Notice of Pre-AIA or AIA Status
The present application 19/111,535, filed on 3/13/2025 (or after March 16, 2013), is being examined under the first inventor to file provisions of the AIA (First Inventor to File).
In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application is a 371 of PCT/JP2023/031354 filed 08/29/2023
DETAILED ACTION
Claims 1-7 are pending in this application.
Examiner acknowledges applicant’s preliminary amendment filed on 3/13/2025
Drawings
The Drawings filed on 8/4/2025 are acceptable for examination purpose.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/13/2025, 6/24/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner
Priority
Acknowledgment is made of applicant’s claim for JAPAN foreign priority under
35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. # JAPAN 2022-149874 filed on 09/21/2022
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 1-2, 6-7 is/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.
As to claim 1,6-7, it is unclear what is meant by “acquire a table including structured data including the extracted data points and a link to unstructured data”.
Appropriate correction required.
As to claim 2, it is unclear what is meant by “identifying the structured data to be drawn as the graph”, failing to particularly point out claimed limitation
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application.
Claim 1-7 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register (84 FR 50) on January 7, 2019 hereinafter 2019 PEG
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is noted that the method of claim 1,6-7, directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. In accordance with Step 2A prong one of the 2019 PEG, the limitations reciting the abstract idea are highlighted, and the limitations directed to additional elements are highlighted, as set forth in exemplary claim 1
Claim 1,6-7.(Currently Amended) “An information search device comprising:
a processor; and
a memory storing program instructions that cause the processor to
“draw structured data as a graph;
“extract one or more data points in the drawn graph; and
“acquire a table including structured data including the extracted data points and a link to unstructured data”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind describe concepts performed in the human mind and/or paper pencil, (including an observation, evaluation, judgement, opinion) but for the recitation of generic computer components. For example draw data graph, extract, data points, acquire table and like, this limitation encompasses the user thinking of collection of data
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or paper pencil but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG. Accordingly, the claim recites an abstract idea.
With respect to Step 2A prong two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to method steps, however, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular data structure of draw data graph, extract, data points, acquire table, to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Furthermore, although these elements have been fully considered, they are directed to the use of generic computing elements (fig 2, para 0015, 0023-0029, of the instant specification make it clear that the disclosed functionality is implemented on well-known computing systems and general purpose computing devices) to perform the abstract idea, which is not sufficient to amount to a practical application (as noted in the 2019 PEG) and is amount to simply saying "apply it" using a general purpose computer, which merely serves to tie the abstract idea to a particular technological environment computer based operating environment) by using the computer as a tool to perform the abstract idea.
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional method limitations are directed to a generic computer, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. In addition fig 2, para 0015, 0023-0029 of the instant specification describe generic off-the-shelf computer-based elements for implementing the claimed invention which does not amount to significantly more than the abstract idea and is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. Further, See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to 'implement[ing] the abstract idea of intermediated settlement on a generic computer', it cannot save O/P's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). See also, Affinity Labs of Texas LLC v. DirecTV LLC, 838 F.3d 1253, 1257-1258 (Fed. Cir. 2016) (mere recitation of a GUI does not make a claim patent-eligible); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("the interactive interface limitation is a generic computer element".)
The additional elements are broadly applied to the abstract idea at a high level of generality ("similar to how the recitation of the computer in the claims in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer,") as explained in MPEP § 2106.05(f)) and they operate in a well-understood, routine, and conventional manner.
MPEP § 2106.05 (d)(II) sets forth the following:
The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g. at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec...; TLI Communications LLC v. AV Auto. LLC...; OIP Techs., Inc., v. Amazon.com, Inc... ; buySAFE, Inc. v. Google, Inc...;
Performing repetitive calculations, Flook ... ; Bancorp Services v. Sun Life...;
Electronic recordkeeping, Alice Corp...; Ultramercial... ;
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc...;
Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank...; and
A web browser's back and forward button functionality, Internet Patent Corp. v. Active Network, Inc.
Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
As to Claim 2, (currently amended), further elaborates “The information search device as claimed in claim 1, wherein the program instructions cause the processor to acquire a search expression for identifying the structured data to be drawn as the graph”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As to Claim 3, (currently amended), further elaborates “The information search device as claimed in claim 1, further comprising:
“a total data storage configured to store unstructured data; and
“a structured data storage configured to store the converted structured data,
wherein the program instructions cause the processor to extract all or part of the unstructured data from the total data storage,
wherein the program instructions cause the processor to convert the extracted unstructured data into structured data, and
wherein the program instructions cause the processor to draw the structured data stored in the structured data storage as a graph”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As to Claim 4, (currently amended), further elaborates “The information search device as claimed in claim 3, wherein an electronic experiment notebook is used as the total data storage”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As to Claim 5, (currently amended), further elaborates “The information search device as claimed in claim 3, wherein a data lake is used as the total data storage”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
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.
Claim(s) 1-4,6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshikawa et al., (hereafter Yosh), US Pub. No. 2021/0233605 published Jul, 2021
As to Claim 1,6-7.(Currently Amended) An information search device comprising: (Yosh: fig 1 – Yosh teaches electronic lab notebook configured to interactively search and display and process instructions that including user interface menu supports search data)
PNG
media_image1.png
180
224
media_image1.png
Greyscale
“a processor; (fig 19 system 1900, 0241 including processor) and
“a memory storing program instructions that cause the processor to” (Yosh: fig 19, system 1900,0241 including memory)
PNG
media_image2.png
173
230
media_image2.png
Greyscale
“draw structured data as a graph” (Yosh: fig 8, 0167, fig 12A-12D – Yosh teaches display visualization of data from the experiment on a panel for example experiment ID data displayed) ;
PNG
media_image3.png
201
189
media_image3.png
Greyscale
PNG
media_image4.png
238
222
media_image4.png
Greyscale
PNG
media_image5.png
177
194
media_image5.png
Greyscale
PNG
media_image6.png
175
186
media_image6.png
Greyscale
PNG
media_image7.png
172
216
media_image7.png
Greyscale
“extract one or more data points in the drawn graph” (Yosh: fig 1, 0034,0167, 0225 – Yosh teaches electronic lab notebook allows user to generate visualization, extract data points, inspect experimental process, and organize and extract data, further it is noted that Yosh teaches automatically chooses data extraction and visualization technique as shown in fig 8. It is noted that Yosh teaches for example flow cytometry data automatically chooses a “scatter plot” and scales available “data points” displayed on the data panel) ; and
PNG
media_image3.png
201
189
media_image3.png
Greyscale
“acquire a table including structured data including the extracted data points and a link to unstructured data” (Yosh: 0008,0049-0050,0065-0066 – Yosh teaches user interface supporting structured data input, text data, further the prior art of Yosh specifically teaches symbolic lab language or SLL is used in data manipulation and visualization functionalities including “data structure” objects defined, and supports “databases refers to “structured set of data” as detailed in 0049, and SLL allows tracking and querying laboratory samples. The prior art of Yosh teaches type of “sample selection” (fig 1-2, 0066), as “western Blot” Western blot data is considered unstructured data because it is originally captured as an image file (such as a TIFF, JPEG, or film exposure) showing visual protein bands rather than structured database, and the prior art of Yosh teaches displaying experimental results including data points involved in plots for example chromatographs or spectra etc., as detailed in 0050) and SLL allows large sets of data linked to all experiments regardless sample types and like as detailed in 0050)
As to Claim 2, (currently amended), Yosh disclosed “wherein the program instructions cause the processor to acquire a search expression for identifying the structured data to be drawn as the graph” (Yosh: fig 2,4-6B, - Yosh teaches user interface allows users to select experimental parameters including search data from the “commands”, identifying the structure data and selecting “plot data” and displaying respective graph.
PNG
media_image8.png
179
219
media_image8.png
Greyscale
PNG
media_image9.png
174
234
media_image9.png
Greyscale
PNG
media_image10.png
265
225
media_image10.png
Greyscale
PNG
media_image11.png
176
230
media_image11.png
Greyscale
As to Claim 3, (currently amended), Yosh disclosed
“a total data storage configured to store unstructured data” (Yosh: 0050 – both structured and unstructed data stored in the database including metadata identifying respective samples; experiments date, instrument details and like) and
“a structured data storage configured to store the converted structured data” (Yosh: 0049-0050),
“wherein the program instructions cause the processor to extract all or part of the unstructured data from the total data storage” (Yosh: 0057-0060),
“wherein the program instructions cause the processor to convert the extracted unstructured data into structured data” (Yosh: 0067-0071), and
“wherein the program instructions cause the processor to draw the structured data stored in the structured data storage as a graph” (Yosh: 12A-D, 0228-0230, fig 19),
PNG
media_image4.png
238
222
media_image4.png
Greyscale
PNG
media_image5.png
177
194
media_image5.png
Greyscale
PNG
media_image6.png
175
186
media_image6.png
Greyscale
PNG
media_image7.png
172
216
media_image7.png
Greyscale
As to Claim 4, (currently amended), Yosh disclosed “wherein an electronic experiment notebook is used as the total data storage” (Yosh: 0034, fig 1, element 103 – electronic lab notebook”).
PNG
media_image12.png
189
230
media_image12.png
Greyscale
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa et al., (hereadfter Yosh), US Pub. No. 2021/0233605 published Jul, 2021 in view of Peccoud, US Pub. No. 2021/0286604 published Sep,2021
As to Claim 5, (currently amended), Yosh disclosed “wherein a database is used as the total data storage.(Yosh: fig 19) It is however, noted that Yosh does not disclose “data lake is used as the total data storage”. On the other hand, Peccoud disclosed “data lake is used as the total data storage” (Peccoud: fig 7, 0136).
It would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention optimize laboratory processes of Peccoud into analysis of laboratory experiments of Yosh et al., because both Yosh, Peccoud specifically directed to laboratory processes and/or experiments, and both Yosh, Peccoud teaches electronic laboratory notebooks (ELN) (Yosh: fig 1-2, element 103; Peccoud: fig 1, 0037) and they both Yosh, Peccoud are from the same field of endeavor. Because both Yosh, Peccoud teaches laboratory processes and/or experiments, it would have been obvious to one skilled in the art to substitute and/or modify one method for the other particularly store laboratory data, analyze samples data stored in data lake because data lake is centralized storage that holds large amount of experimental data, sample data both structured and unstructured in a native format, further data lake allow to store relational data , further bringing advantages of store data not required to organize or structure the data before save into the data lake, particularly allows unified data model to aggregate laboratory project information in a centralized location , thus conserve memory and bandwidth (Peccoud: 0013), thus improves overall quality and reliability of the system.
Conclusion
The prior art made of record
a. US Pub. No. 2021/0233605 analysis of laboratory experiments
b. US Pub. No. 2021/0286604 optimize laboratory processes
Examiner's Note: Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
SEE MPEP 2141.02 [R-5] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). >See also MPEP §2123.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure
Authorization for Internet Communications
The examiner encourages Applicant to submit an authorization to communicate with the examiner via the Internet by making the following statement (from MPEP 502.03):
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please note that the above statement can only be submitted via Central Fax (not Examiner's Fax), Regular postal mail, or EFS Web using PTO/SB/439.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Srirama Channavajjala whose telephone number is 571-272-4108. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gorney, Boris, can be reached on (571) 270- 5626. The fax phone numbers for the organization where the application or proceeding is assigned is 571-273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)
/Srirama Channavajjala/Primary Examiner, Art Unit 2154
Prosecution Insights