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 .
Election/Restrictions
Applicant’s election without traverse of invention I, sub-invention IB in the reply filed on 04/22/2026 is acknowledged.
Claims 2-3, 7-17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II and sub-inventions IA and IC-II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/22/2026.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 4-6 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for biological techniques such as dynamic light scattering and electrophoretic mobility detection, does not reasonably provide enablement for all known and yet to be invented forms of sample information “processed by an instrument” of which applicant has failed to define in any manner. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use, the invention commensurate in scope with these claims. Specifically the instant disclosure teaches and enables the particular processing method/computer readable medium programmed for biological data analysis of dynamic light scattering and electrophoretic mobility detection. However the scope of the claim cover for example a coordinate measurement machine interacting with a 3d structure, an interferometer measuring topographic eye information, a time of flight measurement system all of which clearly qualify under the broad term “instrument” which applicant has in no way enabled particulars as to how that data would be processed relative to the claimed subject matter. As such the scope of the claim far outstretches that which applicant has enabled.
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, 4-6 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites "A method comprising:" which comprising steps of "receiving, from a data store by a computer system, a predetermined threshold related to a statistical accuracy for determining a measurement result related to a sample processed by an instrument; collecting data regarding the sample from the instrument until a standard error of a mean among an acquisition series of the data is substantially equal to the predetermined threshold; and generating the measurement result of the acquisition series of the data when the standard error is substantially equal to the predetermined threshold.". Therefore, it is a process.
Step 2A, Prong 1: Judicial exception recited? Yes. Each limitation as recited in the claim, is a process that, under BRI covers performance of the limitation in the mind. Nothing in the claim elements precludes the steps from practically being performed in the mind. The mere nominal recitation of a generic technical system does not take the claim limitation out of mental process grouping. Thus the claim recites a mental process.
Each limitation as recited in claim, is a process that, under its broadest limitation, covers performance of the limitation in the mind. Nothing in the claim elements precludes the steps from practically being performed in the mind. The mere nominal recitation of a generic technical system does not take the claim limitation out of the mental processes grouping.
2A-Prong 2: Integrated into a practical application? No.
This judicial exception is not integrated into a practical application because the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim when viewed alone or in combination recites data gathering such as "receiving, from a data store by a computer system, a predetermined threshold related to a statistical accuracy for determining a measurement result related to a sample processed by an instrument; collecting data regarding the sample from the instrument until a standard error of a mean among an acquisition series of the data is substantially equal to the predetermined threshold; and generating the measurement result of the acquisition series of the data when the standard error is substantially equal to the predetermined threshold.".
Step 2B: No. The recited limitations " receiving, from a data store by a computer system, a predetermined threshold related to a statistical accuracy for determining a measurement result related to a sample processed by an instrument; collecting data regarding the sample from the instrument until a standard error of a mean among an acquisition series of the data is substantially equal to the predetermined threshold; and generating the measurement result of the acquisition series of the data when the standard error is substantially equal to the predetermined threshold." are merely data gathering. Such data has unlimited use which cannot provide an inventive concept.
Therefore, claim 11 is ineligible.
Similarly, claims 4-6 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 18 recite " A computer program product comprising a computer readable storage medium having program instructions embodied therewith, the program instructions executable by a processor to cause the processor to perform a method comprising" which does not offer a meaningful limitation beyond generally linking the apparatus or medium to a particular environment, that is, implementation via an a "processor". In other words, the medium claims are no different from the method of claim 1 in substance; the method claim recites a mental process while the readable medium claim recites generic components configured to implement the same judicial exception. The claim do not amount to significantly more than the underlying mental process for the same reasons as applied above in claims 1.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitchell et al. (U.S. PGPub No. 2012/0140223 A1).
As to claims 1 and 18, Mitchell discloses and shows in figures 6, 20 and 21, a computer program product comprising a computer readable storage medium having program instructions embodied therewith, the program instructions executable by a processor (i.e. processing electronics 145) to cause the processor to perform a method comprising ([0031], ll. 19-25; [0077], ll. 28-33):
receiving a predetermined threshold (threshold frame which includes threshold values for each pixel of the detector) related to a statistical accuracy for determining a measurement result related to a sample processed by an instrument (i.e. the frame is used to reduce false counts a statistical accuracy as exemplified in figure 6) ([0086], ll. 1-3; [0107]);
collecting data regarding the sample (i.e. start particle counting and read out pixel) from the instrument until a standard error (i.e. inherent noise in detector) in a mean among an acquisition series of the data (i.e. as disclosed the acquisition series of values can be processed in a plurality of ways such as summing or averaging (i.e. mean value analysis)) is substantially equal to the predetermined threshold (i.e. measure pixel data and determine if data corresponds to a multiple of the predetermined threshold (e.g. 3 times as disclosed which is “substantially equal”)) (Fig. 20; [0081]; [0085], ll. 9-16; [0105]; [0107]); and
generating the measurement result (i.e. pixels in buffer which ultimately form read out frame) of the acquisition series of the data when the standard error is substantially equal to the predetermined threshold ([0108]).
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.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell in view of Sidener et al. (U.S. PGPub No. 2021/0192384 A1) further in view of Hammond et al. (U.S. PGPub No. 2018/0031472 A1).
As to claim 4, Mitchell does not explicitly disclose a method further comprising: calculating, by the computer system, a mean value and a standard deviation value of an acquisition of the acquisition series; calculating a relative standard error as a function of the mean value and the standard deviation value; and determining that the relative standard error is the standard error when the relative standard error is substantially equal to the predetermined threshold.
However, Sidner does disclose in ([0055]) the well-known mathematical concept of calculating mean values, standard error, standard deviation and mean values for data. In doing so one can compare those to a threshold (where the examiner is interpreting “below a predetermined threshold by 10%” as “substantially equal”) and determine that a model is sufficiently trained. The examiner is interpreting “sufficiently trained” as the relative standard error being substantially equivalent to the standard error. The examiner notes that Sidner is referring to the training of a machine learning model in the noted citation. It is found obvious that the calibration routine as disclosed in Mitchell can be combined and optimized with the machine learning model of Sidener for more rapid and high accuracy analysis.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mitchell with a method further comprising: calculating, by the computer system, a mean value and a standard deviation value of an acquisition of the acquisition series; calculating a relative standard error as a function of the mean value and the standard deviation value; and determining that the relative standard error is the standard error when the relative standard error is substantially equal to the predetermined threshold in order to provide the advantage of expected results as obviously using extremely common mathematical techniques predictably allows one to more accurately represent the data and any errors or variations in it as known in the art (i.e. stability and error averages of the measured information) (evidenced further in Hammond, [0046], ll. 10-14; [0056], ll. 14-16).
As to claim 5, Mitchell discloses a method, as a number of acquisitions increases, the mean of the acquisition series converges to a true underlying mean value and the standard deviation of the acquisition series converges to a true standard deviation of individual acquisitions ([0015]; where the examiner notes that the claim is merely an intended result, the claim lacks and clear step, as such the prior art is being interpreted as capable of the result in perform the same steps from which claim 5 depends).
As to claim 6, Mitchell as modified by Sidner discloses a method further comprising: controlling the instrument to cease providing additional acquisitions (i.e. sufficient buffer fill to end the frame) for the acquisition series in response to a determination that the relative standard error is substantially equal to the predetermined threshold (Fig. 21; [0108], where the examiner is interpreting that the basic concept of completing the task once the threshold is met is both taught by Mitchell in sufficient buffer fill, and by Sidner [0055] in the model being “sufficiently trained”. As such for the same modification and motivation as recited above the prior art references both teach the noted limitation).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P LAPAGE whose telephone number is (571)270-3833. The examiner can normally be reached Monday-Friday 8-5:30.
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, Tarifur Chowdhury can be reached at 571-272-2287. 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.
/Michael P LaPage/Primary Examiner, Art Unit 2877
Prosecution Insights