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 .
This is in response to Applicant’s communication filed on 12/03/24, wherein:
Claims 1 is currently pending.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. (US 11,850,729). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 1of the copending and claims 1 and 12 of the US Patent (US 11,850,729) show e.g. “A system, comprising: a user interface configured to receive a set of constraints; and a processing system configured to: determine an initial computational representation of the experiment based on the constraints; determine an optimized computational representation of the experiment based on the initial computational representation; and determine instructions for a liquid handling robot based on the optimized computational representation, wherein the liquid handling robot is configured to execute the experiment based on the instructions”
Although claims 1 and 12 of US Patent No. (US 11,850,729) have additional features. However, it has been held that deleting elements when the function of element is not desired is obvious. See MPEP 2144.04 Section II. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify or to omit the additional elements of claims 1 and 12 of the US Patent No. US 11,850,729 to arrive at the claim 1 of the copending because the person would have realized that the remaining element would perform the same functions as before. “Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before.” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
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 is rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. With respect to step 2A, prong 1, The claim(s) 1 as rewritten recite “determine an initial computational representation of the experiment based on the constraints; determine an optimized computational representation of the experiment based on the initial computational representation; and determine instructions for a liquid handling robot based on the optimized computational representation, wherein the liquid handling robot is configured to execute the experiment based on the instructions” are process, under its broadest reasonable interpretation, covers performance of the limitation in the mind (e.g. including observation, evaluation, judgement and opinion). For example, as for the step “determine an initial computational representation of the experiment based on the constraints”, the context of this limitation encompass that that a person can mentally plan what chemical need to be mixed for the experiment, or how long or what temperature that are needed. The person can mentally or using pen and paper to map out or lay out what steps should be done for the experiment. As for the step “determine an optimized computational representation of the experiment based on the initial computational representation”, this encompass a person can mentally or using pen and paper to analyze or generate which is the best way to process the experiment based on the map layout which describes the steps to be done for an experiment. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under the 2A prong 1 analysist.
With respect to the 2A prong 2 analysist, this judicial exception is not integrated into a practical application. In particular, the claim using a processor to perform the abstract idea (determine in initial….; determine an optimize…) is recited high level of generality (i.e. a generic processor) such that it amounts no more than mere instructions to apply the exception using a generic component. Further, receive a set of constraints, and determining/sending instruction are not considered as significantly more than the abstract idea because they are merely data gathering. Noted that the step of “wherein the robot is configured to execute the experiment based on the instructions” is considered as general linking to the technological environment and thus is not a meaningful limitation. Noted that the claim merely recites a system comprising (1) a user interface, and (2) a processing system. In the other words, the liquid handling robot is not part of the system as claimed.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
With respect to the 2B analysis, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discuss above with respect to integration of the abstract idea into a practical application, the additional element of using generic computer component to perform the abstract idea amounts no more than mere instructions to apply the excepting using a generic computer component. Further, a robot as recited is merely general link to the technical environment and there is not positively recite step of controlling the robot to perform the experiment based on the instructions. In addition, receive a set of constraints, and determining/sending instruction are not considered as significantly more than the abstract idea because they are merely data gathering and is considered as well understood routine conventional as it has been held by the court. Particularly, receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; (see MPEP 2106.05(d)). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WEBSTER ET AL (US 2018/0217172) from Applicant’s IDS filed on 2/11/25. Herein after WEBSTER.
As for independent claim 1, WEBSTER discloses a system, comprising: a user interface configured to receive a set of constraints {see at least pars. 0026, 0027, 0028, 0040, 0043-0044, figure 12 (step 1202), e.g. receiving selected map templates, such as a map of a microplate for a particular assay (e.g. location of each well in the microplate); par. 0027 discloses the automation module may prompt a user to select and input at least one template for running the automation, where each template, for example, may correspond to a respective endotoxin assay; pars. 0043-0045 discloses the template list 402, the lab technician may be able to preview the selected microplate templates. The preview is graphically presented in a form of a grid with each cell of the grid corresponding to a respective well of a microplate};
a processing system configured to:
determining an initial graphical computational representation of the experiment based on the constraints;
{see at least figure 12 (step 1204), pars. 0028, 0040, e.g. Once the selected template(s) are input and confirmed by the user, the automation module may prompt the user to set up a robot deck of the robotic apparatus to conduct the one or more assays (testing). The robot deck layout map and procedure may be dynamically generated based on the selected template(s). For instance, it may instruct the user where to place specific laboratory equipment on the deck and the module may also calculate associated assay measurements for each of the laboratory equipment, such as requisite volumes and other measurements for the samples, materials, etc. associated with the assay for the convenience of the user;
At least figures 5-10, pars. 0040, 0048-0049 discloses e.g. the computing device may dynamically generate a deck layout of where to place the different components to be assembled and how many of them are needed for the assembly; par. 0056 discloses the automation module builds the deck layout for the user before running the automation and automatically determines and provides information related to the laboratory equipment to be used for the deck layout, such as the name of the equipment, associated descriptions, as well as positioning and measurement specification information};
determine an optimized computational representation of the experiment based on the initial computation representation
{see at least figure 12 (step 1208), par. 0063 discloses the automation module dynamically generates a series of robotic commands in order to perform the automation based on the selected map template;
Figure 4, pars. 0010, 0044-0045 discloses the first map template has a grid with a plurality of cells (nodes with border (edge)), each of the cells corresponding to a location of a well on the first microplate, and each of the border (edge) is associated with an experiment operation (e.gl. endotoxin assay);
pars. 0029-0030 e.g. The module may then dynamically generate or build the series of robotic commands for the robotic apparatus to execute the automation based on the above-described template(s) selected by the user. The robotic commands are passed to the robotic apparatus to perform the assay(s);
0057, 0060 e.g. the automation module may dynamically generate the robotic commands to fully automate numerous steps of the assay(s) in accordance with one or more aspects of the disclosure. By way of example, the automation steps may include: (1) sample dilutions (e.g., applying all required sample dilutions), (2) placing samples on microplate(s), including positive product control (PPC) samples, (3) placing water blanks on microplate(s),…… (11) moving the microplate(s) to the microplate reader for processing, and (12) reading the microplate(s) and processing the results of the automation run following the placing of the microplate(s) in the microplate reader}; and
determining instructions for a liquid handling robot based on the optimized graphical computational representation, wherein the liquid handling robot is configured to execute the experiment based on the instructions
{see at least figure 12, step (1210), par. 0063 discloses the robotic commands are passed to the robotic apparatus. And at block 1212, the results of the automation, such as the endotoxin assays in this example, are processed;
pars. 0007 send the generated plurality of robotic commands to the robot for performing the dynamic automation; par. 0041 e.g. the robotic apparatus 202 may be used in a laboratory for laboratory related automations, such as assays, tests, experiments……a robotic command that is sent from the laptop 204 may instruct the robot 206 to transfer or measure out a quantity of liquid from one test tube to another test tube using the pipetting tool attached to the robot 206}.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wolf et al (US 2023/0278234): Grip detection system for liquid handling robot;
Friesen et al (US 2023/0022389): Method of transferring liquid from reagent reservoir using a robotic handler;
Washington et al (US 2022/0043561): Predictive instruction text with virtual lab representation highlighting;
Glauser et al (US 2011/0160909): directing pipetting in computer controlled liquid handling workstations;
Wolter et al (US 2019/0293672): optimizing liquid classes for a laboratory automation device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kira Nguyen whose telephone number is (571)270-1614. The examiner can normally be reached on Monday to Friday 9:00-5:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoi Tran can be reached on 571-272-6919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRA NGUYEN/Primary Examiner, Art Unit 3656