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 .
Status of Claim(s)
Claims 1-20 have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11783919. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite a method of providing information from one or more files of a database having a table.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claim(s) 1 recite(s) a method, which is a statutory category (i.e. process). Claim 7 recites a system, which is a statutory category (i.e. machine). Claim 13 recites a non-transitory readable medium, which is a statutory category (i.e. manufacture). Accordingly, claims 1, 7, 13 are all within at least one of the four statutory categories.
Step 2A - Prong One:
Regarding Prong One of Step 2A (MPEP2106.04-.7), the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
The limitation of Independent claims 1, 7, 13 recites at least one abstract idea. Specifically, Claim 1 recites the steps of
Claim 1 is directed towards a method of providing information from one or more files of a database having a table with at least about 20M columns, the method comprising:
receiving a request for a plurality of markers for each individual of about 10,000 or more individuals, wherein the plurality of markers is at least about 10,000 markers;
retrieving metadata corresponding to a plurality of files, wherein each file stores a continuous set of markers for a batch of samples, and wherein the continuous set of markers is less than about 10,000 markers;
accessing the plurality of files based on the request and the metadata corresponding to the plurality of files; and
providing the plurality of markers for each of the about 10,000 or more individuals.
The limitations “receiving a request for a plurality of markers for each individual of about 10,000 or more individuals, wherein the plurality of markers is at least about 10,000 markers; retrieving metadata corresponding to a plurality of files, wherein each file stores a continuous set of markers for a batch of samples, and wherein the continuous set of markers is less than about 10,000 markers; accessing the plurality of files based on the request and the metadata corresponding to the plurality of files; and providing the plurality of markers for each of the about 10,000 or more individuals” because these limitations could be performed by the user, researcher to observe, to request, to retrieve a plurality of markers on a piece of paper, to access data files. Accordingly, the claim is directed toward at least one abstract idea
Furthermore, the abstract idea for claims 7 and 13 is identical as the abstract idea for claim 1, because the only difference between claim 1 and claim 7 is that claims 1 recites a method, whereas claim 74 recites a system, and whereas claim 13 recites a non-transitory medium.
Furthermore, the following depending claims further define the at least one abstract idea, and thus fail to make the abstract idea any less abstract.
For dependent claims 2-6, 8-12, 14-20 the recitation of a first/second samples, a batch of samples, thus merely define steps that were indicated as being part of the abstract idea, and thus part of mental process..
Step 2A - Prong Two:
Regarding Prong Two of Step 2A (MPEP2106.04-.07), it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted in MPEP2106.04-07, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted at least one abstract idea are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
Claim 1 is directed towards a method of providing information from one or more files of a database having a table with at least about 20M columns, the method comprising:
receiving a request for a plurality of markers for each individual of about 10,000 or more individuals, wherein the plurality of markers is at least about 10,000 markers;
retrieving metadata corresponding to a plurality of files, wherein each file stores a continuous set of markers for a batch of samples, and wherein the continuous set of markers is less than about 10,000 markers (merely invokes use of computer and computer components as a tool as noted below, see MPEP 2106.05(f)),;
accessing the plurality of files based on the request and the metadata corresponding to the plurality of files; and
providing the plurality of markers for each of the about 10,000 or more individuals. (merely data gathering steps as noted below, see MPEP 2106.05(g) and Symantec);
For the following reasons, the Examiner submits that the above identified additional limitations do not integrate the above-noted at least one abstract idea into a practical application.
Regarding the additional limitation of receiving a request for a plurality of markers for each individual of about 10,000 or more individuals, wherein the plurality of markers is at least about 10,000 markers; retrieving metadata corresponding to a plurality of files, wherein each file stores a continuous set of markers for a batch of samples, and wherein the continuous set of markers is less than about 10,000 markers. The examiner submits that this additional limitation merely adds insignificant extra-solution activity of receiving data to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea of a mental process (see MPEP § 2106.05(f)).
Regarding the additional limitation of accessing the plurality of files based on the request and the metadata corresponding to the plurality of files; and providing the plurality of markers for each of the about 10,000 or more individuals. The examiner submits that this additional limitation merely adds insignificant extra-solution activity of impractical application to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea of a mental process (see MPEP § 2106.05(g)).
Particularly, the use of a processor, a memory, as described in claims 1 and 7, 13 is not positively claimed in the claims as it defines the service but is claimed at such a high level of generality that it represents mere instructions to implement an abstract idea MPEP 2106.05(f). The Specification describes the processor, a memory as generic component (‘Spec.; Para 0080).
The remaining dependent claim limitations are not addressed above fail to integrate the abstract idea into a practical application
Thus, taken alone, the additional elements do not integrate the at least one abstract idea into a practical application.
Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to implement and revise a treatment plan, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use 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 not more than a drafting effort designed to monopolize the exception (see MPEP § 2106.05).
For these reasons, representative independent claim 1 and analogous independent claims 12 do not recite additional elements that integrate the judicial exceptions into a practical application.
The remaining dependent claim limitations not addressed above fail to integrate the abstract idea into a practical application as set below:
Dependent claims 2-6, 8-12, 14-20 recite further computer processor to perform the functions of to use, to determine, to generate and thus amount to no more than performing the method with a computer component, merely represent insignificant extra solution activity (see MPEP § 2106.05(g))
Thus, taken alone, the additional elements do not integrate the at least one abstract idea into a practical application.
Step 2B:
Regarding Step 2B, independent claims 1, 7, 13 do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
For claims 1, 2 and dependent claims 2-11, 13-20 limit the a processor, multiple digital processor as well-understood, routine, conventional activity (Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018).), and MPEP 2106.05(d)(I)(2)
For the reasons stated, the claims fail the Subject Matter Eligibility Test and are consequently rejected under 35 USC 101. Therefore, claims 1-20 are rejected under 35 USC 101 as being patent ineligibility.
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.
Claim 1-20 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.
Claims 1, 7, 13 recites receiving a request for a plurality of markers for each individual of about 10,000 or more individuals, wherein the plurality of markers is at least about 10,000 markers. However, the claim does not provide adequate structure to perform claim function of receiving a request for a plurality of markers for each individual of about 10,000 or more individuals. The specification does not demonstrate the applicant has made an invention that achieves the claimed function because the invention is nit described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20150066385A1, Mar. 5, 2015; Schnall-Levin et al.; Sequencing method.
US20190050437A1, Feb. 14, 2019; Goyal et al.; Inclusion dependency determination in a large database for establishing primary key-foreign key relationships.
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/HIEP V NGUYEN/Primary Examiner, Art Unit 3686
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