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 .
Working with the Examiner
Please note that, at the end of this Office Action, the prior art section says “once the above rejections are resolved, claim 4 appears allowable.” If Applicant is interested in pursuing claim 4, the examiner will grant an interview (potentially more than one) to resolve the other issues because, if Applicant is focused on allowable subject matter, the other issues are more easily resolved.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Note the discussion of prior art in the background section, particularly the discussion of French patents on p. 2.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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).
For the purpose of understanding the invention, the examiner used the drawings in the Foreign priority document.
Claim Objections
While the legal analysis below focuses on dependency, the underlying issue is whether Applicant needs to redraft claims such that they are correctly charged for additional independent claims.
Claim 13 references claim 7, but does not properly depend from claim 7 because the instructions can exist without performance of any of the method steps. Here, claim 7 is a method but claim 13 is a computer program, and the computer program claim can be met without necessarily practicing the method. MPEP 608.01(n)(III) addresses the “test for proper dependency.”
MPEP 607(III) states:
Any claim which is in dependent form but which is so worded that it, in fact, is not a proper dependent claim, as for example it does not include every limitation of the claim on which it depends, will be required to be canceled as not being a proper dependent claim; and cancellation of any further claim depending on such a dependent claim will be similarly required. The applicant may thereupon amend the claims to place them in proper dependent form, or may redraft them as independent claims, upon payment of any necessary additional fee.
Claim 13 is such a claim because it is directed to a computer program rather than a method as in referenced claim 7. MPEP 608.01(n)(III). While, in the interest of compact prosecution, claim 13 has been examined, claim 13 is required to be cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 (all claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP 2173.05(g) explains that unlimited functional claiming should be rejected under 112(a) because “without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim.”
Claims 1 and 7 recite “calculating a metric value for each pixel in the list of selected sites,” but this is unlimited functional claiming due to the wide variety of different possible metrics.
Dependent claims are likewise rejected. Claims 13 and 14 are rejected as per claim 7.
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 1-14 (all claims) 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.
Claim 1 recites various nouns being “arranged” to do various tasks, but the scope of this is unclear. See, e.g., MPEP 2111.01(I) that a “microprocessor for generating” is merely capable of generating, see also In re Blue Buffalo (Fed. Cir. January 14, 2026, non-precedential, slip opinion retrieved from https://www.cafc.uscourts.gov/opinions-orders/24-1611.OPINION.1-14-2026_2632686.pdf. It appears that the intent is to have processing hardware coupled with memory storing instructions to execute the various steps.
Claim 1 recites an “initiator,” but this is new terminology. MPEP 2173.05(a). Clarifying how this differs from a processor with programming is expected to be helpful in overcoming the rejection.
Claims 1 and 7 recite “focus image,” but this is new terminology. MPEP 2173.05(a). Additionally, it is unclear what “focus” refers to given that this is for lensless imaging. The examiner notes that the claim’s recitation of “each pixel is associated, on the one hand, with a z-stack image and, on the other hand, with an intensity of this pixel in this z- stack image” reads on a z stack image.
Claims 1 and 7 recite “parsimony score,” but this is new terminology. MPEP 2173.05(a). One option to overcome this rejection is to recite a particular function that relates the intensities of a pixel to its neighbors and how these are aggregated to form a parsimony score. Another option is to submit timely evidence (such as in an IDS) that shows that “parsimony score” is a term of art in this field.
Claims 1 and 7 recite “neighbouring” and “neighbourhood,” but the meaning of these terms is unclear because claim 6 states “restricting the pixel neighbourhood to pixels whose associated z-stack image in the focus image [[(Foclmg[])]] is identical to that associated with the given pixel.” Specifically, the plain meaning of neighbors or neighborhoods are defiend by proximity, but claim 6 shows that neighbors or neighborhoods might be defined differently.
Claim 1 recites “selector,” but this is new terminology. MPEP 2173.05(a). Clarifying how this differs from a processor with programming is expected to be helpful in overcoming the rejection.
Claims 1 and 7 recite “if this is the case,” but the antecedent basis of “this” is unclear because the clause recite two different conditions, but it is not clear which of these two the “this” refers to.
Claims 1 and 7 recite “selected sites,” but the claim does not specify either the selection (what is selected, how it is selected) or what the sites are (e.g., are these pixels or memory locations).
Claim 1 recites “a computer,” but it is unclear if this computer is intended to be part of the claimed “device for detecting particles” because the device has recitations for computer hardware (such as memory).
Claims 1 and 7 recite “to allow producing an image of the metric values allowing distinguishing the particles associated with each pixel in the list of selected sites from one another.” However, it is unclear how to determine whether or not this standard is met. For example, if the metric value is an average intensity of a 3x3 pixel square, does this allow the claimed distinguishing?
Claim 2 recites “implement a metric being chosen from a metric based on modelling of the intensities of a neighbourhood … .” The plain meaning of this is unclear. How does one know if a metric is “based on modelling of the intensities of a neighbourhood” (e.g., is average such a metric)?
Claim 8 recites corresponding language and is likewise rejected.
Claims 2 and 8 recite “by a Gaussian,” but it is grammatically unclear which action is by the Gaussian.
Claims 2 and 8 recite “by combining one or more of covariance, height, and eccentricity factor of this Gaussian,” but it is unclear which Gaussian is meant. While “this Gaussian” has antecedent basis in “by a Gaussian,” the original recitation of a Gaussian does not identify which Gaussian is at issue, meaning that it is not clear which covariance, height, and eccentricity factor are at issue.
Claims 2 and 8 recite “a metric based on a mean,” but it is unclear how to determine whether or not a given metric is based on a mean.
Claims 2 and 8 recite “z-gradients of the intensity of the pixels,” but it is unclear if this refers to the gradient of the intensities or a gradient in the z-direction (or perhaps the intensity, but only along the z-direction?).
Claims 2 and 8 recite “which gradient is evaluated,” but the antecedent basis meant by “which” is unclear. MPEP 2173.05(e).
Claims 3, 4, and 9 recite “pq mean,” but this is new terminology. MPEP 2173.05(a). The limitations referring to the pq mean (e.g., claim 4, “p equal to 1/2”) are similarly rejected. Page 14 of the specification states that the pq mean has good theoretical properties, suggesting that this is a term of art supported by an academic literature. Timely submitting evidence of this (such as on an IDS) may overcome this rejection.
Claim 4 recites “arranged to use a pq mean,” but the antecedent basis is unclear because parent claim 3 previously recited that the initiator is using a pq mean. Note that corresponding claim 10 recites “the pq mean,” and is not rejected.
Claim 5 recites “to browse the list of selected sites,” but it is not clear if “browsing” is more specific than any accessing.
Claim 11 recites corresponding language and is likewise rejected.
Claim 6 recites “a filter arranged to recalculate,” but this is unclear because the plain meaning of a filter is not something that calculates.
Dependent claims are likewise rejected. Claims 13 and 14 are rejected as per claim 7.
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 13 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 13’s “computer program” is a program per se. Claim 14 does not overcome this issue because the air in which a radio signal travels is within the broadest reasonable interpretation of “data storage medium.” In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007).
Reciting “non-transitory” is expected to overcome this rejection.
Prior Art
Prior art is not applied. MPEP 2173.06 explains “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.” Here, the examiner believes that the use of the focus image and the parsimony score are at the heart of this invention. However, a review of the specification has not clarified what the intended meaning is. See, e.g., specification, p. 5, where the parsimony score is based on a pq mean, but does not explain what a pq mean is.
Given the results of the Written Opinion, the specificity of the discussion of the prior art, the examiner guesses that, once the above rejections are resolved, claim 4 appears allowable.
The examiner believes that the most relevant art is:
Roy M, Seo D, Oh S, Chae Y, Nam MH, Seo S. Automated micro-object detection for mobile diagnostics using lens-free imaging technology. Diagnostics. 2016 May 5;6(2):17. (“Roy”)
Roy’s abstract states that their lens free imaging technology was used to “evaluated the counting results for polystyrene microbeads, red blood cells, HepG2, HeLa, and MCF7 cells lines.” This sounds very similar to the specification, p. 3’s statement that the invention improves counting of PLTs for lensless imaging of whole blood.
Further, Roy, graphical abstract, bottom right, shows intensity profiles along the z-direction from a z-stack image.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the discussion of Roy, above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached at 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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/DAVID ORANGE/Primary Examiner, Art Unit 2663
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