclosure of sufficient “corresponding structure” for performing the claimed functions. Following Aristocrat, the PTAB evaluated whether the specification disclosed an algorithm that transforms a general purpose computer into a special purpose computer that performs the claimed functions. The PTAB found that the specification failed to set forth a sequence of steps of a particular algorithm, or instructions for using a particular piece of hardware, employing a specific source code, or following a particular program. Rather, the description of only a myriad of examples was, in effect, an impermissible attempt to claim every possible way of accomplishing a claimed function. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that it failed to describe sufficient “corresponding structure” pursuant to 35 U.S.C. 112(f) and, therefore, “processor adapted to…” was indefinite under 35 U.S.C. 112(b).
Other PTAB Decisions
The Patent Trial and Appeal Board (PTAB) has issued other opinions that, while not designated as precedential or informative, are nevertheless instructive.
Ex parte Jiajun Zhu et al. ‘727 (Appeal 2020-005727)
In Ex parte Jiajun Zhu et al. ‘727 (Appeal 2020-005727 decided 04 November 2020),16 the PTAB considered claims directed to computer-implemented methods reciting steps (i.e., functions) performed by a computing device. Specifically, the PTAB addressed whether such claims comply with the written description requirement of 35 U.S.C. 112(a). In doing so, the PTAB provided a detailed discussion of the 2019 § 112 Guidance. Specifically, the PTAB explained that:
The 2019 § 112 Guidance addresses examination of computer-implemented functional claims that recite only the idea of a solution or outcome to a problem but fail to recite details of how the solution or outcome is accomplished.17
When examining computer-implemented functional claims (including computer-implemented method claims), the examiner should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
It is not enough that a skilled artisan could theoretically write a computer program(s) to achieve the claimed functions because a specification must explain how the inventor intends to achieve the claimed functions to satisfy the written description requirement.
An algorithm can be expressed in any understandable terms such as in prose or as a flow chart. Recital of actual computer code is not necessary. However, sufficient information must be provided to show that the inventor had possession of the claimed invention. Such “sufficient information” constitutes details about how a disclosed general purpose computer or processor is programmed to achieve the desired outcomes defined by the claimed functions.
In Ex parte Jiajun Zhu et al. ‘727, the PTAB found that the specification described an outline of the desired results that the computer is expected to achieve, but missing from the specification was the algorithm or logic flow or instructions which would explain how a general purpose computer is programmed to perform the claimed functions. Absent the disclosure of the necessary algorithm(s), the specification failed to convey possession of the computer-implemented invention. Accordingly, the PTAB concluded that the claims failed to comply with the written description requirement of 35 U.S.C. 112(a). Thus, even if a claim is not construed as reciting a means-plus-function limitation, computer-implemented functional limitations require the disclosure of the necessary algorithm (i.e., how the claimed functions are achieved) in order to satisfy 35 U.S.C. 112(a).
Ex parte Jiajun Zhu et al. ‘723 (Appeal 2020-005723)
In Ex parte Jiajun Zhu et al. ‘723 (Appeal 2020-005723 decided 04 November 2020),18 the PTAB considered similar claims and made similar findings to those addressed in Ex parte Jiajun Zhu et al. ‘727 (discussed above).
Ex parte Marc E. Davis et al. (Appeal 2020-006448)
In Ex parte Marc E. Davis et al. (Appeal 2020-006448 decided 02 February 2022),19 the PTAB considered a claim directed to a system defined using plural claim terms “circuitry for…”, which defined the invention in terms of functions to be performed. Specifically, the PTAB addressed whether such claims limitations invoke 35 U.S.C. 112(f) and whether they comply with the definiteness requirement of 35 U.S.C. 112(b).
The PTAB found that:
While the term “circuit” connotes structure, the claim in question contained no contextual language describing the objective or the desired output of the circuit that would provide the skilled artisan with an understanding of the structural arrangements of the circuit elements necessary to carry out the claimed functions.
The specification refuted the idea that “circuit” or “circuitry” conveyed a specific or exact structural arrangement of circuit elements. Rather, the specification’s discussion of computer devices was inconsistent with the ordinary meaning of “circuitry”.
The claim terms “circuitry for…” invoked 35 U.S.C. 112(f) because they failed to recite sufficient structure for performing the claimed functions.
The PTAB affirmed the rejection of the claim for failure to comply with the definiteness requirement of 35 U.S.C. 112(b). That is, the claim was indefinite because the specification failed to disclose adequate corresponding structure for performing all of the claimed functions.
1 All of claims 1-10, 12-21 and 28-35 are either amended themselves or dependent upon an amended patent claim.
2 Col. 15, ll. 3-12 mis-identifies pupae detection system/sensor 288 as sensor 258.
3 The examiner notes that the original disclosure also fails to provide support for the optical sensor 258 being positioned between the first intersection and the outlet. Thus, new matter was improperly added to patent claim 1 during the earlier-concluded examination.
4 The examiner notes that the original disclosure also fails to provide support for the optical sensor 258 being positioned between the first intersection and the outlet. Thus, new matter was improperly added to patent claim 8 during the earlier-concluded examination.
5 The examiner notes that the original disclosure also fails to provide support for the optical sensor 258 being positioned between the first intersection and the outlet. Thus, new matter was improperly added to patent claim 15 during the earlier-concluded examination.
6 The examiner notes that the original disclosure also fails to provide support for the optical sensor 606 being positioned between the second channel 648 and first and second pupae outlets (e.g., outlets 628, 638). Thus, new matter was improperly added to patent claim 28 during the earlier-concluded examination.
7 When a claim requires the performance of specific functions, as opposed to general computing functions, the corresponding structure is required to be more than a general purpose computer/memory/ processor storing and executing general purpose computer instructions since the claimed functions are not coextensive with a general purpose computer/memory/processor storing and executing general purpose computer instructions.
8 Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
9 Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. See MPEP 1410.
10 Pre-AIA 35 U.S.C. 112, ¶ 6 was recodified by the AIA as 35 U.S.C. 112(f) without any modification to the actual wording thereof. Thus, “35 U.S.C. 112, ¶ 6” is synonymous with “35 U.S.C. 112(f)”. The AIA numbering is used herein.
11 Pre-AIA 35 U.S.C. 112, ¶ 2 was recodified by the AIA as 35 U.S.C. 112(b) with the change from the term “applicant” to the phrase “inventor or a joint inventor”. Thus, “35 U.S.C. 112, ¶ 2” is synonymous with “35 U.S.C. 112(b)”. The AIA numbering is used herein.
12 Pre-AIA 35 U.S.C. 112, ¶ 1 was recodified by the AIA as 35 U.S.C. 112(a) with only the change from the term “inventor” to the phrase “inventor or joint inventor”. Thus, “35 U.S.C. 112, ¶ 1” is synonymous with “35 U.S.C. 112(a)”. The AIA numbering is used herein.
13 Available at: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/ ex_parte_smith_fd2012007631.pdf
14 Available at: https://www.federalregister.gov/documents/2019/01/07/2018-28283/examining-computer-implemented-functional-claim-limitations-for-compliance-with-35-usc-112
15 Available at: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/ ex_parte_erol_fd2011001143.pdf
16 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions
17 See Part II of the 2019 § 112 Guidance, which addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
18 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions
19 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions
Prosecution Insights