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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 10/11/2024 was considered and placed on the file of record by the examiner.
Drawings
The drawings are objected to because figure 2 is not properly describe the invention. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
In Alice Corporation Pty. Ltd. v. CLS Bank International, et al. {“Alice Corp.’’), the Supreme Court made clear that it applies the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S._(2012) {Mayo), to analyze claims directed towards laws of nature and abstract idea. Alice Corp. also establishes that the same analysis applies for all categories of claims (e.g., product and process claims). The basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(1). First, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Next, determine if the claim is directed towards a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). The two-part test provided in Alice Corp. to determine whether a claim directed towards an abstract idea is statutory under § 101 requires an evaluation to determined 1) whether the claims is directed to an abstract idea and 2) if an abstract idea is present in the claim, whether the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas reference in Alice Corp. include:
- Fundamental economic principles
- Certain methods of organizing human activities
- An idea of itself
- Mathematical relationships/formulas
In accordance with judicial precedent, the 2019 Revised Patent Subject Matter Eligibility Guidance sets forth a procedure to determine whether a claim is ‘‘directed to’’ a judicial exception. Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not ‘‘directed to’’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Step 1 - Statutory Category
The claims 1-10 recite a process viewing images of a container with liquid and objects, tiling the container and determining the movement of the objects, therefore it recites at least one of the enumerated categories, a process, eligible subject matter in 35 USC 101. Accordingly, claims 1-10 satisfy Step 1.
Step 2A(i) -Focus of the Claim
As a result, the claims 1-10 will be reviewed under Step 2A(i) to determine whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citations omitted). The claims recite determining the movement of objects in a container by reviewing images, thus the organization of human activity such as moving a container with objects and viewing object movement.
The court have ruled that receiving and authenticating identity data to permit access was abstract since the functions were claimed generically rather than offering a "'concrete, specific solution" See Prisnz Technologies LLC v. T-Afobile USA, 696 F. App'x 1014 (Fed. Cir.2017). Abstract ideas include the concepts of collecting data, recognizing certain data within the collected data set, storing the data in memory, and notifying the user of the results. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea"). Moreover, the reviewing court has concluded that acts of parsing, comparing, storing, and editing data are abstract ideas. Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018). In addition, the collection of information and analysis of information ( e.g., recognizing certain data within the dataset, such as rules) are also abstract ideas. Elec. Power Grp., LLC v. Alstom SA., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Similarly, "collecting, displaying, and manipulating data" is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[M]erely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis").
The process of receiving images of objects in a liquid container to determine the movement of the objects is a method of organizing human activity, as considered under MPEP § 2106.04(a)(2)(II), Certain Methods of Organizing Human Activity. Therefore, claims 1-10 recite an abstract idea.
Step 2A(ii) -Practical Application
Limitations that are indicative of integration into a practical application when recited in a claim with a judicial exception include:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying or using a judicial exception to affect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
Limitations that are not indicative of integration into a practical application when recited in a claim with a judicial exception include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h).
In this instance, this judicial exception is not integrated into a practical application because the claims merely detect objects in images, and determine their movement. The claims do not provide an improvement to the functionality of a computer or image analysis technical field; the claims are not implemented with or used with a particular machine; the claims do not transform an article to a different state or thing when locating objects in images; and the claims do not provide a meaningful way of analyzing image regions in the image analysis technical environment.
Step 2B - Inventive Concept
As set forth under MPEP § 2106.05( d), only if a claim: (1) recites a judicial exception; and (2) does not integrate that exception into a practical application, do we then look under Step 2B to determine; (3) whether the claim adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional activity" (WURC) in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Having determined claims 1-10 are directed to an abstract idea that is not integrated into a practical application, we now evaluate whether the additional elements, whether examined alone or as an ordered combination, add a specific limitation that is not well-understood, routine, or conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea. See generally Revised Guidance.
It is possible that a claim that does not ‘‘integrate’’ a recited judicial exception is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element. Along these lines, the Federal Circuit has held claims eligible at the second step of the Alice/Mayo test because the additional elements recited in the claims provided ‘‘significantly more’’ than the recited judicial exception (e.g., because the additional elements were unconventional in combination).
Limitations reference in Alice Corp. that may be enough to quality as “significantly more” when recited in a claim with an abstract idea include, as nonexclusive examples:
- Improvements to another technology or technical field
- Improvements to the functioning of the computer itself
- Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment
Examples that are not enough to quality as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive example:
- Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer
- Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry
The additional elements recited in claims 1-10 are well-understood, routine, and conventional steps in image analysis. The claims 1-10 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed to viewing images and determining location of objects.
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have previously recognized that using computer processors and memories to collect data and keep records, perform repetitive calculations, and/or receive/send data are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP § 2106.05(d)(II)(i)-(iv)). See also Berkheimer, 881 F.3d at 1366 (acts of parsing, comparing, storing, and editing data are abstract ideas); SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("[M]erely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis"); Intellectual Ventures I, 850 F .3d at 1340 ("[C]ollecting, displaying, and manipulating data" is an abstract idea); Smart Sys. Innovations, 873 F .3d at 1372 (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea.").
In claims 1-10, the steps of receiving images, and determining the location of objects in a container with liquid is not an improvement to a fundamental practice and/or method of organizing human activity. The claims do not include additional elements that are sufficient to amount to significantly more than generalized steps well-known and routine in the art such as image detection and object localization. Therefore, claims 1-10 are directed to patent-ineligible abstract idea that is not integrated into a practical application, with steps that do not add significantly more to the abstract idea. Claims 1-10 are ineligible.
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 8 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. Claims 9-10 are rejected based on their dependency and fail to overcome the 112 rejection.
Claim 8 is indefinite because the claim refers to another claim of a different category to define its limitations. The claim fails to clearly set forth the relationship between the structural elements and the method steps. See MPEP § 608.01(n)
In claim 8, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Brassard et al. (US 2025/0147300) (CA 3241302A1 published 2023-06-29) in view of Milne et al. (US 9,704,239).
Regarding claim 1, Brassard teaches a method of detection of particles of a first type, called first particles (P1), present in a liquid (L), said liquid also containing particles of a second type distinct from the first type, and called second particles (P2), said liquid (L) being placed in a fluidic chamber, said first particles (P1) each having a density distinct from that of the liquid (L) and from that of each of the second particles (P2), said fluidic chamber having a closed volume occupied entirely by said liquid (L), said detection being achieved by capturing images of said fluidic chamber (see figure 3a, figure 3b, para. 0035, Brassard discusses a still image from a video at 5x magnification to view microlens arrays placed above microchambers filled with fluid containing particles), wherein the method consists in:
capturing at a first time at least a first image of the fluidic chamber, said fluidic chamber being in a first position (see figure 3a, figure 3b, para. 0035, Brassard discusses captured images of microchambers filled with fluid containing particles),
capturing at a second time, subsequent to the first time, at least a second image of the fluidic chamber in a second position, said second position being a position that is inclined with respect to a horizontal plane and that is configured to initiate at least one movement of the first particles (P1) inside the liquid (see figure 3a, figure 3b, para. 0035, Brassard discusses captured images of microchambers rotated at different angles),
processing said captured images to determine the movement and/or speed of the first particles (P1) present in the liquid (L) (see figure 3a, figure 3b, para. 0035, Brassard discusses determining the displacement of particles).
Milne teaches discriminating between the first particles (P1) and second particles (P2) on the basis of the movement and/or speed of said first particles (P1) in the liquid, said movement and/or speed of said first particles (P1) and said second particles (P2) in the liquid depending on their respective density with respect to that of the liquid (see figure 3, figure 5, col. 7 lines 1-54, col. 11 lines 36-49, Milne discusses particle identification in a container with liquid based on the movement and size of the particle).
Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 1. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
The determination of obviousness is predicated upon the following: One skilled in the art would have been motivated to modify Brassard in this manner in order to improve object identification in a container with liquid by rotating the container to determine the location displacement of the particle, wherein the displacement indicates the type of particle. Furthermore, the prior art collectively includes each element claimed (though not all in the same reference), and one of ordinary skill in the art could have combined the elements in this manner explained using known engineering design, interface and/or programming techniques, without changing a fundamental operating principle of Brassard, while the teaching of Milne continues to perform the same function as originally taught prior to being combined, in order to produce the repeatable and predictable result of calculating the displacement of particles to properly identify and distinguish particles. The Brassard and Milne systems perform object identification inside liquid holding containers, therefore a person having ordinary skill in the art would have reasonable expectation of success in the combination yielding predictable results. It is for at least the aforementioned reasons that the examiner has reached a conclusion of obviousness with respect to the claim in question.
Regarding claim 2, Brassard teaches wherein the first position is a position in which the fluidic chamber is oriented parallel to said horizontal plane (see figure 5a, figure 5b, figure 7a, para. 0273, 0276, Brassard discusses steady state horizontal position of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 2. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 2. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 3, Brassard teaches wherein the first position is a position that is inclined at a first angle of inclination with respect to said horizontal plane and in that the second position is a position making a second angle of inclination to the horizontal plane that is more pronounced than said first angle of inclination (see figure 5a, figure 5b, figure 7a, para. 0273, 0276, Brassard discusses inclined positions of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 3. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 3. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 4, Brassard teaches wherein the first position and the second position are identical (see figure 5a, figure 5b, figure 7a, para. 0269, 0273, 0276, Brassard discusses different positions of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 4. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 4. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 5, Brassard teaches wherein the method comprises: a step of determining the position of the first particles (P1) and of the second particles (P2) at the first time (T0), and a first step of estimating the position of the first particles (P1) and of the second particles (P2) at the second time (T1) and of determining, for each particle, a first estimated position zone (Z1) at the second time (T1) (see figure 5a, figure 5b, figure 7a, para. 0269, 0273, 0276, Brassard discusses capturing images of different positions of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 5. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 5. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 6, Brassard teaches wherein the method comprises: a step of verifying at the second time (T1) the position of the first particles (P1) and of the second particles (P2) with respect to their first estimated position zone (Z1), and a step of determining the path of each particle detected at the second time (T1) in its first estimated position zone (Z1) (see figure 5a, figure 5b, figure 7a, para. 0269, 0273, 0276, Brassard discusses capturing images of different positions of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 6. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 6. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 7, Brassard teaches wherein the method comprises a second step of estimating the position of the particles not detected in their first estimated position zone (Z1) and of determining a second estimated position zone (Z2) for these particles (see figure 5a, figure 5b, figure 7a, para. 0205, 0269, 0273, 0276, Brassard discusses capturing images of different positions of the fluidic microchamber).
The same motivation of claim 1 is applied to claim 7. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 7. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 8, Milne teaches wherein the detection comprises: a fluidic chamber intended to be filled with the liquid containing the first particles and second particles, a mechanical device that is able to be actuated to make the fluidic chamber or the entire device pivot to its second position, an imaging device comprising at least one light source and an image sensor, said fluidic chamber being placed between said light source and the image sensor, means for processing the images acquired by the sensor (see figure 1, col. 2 lines 21-28, col. 3 lines 47-67, Milne discusses mechanical system that pivots a container and captures images of the container).
The same motivation of claim 1 is applied to claim 8. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 8. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 9, Milne teaches wherein the fluidic chamber is formed in a component having two parallel walls that are transparent to one or more wavelengths of the light emitted by the light source (see col. 6 lines 35-50, Milne discusses illumination system's illuminators can be configured to generate broadband light or light within specific wavelength bands).
The same motivation of claim 1 is applied to claim 9. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 9. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Regarding claim 10, Milne teaches wherein the light source comprises one or more light-emitting diodes, or a laser diode (see col. 6 lines 35-50, Milne discusses light emitting diodes).
The same motivation of claim 1 is applied to claim 10. Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Brassard with Milne to derive at the invention of claim 10. The result would have been expected, routine, and predictable in order to perform object identification in liquid holding container.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Milne (US 2014/0177932) discusses detect undissolved particles, such as glass flakes and/or protein aggregates, in a fluid in a vessel.
Larson (US 2015/0020588) discusses manipulating movement of the fluid medium while the particle analysis apparatus is obtaining the particle information.
Nguyen et al. (US 2017/0153431) discusses rotating an angle to the axis of symmetry of a liquid container, particles can be driven to a single line on the interior surface of the container by the centrifugal force, making the identification of the particles.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNY A CESE whose telephone number is (571) 270-1896. The examiner can normally be reached on Monday – Friday, 9am – 4pm.
If attempts to reach the primary examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached on (571) 272-3838. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Kenny A Cese/
Primary Examiner, Art Unit 2663
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