DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 is indefinite because there is insufficient antecedent basis for “the target frame and the reference frame”. It is unclear what is being referred to.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 - 15 and 21 - 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a mental-process type abstract idea) without significantly more.
Independent claim 1:
With regard to Step 1, the claim is directed to one of the four statutory categories of invention, i.e., an intravascular imaging system.
With regard to Step 2A: Prong 1, the claim recites “for at least one segment, based on the first plurality of intravascular images, automatically determine a target location within the compression and a reference location comprising a healthy portion of the vasculature, wherein at least one of the target location or the reference location are determined based on an aspect ratio of the vasculature”. As drafted, the limitation amounts to nothing more than a step that can practically be performed in the human mind and/or with the aid of pen/paper. For example, a human can ‘automatically determine a target location and a reference location within the compression based on an aspect ratio of the vasculature’ by thinking about the ultrasound images, and/or values derived by processing the ultrasound images in some way, and arriving at a conclusion regarding the reference and target locations based on the relative diameters thereof, and/or with the aid of pen and paper. Therefore, the limitation recites a mental-process type abstract idea. See MPEP 2106.04(a)(2).
With regard to Step 2A: Prong 2, the claim recites additional elements as follows:
“an intravascular imaging catheter configured for intravascular ultrasound (IVUS) or optical coherence tomography (OCT)”. However, the catheter is recited at a high level of generality, and thus merely amounts to generic hardware for extra-solution activity (i.e., data gathering).
a processing circuit that performs the mental step, which is merely an instruction to implement the judicial exception on a computer.
“the vasculature comprising a plurality of segments and a compression within at least one segment”, which merely limits the judicial exception to a particular environment or field of use.
processing circuit being configured to control the catheter to obtain the imaging data, which is merely a routine step of data-gathering that comprises mere extra-solution activity.
“output, to a display in communication with the processor circuit, a screen display comprising the target location, the reference location, and at least one quantity associated with the target location and reference location”, which is merely extra-solution activity (i.e., data output).
Therefore, when considered separately and in combination, the recited additional elements do not, either individually or as a whole, integrate the judicial exception into a practical application.
With regard to Step 2B, as explained above, the additional limitations are directed towards extra-solution activity and/or generic hardware therefore; an instruction to implement the judicial exception on a computer; and limiting the judicial exception to a particular technological environment. Therefore, when considered separately and in combination, the additional limitations do not result in the claim, as a whole, amounting to significantly more than the judicial exception.
Independent claim 15:
With regard to Step 1, the claim is directed to one of the four statutory categories of invention, i.e., an intravascular imaging method.
With regard to Step 2A: Prong 1, the claim recites “for at least one segment, based on the first plurality of intravascular images, automatically determining a target location within the compression and a reference location comprising a healthy portion of the vasculature, wherein at least one of the target location or the reference location are determined based on an aspect ratio of the vasculature”. As drafted, the limitation amounts to nothing more than a step that can practically be performed in the human mind and/or with the aid of pen/paper. For example, a human can ‘automatically determine a target location and a reference location within the compression based on an aspect ratio of the vasculature’ by thinking about the ultrasound images, and/or values derived by processing the ultrasound images in some way, and arriving at a conclusion regarding the reference and target locations based on the relative diameters thereof, and/or with the aid of pen and paper. Therefore, the limitation recites a mental-process type abstract idea. See MPEP 2106.04(a)(2).
With regard to Step 2A: Prong 2, the claim recites additional elements as follows:
using a processing circuit in communication with the catheter to perform the mental step, which is merely an instruction to implement the judicial exception on a computer.
using the processing circuit to obtain the imaging data, which merely a routine step of data-gathering that comprises mere extra-solution activity.
“the vasculature comprising a plurality of segments and a compression within at least one segment”, which merely limits the judicial exception to a particular environment or field of use.
“outputting, to a display in communication with the processor circuit, a screen display comprising the target location, the reference location, and at least one quantity associated with the target location and reference location”, which is merely extra-solution activity (i.e., data output).
Therefore, when considered separately and in combination, the recited additional elements do not, either individually or as a whole, integrate the judicial exception into a practical application.
With regard to Step 2B, as explained above, the additional limitations are directed towards an instruction to implement the judicial exception on a computer; extra-solution activity; and limiting the judicial exception to a particular technological environment. Therefore, when considered separately and in combination, the additional limitations do not result in the claim, as a whole, amounting to significantly more than the judicial exception.
Dependent claims:
claim 2 recites additional limitations directed towards obtaining further imaging data, which is extra-solution activity. The claim also recites that images depict a stent that is aligned longitudinally with the target location, which merely limits the judicial exception to a particular technological environment. The claim also recites determining proximal and distal ends of the stent, and a location within the stent where the stent is most constricted, which read on mental steps. The claims further recite a data output step, which post-solution activity.
claim 3 recites that the detection is via machine learning, which is merely an instruction to implement the judicial exception on a computer.
claim 4 recites additional limitations directed towards the vasculature comprising peripheral venous vasculature and specifying particular vascular segments, which merely limit the judicial exception to a particular technological environment.
claims 5 - 6 recite additional limitations directed towards multiple segments, which limits the judicial exception to a particular technological environment, and display features that are mere post-solution activity.
claims 7, 10, 11, 12, and 13 recite additional limitations directed towards the specific nature of the determination, which merely further limits the judicial exception itself, and do not preclude the step from being performed in the human mind and/or with the aid of pen/paper. Claim 13 recites that the vasculature comprises a vein, which merely limits the judicial exception to a particular technological environment.
claim 14 characterizes the display, which merely modifies post-solution activity.
Therefore, when considered separately and in combination, the additional limitations of the dependent claims do not integrate the judicial exception into a practical application, or result in the claims amounting to significantly more than the judicial exception.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 - 15 and 21 - 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 4 and 7 - 21 of copending Application No. 16/663,020 (reference application) in view of Chao et al. (US 2020/0129158, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to systems and methods for intravascular imaging involving receiving a intravascular images obtained during movement of an intravascular imaging catheter within vasculature of a patient (reference claim 1), the vasculature comprising a plurality of segments (implicit; also see reference claim 13) and a compression within at least one segment (reference claim 16);
for at least one segment, based on the intravascular images, automatically determining a target location within the compression and a reference location comprising a healthy portion of the lumen (reference claim 16); and
outputting, to a display in communication with the processor circuit, a screen display comprising the target location, the reference location, and at least one quantity associated with the target location and reference location (reference claim 16).
In particular:
Claims 1, 5 - 6, 12, 14, and 15 are suggested by reference claim 16. However, reference claim 16 does not recite that the target location or the reference location is determined based on an aspect ratio of the vasculature.
Chao discloses intravascular imaging. Chao teaches the target location or the reference location is determined based on an aspect ratio of the vasculature (“relative diameter or cross-sectional area of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5; “… selected automatically …”, [0065]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to have the target location or the reference location be determined based on an aspect ratio of the vasculature, as taught by Chao, in order to facilitate visualization of the relative vessel dimensions, as suggested by Chao ([0065]).
Regarding claim 2, Chao teaches obtaining second images as recited, and outputting, to the screen display, the proximal end of the stent, the distal end of the stent, the location where the stent is most constricted, and at least one quantity associated with the constriction ([0070] and fig. 7).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to include obtaining second images as recited, and outputting, to the screen display, the proximal end of the stent, the distal end of the stent, the location where the stent is most constricted, and at least one quantity associated with the constriction, as taught by Chao, in order to help a clinician understand how successful a stent treatment has been.
Regarding claim 3, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to employ machine learning as recited, in order to facilitate data analysis, as is conventional in the art.
Regarding claim 4, the patient’s vasculature necessarily comprises the recited features.
Regarding claim 7, Chao teaches at least one of the target location or the reference location is determined at least in part by variation of aspect ratio along a segment (relative diameter or cross-sectional area, [0064]; “… selected automatically …”, [0065]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to have at least one of the target location or the reference location is determined at least in part by variation of aspect ratio along a segment, as taught by Chao, in order to further facilitate visualization of the relative vessel dimensions, as suggested by Chao ([0065]).
Regarding claims 10 and 11, Chao teaches the target and reference locations are determined based at least in part on the catheter and a length of the movement of the catheter within the body lumen, as the target and reference locations are determined during a pullback procedure ([0063]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to have the target and reference locations be determined based at least in part on the catheter and a length of the movement of the catheter within the body lumen, as taught by Chao, in order to facilitate data analysis using the pullback data, as is conventional in the art.
Regarding claim 12, Chao teaches the target location or the reference location is determined based at least in part on the segment in which the compression is located, as the target location is at the compression ([0063] - [0064] and fig. 5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to have the target or reference locations be determined based at least in part on the segment in which the compression is located, as taught by Chao, in order to facilitate data analysis using the data, as is conventional in the art.
Regarding claim 13, Chao teaches the vasculature comprises a vein (implicit), wherein the target location or the reference location is determined based at least in part on an artery (artery, [0052]; the walls of the vein are compressed as a result of the contact with the artery, [0060]) adjacent the vein (implicit).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to have the target or reference locations be determined based at least in part on an artery adjacent the vein, as taught by Chao, in order to facilitate analysis of arterial health, as is conventional in the art.
Regarding claims 21 - 22, Chao teaches determining a plurality of diameters ([0064]) of the vasculature in the first plurality of intravascular images; and calculating the aspect ratio based on the plurality of diameters (“relative diameter … of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5), wherein the plurality of diameters comprises a maximum diameter and a minimum diameter (“widest part of the vessel segment 520… narrowest part of the vessel segment 520”, [0064]) for each intravascular image in the first plurality of intravascular images, wherein the aspect ratio for each intravascular image comprises the maximum diameter divided by the minimum diameter (“relative diameter … of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of reference claim 16 to include the recited features, as taught by Chao, in order to further facilitate visualization of the relative vessel dimensions, as suggested by Chao ([0065]).
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 - 2, 4 - 15, and 21 - 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chao et al. (US 2020/0129158, of record).
Regarding claims 1 and 15, Chao shows an intravascular ultrasound imaging system (“intraluminal ultrasound imaging system”, claim 1) and method of use thereof. The system comprises:
an intravascular imaging catheter (catheter, [0043] and fig. 1) configured for intravascular ultrasound (IVUS) (IVUS, [0044]) or optical coherence tomography (OCT) (OCT, [0045]); and
a processor circuit configured for communication with the intravascular imaging catheter (“processor circuit configured for communication with an intraluminal ultrasound imaging catheter”, claim 1), wherein the processor circuit is configured to:
control the intravascular imaging catheter to obtain a first plurality of intravascular images obtained during movement of the intravascular imaging catheter within a vasculature of a patient (“receive a plurality of intraluminal ultrasound images obtained by the intraluminal ultrasound imaging catheter while the intraluminal ultrasound imaging catheter is moved through a body lumen of a patient”, claim 1), the vasculature comprising a plurality of segments and a compression within at least one segment (“the body lumen comprises a plurality of segments”, claim 13; vessel segments, [0063] - [0064] and fig. 5);
for at least one segment, based on the first plurality of intravascular images, automatically determine a target location within the compression and a reference location comprising a healthy portion of the vasculature (“… reference location … target location …compressed portion of the body lumen …” claims 16 - 17; [0063]; ”… healthy tissue … narrowest part of the vessel segment 520”, [0064] and fig. 5), wherein at least one of the target location or the reference location are determined based on an aspect ratio1 of the vasculature (“relative diameter or cross-sectional area of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5; “… selected automatically …”, [0065]); and
output, to a display in communication with the processor circuit, a screen display comprising the target location, the reference location, and at least one quantity associated with the target location and reference location (“… output … stylized graphic …”, claims 16 - 17; [0063] - [0064] and screen display 500 in fig. 5).
The method of use comprises implementing the steps of the processor circuit.
Regarding claim 2, Chao discloses the claimed invention substantially as noted above. Chao further shows obtaining a second plurality of intravascular images obtained by the catheter, wherein the second plurality of intravascular
images depicts a stent that is aligned longitudinally with the target location (stents 440, [0070] and fig. 7);
based on the second plurality of intravascular images, automatically determining a proximal end of the stent, a distal end of the stent (“stents 440, which are detected automatically by the system and included on the GILD 610”, [0070] and fig. 7), and a location within the stent where the stent is most constricted (“post-treatment marker 735 is in the same location previously occupied by the target marker 534”, [0070] and fig. 7); and
outputting, to the screen display, the proximal end of the stent, the distal end of the stent, the location where the stent is most constricted, and at least one quantity associated with the constriction (post-treatment gain calculation 738, [0070] and fig. 7).
Regarding claim 4, Chao discloses the claimed invention substantially as noted above. Chao further shows the vasculature comprises peripheral venous vasculature and wherein the plurality of segments comprises at least one of a common iliac vein (CIV), an external iliac vein (EIV), a common femoral vein (CFV), or a femoral vein ([0063] and fig. 5).
Regarding claims 5 - 6, Chao discloses the claimed invention substantially as noted above. Chao further shows the at least one segment comprises multiple segments, and wherein the screen display simultaneously shows the target frame and reference frame for each of the multiple segments ([0063] and fig. 5).
Regarding claim 7, Chao discloses the claimed invention substantially as noted above. Chao further shows at least one of the target location or the reference location is determined at least in part by variation of aspect ratio along a segment (relative diameter or cross-sectional area, [0064]; “… selected automatically …”, [0065]).
Regarding claims 10 and 11, Chao discloses the claimed invention substantially as noted above. Chao further shows the target and reference locations are determined based at least in part on the catheter and a length of the movement of the catheter within the body lumen, as the target and reference locations are determined during a pullback procedure ([0063]).
Regarding claim 12, Chao discloses the claimed invention substantially as noted above. Chao further shows the target location or the reference location is determined based at least in part on the segment in which the compression is located, as the target location is at the compression ([0063] - [0064] and fig. 5).
Regarding claim 13, Chao discloses the claimed invention substantially as noted above. Chao further shows the vasculature comprises a vein (implicit), wherein the target location or the reference location is determined based at least in part on an artery (artery, [0052]; the walls of the vein are compressed as a result of the contact with the artery, [0060]) adjacent the vein (implicit).
Regarding claim 14, Chao discloses the claimed invention substantially as noted above. Chao further shows the screen display comprises at least one of a roadmap image or an image longitudinal display (ILD) ([0078] and fig. 10).
Regarding claim 21, Chao discloses the claimed invention substantially as noted above. Chao further shows determining a plurality of diameters ([0064]) of the vasculature in the first plurality of intravascular images; and calculating the aspect ratio based on the plurality of diameters (“relative diameter … of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5).
Regarding claim 22, Chao discloses the claimed invention substantially as noted above. Chao further shows the plurality of diameters comprises a maximum diameter and a minimum diameter (“widest part of the vessel segment 520… narrowest part of the vessel segment 520”, [0064]) for each intravascular image in the first plurality of intravascular images, wherein the aspect ratio for each intravascular image comprises the maximum diameter divided by the minimum diameter (“relative diameter … of the target area 524 as compared with the reference area 522 … expressed as a percentage, a fraction or ratio, … other means of representing fractional or relative values. “, [0064] and difference calculations 526, 536, 546 in fig. 5).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chao in view of Nair et al. (US 2020/0129147, of record).
Regarding claim 3, Chao discloses the claimed invention substantially as noted above.
Chao is silent as to whether or not the determining the reference location, the proximal end of the stent, the distal end of the stent, or the location within the stent where the stent is most constricted involves a machine learning algorithm.
Nair discloses intraluminal ultrasound imaging. Nair teaches determining the reference location, the proximal end of the stent, the distal end of the stent, or the location within the stent where the stent is most constricted (“post-stent inspection to determine the status of a stent that has been positioned in a lumen”, [0049] and figs. 5 - 7; “compression 330 and with a stent 440 expanded inside it”, [0046] and fig. 4, stent border, [0067]; stent contour, [0082]) involves a machine learning algorithm (machine learning, [0010], [0063], [0074]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Chao to have the determining the reference location, the proximal end of the stent, the distal end of the stent, or the location within the stent where the stent is most constricted involve a machine learning algorithm, as taught by Nair, in order to facilitate enabling easy editing of measurements and borders during use of IVUS, as suggested by Nair ([0007]).
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Double Patenting
Applicant's comments on page 6 are acknowledged.
Claim Rejections - 35 U.S.C. § 101
Applicant argues on pages 7 - 8 that the claim 1 recites a particular machine.
Examiner respectfully disagrees. The catheter as broadly referred to in the claims is not considered to be a “particular” machine, but a generic hardware component for extra-solution activity of data gathering. There are not details in the claim that distinguish the catheter from those of the prior art.
Applicant argues on page 8 that the claim 1 “integrates any potential judicial exception into a practical application because the recited elements reflect an improvement to a technology or technical field”.
Examiner respectfully disagrees. the claims do not contain any limitations directed towards the purported improvement2. In contrast, the claim appears to involve gathering and analyzing information using conventional techniques and displaying the result, which the courts have indicated may not be sufficient to show an improvement to technology.
Applicant argues on page 8 that the claim 1 “reflect a specific, technology-rooted solution to these existing problems.”
In response, it is noted that the specificity of a judicial exception is not dispositive of eligibility.
Applicant argues on page 9 that the claim 1 “is eligible under Step 2B because it recites a combination of features that are not well-understood, routine, conventional activity in the field” and directs the reader to the judicial exception itself.
Examiner respectfully disagrees. The question of whether a judicial exception is well-understood, routine, conventional activity in the field is not dispositive of eligibility.
Claim Rejections - 35 U.S.C. § 102
Applicant argues on page 11 that Chao does not teach the amended features.
Examiner respectfully disagrees for reasons explained in the art rejections above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
1 It is noted that the instant specification discloses that the “aspect ratio” is a ratio between the largest diameter and the smallest diameter ([0100], as published)
2 MPEP2106.05(a): “After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology ... That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.”
Prosecution Insights