DETAILED ACTION
The following is a first office action upon examination of application number 18/937359. Claims 1-22 are pending in the application and have been examined on the merits discussed below.
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 11/05/2024 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 § 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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
(Step 1) Claims 1-20 are directed to system comprising one or more processors; thus the system comprises a device or set of devices, and therefore, is directed to a machine which is a statutory category of invention. Claim 20 is directed to a method; thus this claim is directed to a process, which is one of the statutory categories of invention. Claim 20 is directed to a non-transitory computer readable storage medium, which is a manufacture, and this a statutory category of invention.
(Step 2A) The claims recite an abstract idea instructing how to evaluate query perturbations, which is described by claim limitations reciting:
obtaining, … for each respective control perturbation in a set of control perturbations from the images, a corresponding control data point, thereby obtaining a plurality of control data points, wherein each corresponding control data point comprises a plurality of dimensions, each dimension in the plurality of dimensions representing a measure of central tendency of a different feature, in a plurality of features, determined across a corresponding plurality of control aliquots of cells in corresponding wells, in the plurality of wells, representing the respective control perturbation;
obtaining, … for each respective test perturbation in a set of one or more test perturbations from the images, a corresponding test data point, thereby obtaining a plurality of test data points, wherein each corresponding test data point comprises the plurality of dimensions, each dimension in the plurality of dimensions comprising a measurement of central tendency of a different feature, in the plurality of features, determined across a corresponding plurality of test aliquots of the cells representing the respective test perturbation in corresponding wells in the plurality of wells;
computing, … a composite test vector, the composite test vector between (i) a first point defined by a respective measure of central tendency across the plurality of control data points for each dimension in the plurality of dimensions and (ii) a second point defined by a respective measure of central tendency across the plurality of test data points for each dimension in the plurality of dimensions;
obtaining, … a plurality of query perturbation data points, wherein each corresponding query perturbation data point comprises the plurality of dimensions, each dimension in the plurality of dimensions comprising a measure of central tendency of a different feature, in the plurality of features, determined across a plurality of instances of query perturbation aliquots of the cells representing a respective test perturbation, in the set of test perturbations, and a first amount of the query perturbation in a corresponding subset of the plurality of wells; and
computing, … a query perturbation vector, between the first point and a respective measure of central tendency across the plurality of query perturbation data points for each dimension in the plurality of dimensions.
The identified limitations in the claims describing evaluating query perturbations (i.e., the abstract idea) fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, which covers commercial interactions. Dependent claims 2-13, 16, 18, 19, and 20 recite limitations that further narrow the abstract idea (i.e., evaluating query perturbations); therefore, these claims are also found to recite an abstract idea.
This judicial exception is not integrated into a practical application because additional elements such as the one or more processors; memory; and one or more programs, wherein the one or more programs are stored in the memory and are configured to be executed by the one or more processors in claim 1, and the one or more processors in claim 21, and the non-transitory computer readable storage medium and one or more computer programs embedded therein and one or more processors and claim 22, do not add a meaningful limitation to the abstract idea since these elements are only broadly applied to the abstract ideas at a high level of generality; thus, none of recited hardware offers a meaningful limitation beyond generally linking the abstract idea to a particular technological environment, in this case, implementation via a processor/computer.
Additional elements such as capturing, by an imaging device under control of a computer system, images of wells of the one or more multiwell plates via high throughput screening using high throughput microscopy, such that a corresponding well of the wells is represented by a corresponding two-dimensional pixelated image having a corresponding plurality of native pixel values and native pixel values of the images do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology. Additional elements in claims 14 and 15 related to siRNA do not yield an improvement; further, these additional elements only generally link the abstract idea to a technological environment. Accordingly, these additional element do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
(Step 2B) The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the hardware additional elements amount to no more than mere instructions to apply the exception using a generic computer component (see Spec. [0045]). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Additional elements such as capturing, by an imaging device under control of a computer system, images of wells of the one or more multiwell plates via high throughput screening using high throughput microscopy, such that a corresponding well of the wells is represented by a corresponding two-dimensional pixelated image having a corresponding plurality of native pixel values and native pixel values of the images do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology. Additional elements in claims 14 and 15 related to siRNA do not yield an improvement and only generally link the abstract idea to a technological environment. In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22, respectively, of U.S. Patent No. 12170135. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims simply omit certain features from the claims in US 12170135 and it would have been obvious to one of ordinary skill to omit undesired elements. See In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
10769501 (Ando) – discloses the analysis of perturbed subjects using semantic embeddings.
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/ALAN TORRICO-LOPEZ/ Primary Examiner, Art Unit 3625