DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
All pending claims 1, 2, 4, 6-12, 14 and 16-20 filed April 23, 2026 are examined in this final office action necessitated by amendment.
Response to Arguments
35 USC 101-Subject Matter Eligibility
Applicant's arguments filed Aprile 23, 2026 have been fully considered but they are not persuasive:
Regarding mental exercises: Directing the rejection based in part upon mental exercises was never alleged, see below an excerpt from page 5 of the last office action:
“Claim 1 executes methods that are directed to abstract ideas comprising processes that can be executed by a human while following a procedure that organizes human activity related to managing interactions using conventional computing elements.”
The computer system is directing activity.
Regarding RFID antenna, a reader and a display: These are conventional system elements.
Regarding Step 2A Second Prong: A human following a procedure that organizes human activity related to managing interactions using conventional computing elements can accomplish the following:
“determine an amount of the laboratory items remaining in the laboratory based on scans of the RFID tags by the RFID antenna; e.g. human does the scanning with a fixed or handheld reader
store the amount of the laboratory items remaining in the laboratory in an inventory database; e.g. spreadsheet exercise
in response to determining the amount of the laboratory items remaining in the laboratory is below a threshold amount, generate a purchase order for additional ones of the laboratory items; e.g. human issues a purchase order once the inventory is determined to be low based on a predetermined value.
identify, based a scan of one of the machine-readable codes by the reader, a selection of a first one of the laboratory items to be used in a laboratory instrument; e.g. Human directed to make a selection.
determine an expiration date of the first one of the laboratory items is later than a second one of the laboratory items; and e.g. Directed by the computing system using conventional system/computing elements.
in response to determining the expiration date of the first one of the laboratory items is later than the second one of the laboratory items, generate an alert on the display to change a sequence of use of the laboratory items, the alert instructing a laboratory person to select the second one of the laboratory items to be used in the laboratory instrument in place of the first one of the laboratory items.” e.g. Laboratory best practices- use the laboratory item with the oldest expiration date. Humans who pay attention to expiration dates of items in their refrigerators typically pick the item with the older/oldest expiration date- just common sense otherwise risk wasting money by letting the item expire.
Telephonic Interview
Patent counsel is welcome to schedule a telephonic interview in after final status.
35 USC 103(a)
Applicant’s arguments, see remarks filed April 23, with respect to rejections under 35 USC 103(a) have been fully considered and are persuasive. Rejections are withdrawn.
Closest US Patent/Pre-Grant Publication: Fritchie et al., US 2009/0117620 recited in paper #20260112 mailed January 23, 2026.
Closest Non-Patent Literature: “Pharmacy Power Via Technology” cited in paper #20260112 mailed January 23, 2026.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6-12, 14 and 16-20 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without adding significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to either a practical application of the abstract idea or significantly more than the abstract idea itself. Groupings of abstract ideas include: Mathematical Concepts, Mental Processes and Certain Methods of Organizing Human Activity.
Certain Methods of Organizing Human Activity include:
Fundamental economic principles or practices,
Commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and
Managing personal behavior or relationships or interaction between people (including social activities, teaching and following rules or instructions).
Mathematical Concepts
Mathematical relationships
Mathematical formulas
Mathematical calculations
Mental Processes
Concepts performed in the human mind (including an observation, evaluation, judgement, opinion)
Step 1
In the instant case, claim 1 is directed to a process. Analysis of claim 1 applies to analysis of claims 2 4, 6-12, 14 and 16-20.
Step 2A Revised (First Prong)
Determine whether claim 1 is directed to a judicial exception. Elements of an abstract idea are underlined. See Analysis.
Step 2A Revised (Second Prong)
Determine whether claim 1 has additional elements (in italics) integrated into a practical application:
a) requires an additional element or a combination of elements in the claim to apply, rely on, or use the judicial exception in a manger that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception; and
b) uses the considerations laid out by the Supreme Court and the Federal Circuit to evaluate whether the judicial exception is integrated into a practical application.
See Analysis.
Step 2B (Revised)
In Step 2B, evaluate whether claim 1 recites additional elements that amount to an inventive concept that adds significantly more than the recited judicial exception. See Analysis.
Analysis
In Claim 1:
(Currently Amended) A system to manage usage of laboratory items in a laboratory, the system comprising:
a radio frequency identification (RFID) antenna located in the laboratory, the laboratory items having RFID tags storing item information associated with respective ones of the laboratory items, the laboratory items being a same type of laboratory item, the RFID antenna to scan the RFID tags when in range of the RFID antenna to obtain the item information from the corresponding ones of the RFID tags;
a reader to scan machine-readable codes on the laboratory items;
a display; and
memory including instructions to cause programmable circuitry to:
determine an amount of the laboratory items remaining in the laboratory based on scans of the RFID tags by the RFID antenna;
store the amount of the laboratory items remaining in the laboratory in an inventory database;
in response to determining the amount of the laboratory items remaining in the laboratory is below a threshold amount, generate a purchase order for additional ones of the laboratory items;
identify, based a scan of one of the machine-readable codes by the reader, a selection of a first one of the laboratory items to be used in a laboratory instrument;
determine an expiration date of the first one of the laboratory items is later than a second one of the laboratory items; and
in response to determining the expiration date of the first one of the laboratory items is later than the second one of the laboratory items, generate an alert on the display to change a sequence of use of the laboratory items, the alert instructing a laboratory person to select the second one of the laboratory items to be used in the laboratory instrument in place of the first one of the laboratory items.
Claim 1 executes methods that are directed to abstract ideas comprising processes that can be executed by a human while following a procedure that organizes human activity related to managing interactions using conventional computing elements. Please note: Laboratory equipment procedures are developed by one or more persons. The laboratory person is following instructions created by one or more persons.
No evidence of an improvement to the functioning of a computer, or to any other technology or technical field.
No evidence exists in the instant specification or claims of a particular machine.
No evidence exists of a transformation or reduction of a particular article to a different state or thing.
The claim does not go beyond generally linking the use of the judicial exception to a particular technological environment, e.g. processor, device.
Claim 1 does not recite additional elements that amount to inventive concepts that are “significantly more” than the recited judicial exception. Courts have routinely found conventional computer processing functions (e.g. sending/receiving data, formatting data, storing data, retrieving data, manipulating data, calculating, searching data, displaying data, organizing data) insignificant to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. As such, the claims amount to nothing significantly more than an instruction to implement the abstract idea across a generic computer network which is not enough to transform an abstract idea into a patent-eligible invention.
The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the steps when each is taken alone. That is, the steps involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well-understood, routine and conventional. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.
Conclusion
Accordingly, the examiner concludes there are no meaningful limitations in claims 1, 2 4, 6-12, 14 and 16-20 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
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, 2, 4, 6-12, 14 and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over parent claims 1 and 10 of Jones et al., US 12,141,734.
Although the claims at issue are not identical, they are not patentably distinct from each other because the rejected claims achieve a non-distinct outcome using the same computing structures.
Rejected claim 1 (represents claim 11)
Parent claim 10 (represents claim 1)
(Currently Amended) A system to manage usage of laboratory items in a laboratory, the system comprising:
A system to manage an inventory of laboratory items in a laboratory, the system comprising:
a radio frequency identification (RFID) antenna located in the laboratory, the laboratory items having RFID tags storing item information associated with respective ones of the laboratory items, the laboratory items being a same type of laboratory item, the RFID antenna to scan the RFID tags when in range of the RFID antenna to obtain the item information from the corresponding ones of the RFID tags;
track locations of laboratory items in a laboratory based on scans of radio frequency identification (RFID) tags on the laboratory items by at least one of an RFID antenna or an RFID reader, the RFID antenna installed in a fixed location in the laboratory;
a reader to scan machine-readable codes on the laboratory items;
or an RFID reader
a display; and
See below: generate an order to select the second one of the laboratory items to be used in the laboratory instrument in place of the first one of the laboratory items. Please note: Requires an output device to communicate with the lab tech, e.g. audible, text and/or video.
memory including instructions to cause programmable circuitry to:
Inherent in system computer.
determine an amount of the laboratory items remaining in the laboratory based on scans of the RFID tags by the RFID antenna;
determine an amount of the laboratory items remaining in the laboratory based on the scans of the RFID tags by at least one of the RFID antenna or the RFID reader;
store the amount of the laboratory items remaining in the laboratory in an inventory database;
store the amount of the laboratory items remaining in the laboratory in an inventory database;
in response to determining the amount of the laboratory items remaining in the laboratory is below a threshold amount, generate a purchase order for additional ones of the laboratory items;
in response to determining the amount of the laboratory items remaining in the laboratory is below a threshold amount, generate a purchase order for additional ones of the laboratory items;
identify, based a scan of one of the machine-readable codes by the reader, a selection of a first one of the laboratory items to be used in a laboratory instrument;
identify a first one of the laboratory items selected by a laboratory operator to be used by a laboratory instrument based on a scan by at least one of the RFID antenna or the RFID reader;
determine an expiration date of the first one of the laboratory items is later than a second one of the laboratory items; and
determine an expiration date of the first one of the laboratory items is later than a second one of the laboratory items;
in response to determining the expiration date of the first one of the laboratory items is later than the second one of the laboratory items, generate an alert on the display to change a sequence of use of the laboratory items, the alert instructing a laboratory person to select the second one of the laboratory items to be used in the laboratory instrument in place of the first one of the laboratory items.
generate an order to select the second one of the laboratory items to be used in the laboratory instrument in place of the first one of the laboratory items.
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 ROBERT M POND whose telephone number is (571)272-6760. The examiner can normally be reached M-F, 8:30 AM-6:30 PM.
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, Jeffrey Smith can be reached at 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT M POND/Primary Examiner, Art Unit 3688 July 15, 2026
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