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 12 January 2026 is considered. Consequently, a corresponding 1449 form is attached.
Affidavit under 37 CFR 1.132
The Declaration of Emily Bellis under 37 CFR 1.132 filed 1/12/2016 is insufficient to overcome the rejection of claims 1-9, 15 and 17-20 based upon 35 U.S.C. 101, as set forth in the last Office action because:
Response to Applicant’s Arguments
In the Affidavit filed 1/12/2026, Applicant argues that limitations of independent claims could not be practically performed in the human mind at least because they involve cross-breeding a plant(page 2, last para through page 3, 1st para). In response, Applicant’s argument is not persuasive. Following the MPEP protocol, claim elements are considered individually and as a whole. Claim elements are first given their broadest reasonable interpretation (BRI). Additional elements (such as “cross-breeding…”) are identified and we agree they are not performed in the human mind. But elements like:
Determining a first machine learning model defining a relationship between a set of genomic variables and a first set of environmental parameters; and
Identifying genomic variables of interest in the set of genomic variables based on the association metrics to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables;
are both drawn to a decision-making activities, under a BRI, the first one reads on a decision to identify a appropriate machine learning model for modeling the relationship between a set of genomic variables and a first set of environmental parameters; the second one reads on a judgement (Identifying genomic variables of interest) based on data observation (the association metrics). These two elements both equate to abstract ideas of mental processes. The additional elements (such as the alleged “cross-breading …) will be considered later in Step 2A/Prong two or Step 2B.
Applicant further argues that claimed invention is not directed to a law of nature. In response, Applicant’s argument is not responsive. MPEP §2106.04(b).I listed the following court identified concepts and products as examples of laws of nature or natural phenomena:
iii. a correlation between variations in non-coding regions of DNA and allele presence in coding regions of DNA, Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1375, 118 USPQ2d 1541, 1545 (Fed. Cir. 2016); [AltContent: rect]
iv. a correlation that is the consequence of how a certain compound is metabolized by the body, Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012); [AltContent: rect]
v. a correlation between the presence of myeloperoxidase in a bodily sample (such as blood or plasma) and cardiovascular disease risk, Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1361, 123 USPQ2d 1081, 1087 (Fed. Cir. 2017); [AltContent: rect]
xi. the natural relationship between a patient’s CYP2D6 metabolizer genotype and the risk that the patient will suffer QTc prolongation after administration of a medication called iloperidone, Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117, 1135-36, 126 USPQ2d 1266, 1281 (Fed. Cir. 2018). [AltContent: rect]
The recited Genome variables x Environmental parameters relationship is similar to above examples. Hence, the claims do recite law of nature.
Furthermore, Applicant argues “the claimed invention represents an improvement to predictive environment-variable modeling by using multiple machine learning models”. Applicant’s argument refers to Step 2A/Prong two in 35 USC 101 analysis, relating to whether claims integrated into a practical application or not, due to an technical improvement. In response, applicant’s argument is not persuasive. To integrated into a practical application at Step 2A/Prong two, Additional elements are required to apply, to capture and to reflect the judicial exceptions. However in the instant case such additional elements are not identified.
Applicant argues (page 3-4, the connecting paragraph) that invention cannot be performed in the human mind. Again Applicant raised some examples that seems impossible to be performed in human minds. Here comes the discrepancy between what the scientific intention and what is claimed. There are do exist alternative interpretations to some claim elements; and under a BRI recited elements can be performed in human minds.
Applicant argues (page 4, para. 9) that “a human mind could not practically train a second machine learning model ‘to model environment-variable relationships’". In response, Applicant’s argument is not persuasive. Training a machine learning model using training data is interpreted as a process of fine-tuning many parameters according to some algorithms. Therefore this argued step is drawn to an abstract idea of mathematical concepts.
Applicant argues (page 4, para 10) that an element like cross-breeding a plant cannot be practiced in the human mind. In response, Applicant’s argument is not persuasive. We agree that cross-breeding a plant cannot be performed in the human mind. However, Applicant cannot use one obvious element (here we identify it as an additional element for “cross-breeding…”) to deny Step 2A/Prong in the 35 USC 101 analysis. As discussed in the beginning of this response.
Applicant argues (pages 4-5, para. 11) that the Invention is not directed to a law of nature. In response, Applicant’s argument is not responsive. MPEP §2106.04(b).I listed the following court identified concepts and products as examples of laws of nature or natural phenomena:
iii. a correlation between variations in non-coding regions of DNA and allele presence in coding regions of DNA, Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1375, 118 USPQ2d 1541, 1545 (Fed. Cir. 2016); [AltContent: rect]
iv. a correlation that is the consequence of how a certain compound is metabolized by the body, Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012); [AltContent: rect]
v. a correlation between the presence of myeloperoxidase in a bodily sample (such as blood or plasma) and cardiovascular disease risk, Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1361, 123 USPQ2d 1081, 1087 (Fed. Cir. 2017); [AltContent: rect]
xi. the natural relationship between a patient’s CYP2D6 metabolizer genotype and the risk that the patient will suffer QTc prolongation after administration of a medication called iloperidone, Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117, 1135-36, 126 USPQ2d 1266, 1281 (Fed. Cir. 2018). [AltContent: rect]
The recited Genome variables x Environmental parameters relationship is similar to above examples. Hence, the claims do recite law of nature.
Applicant argues (pages 5-6, paras 12-14) that instant invention improves plant breeding technology. In response, Applicant’s argument is not persuasive. Claim 1 does end up at “cross-breeding the selected plant with other plants to achieve a target plant associated with the target values for the genomic variables of interest”, which is an additional element. However, this is similar like "apply it" (or an equivalent) along with the judicial exception, as discussed in MPEP §2106.05(f); How the target values are used to select an organism for breeding (over a threshold? Or the top ranked organism?) is not recited. In case cross-breeding the selected organism with other organisms is unsuccessful, the technology rooted in the abstract idea of calculations and modeling will not be captured and reflected in an additional element, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a); and the additional element
cannot guarantee to effect a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c).
In plain language, instant claims probably improve the data modeling and cross-breeding design, or say there is an improvement in abstract ideas, but this improvement is not completely realized in a practice that is away from the data.
Therefore, the 35 USC 101 rejection will be maintained.
Status of Claims
Claims 10-14, and 16 are cancelled.
Claims 1-9, 15 and 17-20 are pending and are examined on the merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Priority of US application 63/598,674 filed 11/14/2023 is acknowledged.
Withdrawn Rejections/Objections
The rejection to claims 1-9, 15 and 17-20 under 35 U.S.C. 112(b) in the Office action mailed 9/10/2025 is withdrawn in view of claim amendments filed 12 January 2026.
The rejection to claims 1-4, 7-9, 15 and 18-20 under 35 USC 103 in the Office action mailed 9/10/2025 is withdrawn in view of claim amendments filed 12 January 2026.
The objection to claim 20 in the Office action mailed 9/10/2025 is withdrawn in view of claim amendments filed 12 January 2026.
Regarding the 35 USC 103
Claims are free of art because claim 1 recite the following non-obvious combination:
using the first machine learning model, determining an association metric for each genomic variable in the set of genomic variables;
identifying causal genomic variables of interest in the set of genomic variables based on the association metrics to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables;
training a second machine learning model using training data to model environment-variable relationships, wherein the training data comprises: for each of a set of training plants organisms, training values for the causal genomic variables of interest and training values for a second set of environmental parameters;
using the second machine learning model, predicting target values for the causal genomic variables of interest based on target values for the second set of environmental parameters;
Conceptually, these steps equate to hand the environment parameters as two parts. The first part is used to facilitate identification of causal genomic variables and genomic variables that adapt to environment; the second part is combined with a reduced genomic variables to train a second machine learning model to predict target value.
These are non-obvious combination. The first model prepares neat and more relevant data for the second model. The second model can be expected to run more efficiently. Close art does not teach these combination in cross-breeding design. In this regard, the Remarks filed 1/12/2026 at pages 17-18 support the withdrawal of the art rejection.
Therefore, claims are free of art.
Claim Rejections - 35 USC § 101
This rejection is maintained from the previous Office action. Modifications are necessitated by claim amendments.
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 1-9, 15 and 17-20 are rejected under 35 USC 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Process, Machine, Manufacture or Composition
Claim 1-9, 15, 17-20 are directed to a 101 process, here a "method," with process steps.
Step 2A Prong One: Identification of Judicial Exceptions
The claim(s) recite(s)
Determining a first machine learning model defining a relationship between a set of genomic variables and a first set of environmental parameters;
This step recites a decision-making activity, which equates to an abstract idea of a mental process.
Using the first machine learning model, determining an association metric for each genomic variable in the set of genomic variables;
This step recites a decision-making activity, which equates to an abstract idea of a mental process.
Identifying genomic variables of interest in the set of genomic variables based on the association metrics to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables;
This step recites a decision-making activity, which equates to an abstract idea of a mental process. Also, this step correlates a set of genomic variables with a first set of environmental parameters, which equates to a law of nature.
Training a second machine learning model using training data to model environment-variable relationship, wherein the training data comprises: for each of a set of training plants, training values for the genomic variables of interest and training values for a second set of environmental parameters;
Training a machine learning model using training data is interpreted as a process of fine-tuning many parameters according to some algorithms. Therefore this step equates to an abstract idea of mathematical concepts.
Selecting a plant for breeding based the target values for the genomic variables of interest.
This step recites a decision-making activity following data observations, which equates to an abstract idea of a mental process. Also, this step implicitly correlates a set of training organisms with the causal genomic variables and a second set environmental parameters, which equates to a law of nature.
Dependent claims 2--9, 15, 17-19 further recite limitations characterizing the data input and output and analysis by processes that read on mathematics or mental steps. The dependent claims are therefore drawn to further judicial exception steps.
Step 2A Prong Two: Consideration of Practical Application
Claim 1 ends up at “cross-breeding the selected plant with other plants to achieve a target plant associated with the target values for the genomic variables of interest”, which is an additional element. However, this is similar like "apply it" (or an equivalent) along with the judicial exception, as discussed in MPEP §2106.05(f); How the target values are used to select an organism for breeding (over a threshold? Or the top ranked organism?) is not recited. In case cross-breeding the selected organism with other organisms is unsuccessful, the technology rooted in the abstract idea of calculations and modeling will not be captured and reflected in an additional element, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a); and the additional element
cannot guarantee to effect a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c).
This judicial exception is not integrated into a practical application because the claims do not meet any of the following criteria:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
an additional element implements a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
an additional element effects a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
an additional element applies or uses 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).
Additionally, the courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting a phrase such as "apply it" (or an equivalent) along with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using 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 a judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h).
Step 2B: Consideration of Additional Elements and Significantly More
The claimed method also recites "additional elements" that are not limitations drawn to an abstract idea. The recited additional elements are drawn to:
using the second machine learning model, predicting target values for the genomic variables of interest based on target values for the second set of environmental parameters (claim 1);
cross-breeding the selected plant with other plants to achieve a target plant associated with the target values for the genomic variables of interest (claim 1);
wherein the data is received from a set of sensors (claim 18); and
wherein the set of sensors comprises image sensors, wherein the data comprises spectral data (claim 19).
Above additional elements are about 1): the model input/output data; and 2): experiment of cross-breading; 3) data-acquiring. The group 1) and 3) additional elements are insignificant extra-solution activities because the data acquiring/inputting /outputting are all necessary for data analysis (MPEP §2106.05(g)). Group 2) additional element is routine and conventional in the breeding industry. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it" (MPEP §2106.05(f)).
Other additional elements are drawn to a data structure (claims 3 and 15), Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea recited in the instantly presented claims into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Applicant’s Arguments
In the Remarks filed 1/12/2026, Applicant argues (page 6, last para through page 8, last para) that the claim 1 is not detected to a mathematical relationship.
In response, Applicant’s argument is not persuasive. The simple interpretation of MPEP 2106.04(a)(2) examples is not appropriate. In claim examination broadest reasonable interpretation (BRI) is applied to interpretate claims. For example, claim 1 recitation “training a second machine learning model using training data to model environment-variable relationship, wherein the training data comprises: for each of a set of training plants, training values for the genomic variables of interest and training values for a second set of environmental parameters” is interpreted as a process of fine-tuning many parameters according to some algorithms. Because to a skilled artisan, training a machine learning model using training data is a process to fine-tune many parameters according to some algorithms, until a satisfying model is achieved. Therefore this step (claim 1 step 4) equates to an abstract idea of mathematical concepts.
The comparison of Example 47 claim 2 (page 8, 2nd para through page 8 end) to instant claim 1 is not appropriate. The limitation (c) in Example 47 claim 2 is similar to the claim 1 recitation “training a second machine learning model using training data to model environment-variable relationship, wherein the training data comprises: for each of a set of training plants, training values for the genomic variables of interest and training values for a second set of environmental parameters”. Although the claim 1 recitation does not specify the machine learning algorithm, under a BRI, the second machine learning model can be ANN, or a linear regression model. Although “algorithm” is not explicitly mentioned in this claim 1 recitation example, algorithm is a necessary part of machine learning model training.
Hence, like Example 47 claim 2, instant claim 1 does recite abstract idea in the grouping of mathematical concepts.
In the Remarks, Applicant argues (page 9, 1st para through last para) that claim 1 is not directed to mathematical formulas or equations.
In response, Applicant’s argument is not persuasive. It is true that claim 1 does not recite any mathematical formulas or equations explicitly. However, claim 1 does recite training a second machine learning model using training data to model environment-variable relationship, wherein the training data comprises: for each of a set of training plants, training values for the genomic variables of interest and training values for a second set of environmental parameters;
Training a machine learning model using training data is interpreted as a process of fine-tuning many parameters according to some algorithms. Therefore claim 1 does recite an abstract idea of mathematical concepts.
The comparison of Example 48 claim 1 (page 9, lower half) to instant claim 1 is not appropriate. The limitation (b) and (c) in Example 48 claim 1 are equivalent to the claim 1 recitation “training a second machine learning model using training data to model environment-variable relationship, wherein the training data comprises: for each of a set of training plants, training values for the genomic variables of interest and training values for a second set of environmental parameters”. Although the claim 1 recitation does not specify the machine learning algorithm, under a BRI, the second machine learning model can be ANN, or a linear regression model. Although “algorithm” is not explicitly mentioned in this claim 1 recitation example, algorithms are necessary parts of machine learning model training, which reads on mathematical functions.
In the Remarks, Applicant argues (page 10, 1st para through 2nd para) that claim 1 is not directed to mathematical calculations. Applicant listed six examples form MPEP 2106.04(a)(2). Applicant then argue that because instant claim 1 does not recite anything similar to the six examples (of court recognized examples of mathematical calculations), claim 1 does not recite any mathematical operations.
In response, Applicant’s argument is not persuasive. Mathematical concepts can be presented in many ways, one cannot say simply because claim 1 does not like the six examples of mathematical calculations then deny that claim 1 recites mathematical concepts. As discussed above, claim 1 recites training a second machine learning model using training data to model environment-variable relationship. This recitation, under a BRI, fits the definition for mathematical operations. Because “using training data to model environment-variable relationship” reads on a mathematical relationship.
In the Remarks, Applicant argues (page 10, last para through page 12, 2nd para) that claim 1 is not detected to a mental process, because “it contains limitations that cannot practically be performed in the human mind”.
In response, Applicant’s argument is not persuasive. To use obvious elements like:
Training the second machine learning model "to model environment-variable relationships";
Identifying genomic variables of interest based on association metrics "to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables"; and
"Cross-breeding" a plant selected for breeding with "other plants to achieve a target plant associated with the target values for the genomic variables of interest"
to deny that claim 1 recites mental processes is a specious reasoning. Training the second machine learning model "to model environment-variable relationships" is classified into mathematical concept; Identifying genomic variables of interest based on association metrics "to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables" do read on a decision-making activity for identifying some genomic variables based on data observation; "Cross-breeding" a plant selected for breeding with "other plants to achieve a target plant associated with the target values for the genomic variables of interest" reads on an additional element. One cannot pick up an example of math and an example of an additional element to deny the existence of mental processes recited in claims.
As discussed above, there are more categories/examples drawn to mental processes. Elements recited in claim 1 like:
Determining a first machine learning model defining a relationship between a set of genomic variables and a first set of environmental parameters; and
Identifying genomic variables of interest in the set of genomic variables based on the association metrics to reduce dimensionality of environment-variable search space and to identify environmentally adaptive variables;
are drawn to a decision-making activities. Under a BRI, the first one reads on a decision to identify a appropriate machine learning model for modeling the relationship between a set of genomic variables and a first set of environmental parameters; the second one reads on a judgement (Identifying genomic variables of interest) based on data observation (the association metrics). These two elements both equate to abstract ideas of mental processes.
The claim 1 recitation “selecting a plant for breeding based the target values for the genomic variables of interest” can easily be handed in human mind. This step recites a decision-making activity following data observations, which equates to an abstract idea of a mental process.
In summary, claim 1 does recite mental processes.
In the Remarks, Applicant argues (page 12, last para through page 13, 2nd para) that claim 1 is not detected to a law of nature, because “claim 1 thus goes far beyond merely observing or detecting a natural relationship” (page 13, 2nd para).
In response, Applicant’s argument is not persuasive. Claim 1 steps on genomic variables X environment-variable associations and their resulted “target values”, which is about the law of nature. The claims terms are broad, however, under a BRI, “genomic variables”, “environment parameters” and “target values” encompasses nature and nature law.
MPEP §2106.04(b).I listed the following court identified concepts and products as examples of laws of nature or natural phenomena:
iii. a correlation between variations in non-coding regions of DNA and allele presence in coding regions of DNA, Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1375, 118 USPQ2d 1541, 1545 (Fed. Cir. 2016); [AltContent: rect]
iv. a correlation that is the consequence of how a certain compound is metabolized by the body, Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012); [AltContent: rect]
v. a correlation between the presence of myeloperoxidase in a bodily sample (such as blood or plasma) and cardiovascular disease risk, Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1361, 123 USPQ2d 1081, 1087 (Fed. Cir. 2017); [AltContent: rect]
xi. the natural relationship between a patient’s CYP2D6 metabolizer genotype and the risk that the patient will suffer QTc prolongation after administration of a medication called iloperidone, Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117, 1135-36, 126 USPQ2d 1266, 1281 (Fed. Cir. 2018). [AltContent: rect]
The recited Genome variables x Environmental parameters relationship is similar to above examples. Hence, the claims do recite law of nature.
In the Remarks, Applicant argues (page 13, 3rd para through page 16, penultimate para) that claims when considered as a whole, “covers a particular solution to a problem or a particular way to achieve a desired outcome”. Applicant’s arguments refers to Step 2A/Prong two in the 35 USC 101 analysis, relating to whether claims are integrated into a practical application or not.
In response, Applicant’s argument is not persuasive. Argued technical solutions such as the machine learning approach, are directed to judicial exceptions. The identified additional element “cross-breeding the selected plant with other plants to achieve a target plant associated with the target values for the genomic variables of interest”, is similar like "apply it" (or an equivalent) along with the judicial exception, as discussed in MPEP §2106.05(f). Truly the “cross-breading” tries to apply the judicial exceptions. “To achieve a target plant associated with the target values for the genomic variables of interest” is an intended result. However, the additional element (or the combination of additional elements) which capture and reflect the judicial exceptions is not identified.
Applicant further argues (page 14, 2nd para) that instant invention improves plant breeding technology because it recites a specific ordered combination of steps and specific such that it goes "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" (page 16, 2nd para).
In response, Applicant’s argument is not persuasive. Claim 1 does end up at “cross-breeding the selected plant with other plants to achieve a target plant associated with the target values for the genomic variables of interest”, which is an additional element. However, this is similar like "apply it" (or an equivalent) along with the judicial exception, as discussed in MPEP §2106.05(f); How the target values are used to select an organism for breeding (over a threshold? Or the top ranked organism?) is not recited. In case cross-breeding the selected organism with other organisms is unsuccessful, the technology rooted in the abstract idea of calculations and modeling will not be captured and reflected in an additional element, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a); and the additional element
cannot guarantee to effect a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c).
In plain language, instant claims probably improve the data modeling and cross-breeding design, or say there is an improvement in abstract ideas, but this improvement is not completely realized in a practice that is away from the data.
Monopolize the exception or not, is not a concern of the 35 USC 101 analysis.
Hence the claims are not integrated into a practical application at Step 2A/Prong two.
Hence, the 101 rejection is maintained.
Double Patenting
This rejection is recycled from the previous Office action posted 9/10/2025.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US11810644B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every step in the instant claim 1 is anticipated by the reference claim 1.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of cop ending Application No. 18/119,048 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every step in the instant claim 1 is anticipated by the reference claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 19-20 of coending Application No. 18/884,930 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every step in the instant claim 1 is anticipated by the reference claims 1-2 and 19-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments
In the Remarks filed 1/12/2026, Applicant argue (page 18, last four paras) that “To expedite allowance, Applicant has filed an electronic terminal disclaimer against U.S. Patent No. 11,810,644 B2, cop ending Application No. 18/119,048, and coending Application No. 18/884,930.”
In response, such a terminal disclaimer has not been seen. The double patenting rejections have to be maintained.
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 GUOZHEN LIU whose telephone number is (571)272-0224. The examiner can normally be reached Monday-Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Larry D Riggs can be reached at (571) 270-3062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GL/
Patent Examiner
Art Unit 1686
/Anna Skibinsky/
Primary Examiner, AU 1635
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