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) submitted on 11/22/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 4, 6-7, 11, 13-14 and 18-20 are 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.
Regarding claim 4, The term “the second subset” in line 3 lacks antecedent basis.
Regarding claims 6-7, Claims are rejected based on their dependency to a rejected claim.
Regarding claim 11, The term “the second subset” in line 3 lacks antecedent basis.
Regarding claims 13-14, Claims are rejected based on their dependency to a rejected claim.
Regarding claim 18, The term “the second subset” in line 3 lacks antecedent basis.
Regarding claims 19-20, Claims are rejected based on their dependency to a rejected claim.
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 autoprocessed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 14-20 of U.S. Patent No. 12,162,161. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specifically wherein;
Regarding claim 1, Applicant provides similar limitations as in claim 1 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A method comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode (first mode): simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its function(s) in the claim of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the Reference Application, and likewise would anticipate the currently provided claim limitations.
Regarding claims 2-7, Applicant provides similar limitations as provided in at least claims 2-7 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Regarding claim 8, Applicant provides similar limitations as in claim 14 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A non-transitory computer-readable storage medium storing executable instructions that, when executed by a hardware processor, cause the hardware processor to perform steps comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode (first mode): simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Regarding claims 9-14, Applicant provides similar limitations as provided in at least claims 15-20 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Regarding claim 15, Applicant provides similar limitations as in claim 8 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A system comprising a hardware processor and a non-transitory computer-readable storage medium storing executable instructions that, when executed by the hardware processor, cause the system to perform steps comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode: simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Regarding claims 16-20, Applicant provides similar limitations as provided in at least claims 15-20 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Claims 1-2,6-9, 13-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, 14-15 and 18-19 of U.S. Patent No. 11,919,174. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specifically wherein;
Regarding claim 1, Applicant provides similar limitations as in claim 1 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A method comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode (first mode): simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its function(s) in the claim of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the Reference Application, and likewise would anticipate the currently provided claim limitations.
Regarding claims 2 and 6-7, Applicant provides similar limitations as provided in at least claims 2 and 5-6 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Regarding claim 8, Applicant provides similar limitations as in claim 14 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A non-transitory computer-readable storage medium storing executable instructions that, when executed by a hardware processor, cause the hardware processor to perform steps comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode (first mode): simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its function(s) in the claim of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the Reference Application, and likewise would anticipate the currently provided claim limitations.
Regarding claims 9 and 13-14, Applicant provides similar limitations as provided in at least claims 15 and 18-19 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Regarding claim 15, Applicant provides similar limitations as in claim 14 of the U.S. Patent, where both of the respective claims include (similar limitations provided in bold):
A system comprising a hardware processor and a non-transitory computer-readable storage medium storing executable instructions that, when executed by the hardware processor, cause the system to perform steps comprising:
identifying, by a lab automation system, a set of steps associated with a protocol for a lab, each step to be performed by a robot within the lab using one or more of lab equipment and reagents;
rendering, within a graphic user interface of the lab automation system, a virtual representation of the lab, a virtual robot within the lab, and virtual lab equipment and reagents within the lab;
determining that no variants exist for one or more of the robot, lab equipment, and reagents; displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents; and
in response to the lab automation system operating in a simulation mode (first mode): simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps; and modifying the virtual representation of the lab to mirror the identified positions of the virtual robot as the virtual robot performs the identified set of steps.
Regarding claims 16 and 20, Applicant provides similar limitations as provided in at least claims 15 and 18 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, AND Double Patenting set forth in this Office action. The instant invention differs from the prior art in that the method includes “determining that no variants exist for one or more of the robot, lab equipment, and reagents”, “displaying, via the graphic user interface, an indication that no variants exist for the one or more of the robot, lab equipment, and reagents” and “and in response to the lab automation system operating in a simulation mode: simulating the identified set of steps being performed by the virtual robot to identify virtual positions of the virtual robot within the lab as the virtual robot performs the identified set of steps”. Prior art Yu (US 2019/0005838 A1) discloses generating a virtual robotic surgical environment using a client application in which the user interacts with the virtual robotic surgical environment in order to simulate a robotic surgical environment in which a user may operate both a robotically-controlled surgical instrument using a handheld controller and a manual laparoscopic surgical instrument (e.g., while adjacent a patient table, or “over the bed”). Prior art Rhodes (US 2019/0018694 A1) discloses a virtual laboratory assistant platform enabled to provide researchers, science educators, industry professionals, and scientists in the clinical, industrial, or laboratory setting access to information and data, a digital footprint of laboratory activities, and insights into laboratory activities based on the digital footprint. However, the prior art fails to disclose and fully teach the above bolded limitations AND lack a suitable motivation to combine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED YOUSEF ABUELHAWA whose telephone number is (571)272-3219. The examiner can normally be reached Monday-Friday 8:30-5:00 with flex.
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/MOHAMMED YOUSEF ABUELHAWA/Examiner, Art Unit 3656
/WADE MILES/Supervisory Patent Examiner, Art Unit 3656