www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/291,700
`
`05/06/2021
`
`KENJI YAMANE
`
`SYP328430US01
`
`7721
`
`CHIP LAW GROUP
`505 N. LAKE SHORE DRIVE
`SUITE 250
`CHICAGO, IL 60611
`
`AUGER, NOAH ANDREW
`
`1687
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/18/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`docketing @chiplawgroup.com
`eofficeaction @appcoll.com
`sonydocket @evalueserve.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/291,700
`Examiner
`Noah A Auger
`
`Applicant(s)
`YAMANE etal.
`Art Unit
`1687
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 10/17/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-3 and 6-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-3 and 6-16 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 06/06/2021 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241124
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 2
`
`DETAILED ACTION
`
`Applicant’s response filed 10/17/2024 has been fully considered. The following rejections
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`and/or objections are either reiterated or newly applied.
`
`Notice of Pre-AlA orAIA Status
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Claims 4 and 5 are cancelled.
`
`Claim Status
`
`Claims 1-3 and 6-16 are currently pending and are herein under examination.
`
`Claims 1-3 and 6-16 are rejected.
`
`Priority
`
`The instant application claims domestic benefit to international application PCT/JP2019/043368
`
`filed 11/06/2019, which claims the benefit of priority to Japanese application No. 2018-215619 filed
`
`11/16/2018. The claim to the benefit of priority for claims 1-3 and 6-16 is acknowledged. As such, the
`
`effective filing date for claims 1-3 and 6-16 is 11/16/2018.
`
`Drawings
`
`The objection to the drawingsis withdrawn in view of Applicants amendments to the
`
`specification.
`
`The drawings filed 05/06/2021 are accepted.
`
`Claim Objections
`
`The objections to claims 1, 3 and 15-16 are withdrawn in view of Applicant’s claim amendments.
`
`Claim Rejections - 35 USC § 112
`
`Withdrawn Rejection under 35 U.S.C. 112(a)
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 3
`
`The rejection of claims 1-14 under 35 U.S.C. 112(a) is withdrawn because Applicant has removed
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`the terms “compression unit”, “acquisition unit”, and “output unit”, which were previously identified as
`
`failing to comply with the written description requirement, because they do not adequately link or
`
`associate adequately described particular structure, material, or acts to perform the function recited in
`
`the claims identified to invoke 35 U.S.C. 112(f).
`
`Withdrawn Rejection under 35 U.S.C. 112(b)
`
`The rejection of claims 1-14 under 35 U.S.C. 112(b) is withdrawn because Applicant has removed
`
`the terms “compression unit”, “acquisition unit”, and “output unit”, which were previously identified as
`
`invoking invoke 35 U.S.C. 112(f) and failed to disclose the corresponding structure, material, or acts
`
`performing the entire claimed function and fails to clearly link the structure, material, or acts tothe
`
`function for each of these limitations.
`
`Claim Rejections - 35 USC § 101
`
`Withdrawn Rejection under 35 USC 101
`
`The rejection of claim 16 under 35 USC 101 for being directed to non-statutory subject matter is
`
`withdrawn in view of Applicant replacing “a computer program”with “a non-transitory computer-
`
`readable medium”.
`
`Actively Applied Rejection under 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 requirementsofthis title.
`
`Claims 1-3 and 6-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed
`
`to an abstract idea without significantly more. Any newly recited portions herein are necessitated by
`
`claim amendment.
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 4
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`In accordance with MPEP § 2106,claims found to recite statutory subject matter (Step 1: Yes)
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`are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of
`
`nature or natural phenomena (Step 2A, Prong 1).|n the instant application, claims 1-3 and 6-14 recitean
`
`apparatus, claim 15 recites a method, and claim 16 recites a computer-readable medium. The instant
`
`claims recite the following limitations that equate to one or more categories of judicial exception:
`
`e Claim1 recites “compress the acquired plurality of pieces of spectral data; seta first threshold
`based on a user input; select, based on the result of the clustering process, a first cluster of a
`plurality of clusters of the compressed plurality of pieces of spectral data; determine a number
`of particles of the plurality of particles corresponding to the first cluster is greater than thefirst
`threshold; perform a sampling process on thefirst cluster based on the determination that the
`number of particles correspondingto the first cluster is greater than the first threshold;
`
`e Claim2recites “specify a target;”
`
`e Claim3 recites “calculate a specific value for each cluster of the plurality of clusters;...
`superimpose the specific value on the result of the clustering process.
`
`e Claim6 recites “calculate, based on the result of the clustering process, a degree of deviation of
`each piece of spectral data of the acquired plurality of pieces of spectral data from asecond
`cluster of the plurality of clusters.”
`e Claim7recites “determine the degree of deviation of each piece of spectral data of the acquired
`plurality of pieces of spectral data is one of: equal to or larger thana second threshold, or
`
`
`
`smallerthan the second threshold;”
`
`e
`
`Claim 15 recites “compressing ...the acquired plurality of pieces of spectral data; setting... a
`threshold based on a user input; selecting... based on the result of the clustering process, a
`cluster of a plurality of clusters of the compressed plurality of pieces of spectral data;
`
`determining .. .a number of particles of the plurality of particles corresponding to the selected
`cluster is greater thanthe threshold; performing ...a sampling process on the selected cluster
`based on the determination that the number of particles corresponding to the selected cluster is
`greater thanthe threshold;”
`
`e Claim16 recites “compressing the acquired plurality of pieces of spectral data; setting a
`threshold basedon a user input; selecting based on the result of the clustering process, a cluster
`of a plurality of clusters of the compressed plurality of pieces of spectral data; determining a
`
`number of particles of the plurality of particles corresponding to the selected cluster is greater
`than the threshold; performing a sampling process on the selected cluster based on the
`determination that the number of particles corresponding to the selected cluster is greater than
`the threshold;”
`
`Regarding the abovecited limitations in claims 1-3, 6-7 and 15-16 of (1) compressing spectral
`
`data, (2) setting a threshold selecting a cluster, (3) determining a number ofparticles, (4) performing a
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page5S
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`sampling process, (5) specifying a target, (6) calculating a specific value, (7) calculating a degree of
`
`deviation, and (8) determining the degree of deviation is equal to or larger thana threshold. These
`
`limitations equate to a mental process because they can be practically performed by the human mind or
`
`by using pen and paper. Specifically, the broadest reasonable interpretation (BRI) of performing a
`
`compression process includes performing a lossless data compression algorithm that merely identifies
`
`and removes redundancy in a dataset, whicha human could perform. A human is also capable of
`
`performing other mathematical operations suchas sampling data, altering the sampling based ona
`
`threshold, calculating values, and calculating degrees of deviation as these limitations merely require
`
`manipulating data through mathematical operations. A human is also practically capable of making
`
`determinizations and specifying variables. Furthermore, the courts have established in Flectric Power
`
`Group, LLC v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)) that collecting information,
`
`analyzing it and displaying certain results of the collection and analysis can be practically performed in
`
`the human mind. Therefore, these limitations fall under the “Mental Process” grouping of abstract
`
`ideas.
`
`Regarding the abovecited limitations in claims 1, 3, 6, and 15-16 of compressing spectral data,
`
`performing a sampling process, calculating a value for each cluster, and calculating a degree of
`
`deviation. These limitations equate to a mathematical concept because they require using mathematical
`
`operations/functions to derive a numerical value or require using statistical methods for sampling under
`
`their broadest reasonable interpretation. Therefore, these limitations are similar to organizing and
`
`manipulating information through mathematical correlations, which the courts have established as a
`
`mathematical concept in Digitech Image Techs., LLCv Electronicsfor Imaging, Inc. (758 F.3d 1344, 111
`
`U.S.P.Q.2d 1717 (Fed. Cir. 2014)).
`
`As such, claims 1-3 and 6-16 recite an abstract idea (Step 2A, Prong 1: Yes).
`
`Step 2A, Prong 2:
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 6
`
`Claims found to recite a judicial exception under Step 2A, Prong 1 arethen further analyzed to
`
`determine if the claims as a whole integrate the recited judicial exception into a practical application or
`
`not (Step 2A, Prong 2). The judicial exception is not integrated intoa practical application because the
`
`claims do not recite additional elements that reflect an improvement to technology (MPEP §
`
`2106.04(d)(1)) nor do they provide some other meaningful limitation. Rather, these claims merely
`
`include instructions to implement an abstract idea on a computer (MPEP § 2106.05(f)) and insignificant
`
`extra-solution activity (MPEP § 2106.05(g)). The instant claims recite the following additional elements:
`
`Claim 1 recites “a central processing unit (CPU) configured to: acquire a plurality of pieces of
`spectral data based on irradiation of a plurality of particles with a laser beam; transmit the
`compressed plurality of pieces of spectral data via a network; acquire, based on the
`
`transmission, a result of a clustering process of the compressed plurality of pieces of spectral
`data; and control a display device to display the first cluster on which the sampling process is
`performed.”
`
`Claim 2 recites “wherein the CPU is further configured to...and control the display device to
`display the result of the clustering process based on the specified target.”
`
`Claim 3 recites “wherein the CPU is further configured to:. .. and control the display device to. .
`
`Claim 6 recites “wherein the CPU is further configured to...”
`
`Claim 7 recites “wherein the CPU is further configured to:. .. control, based on the
`determination that the degree of deviation of a first piece of spectral data of the acquired
`
`plurality of pieces of spectral data is equal to or larger than the second threshold, the display
`device to display the first piece of spectral data ina first display form; and control, based on the
`determination that the degree of deviation of a second piece of spectral data of the acquired
`plurality of pieces of spectral data is smaller than the second threshold, the display device to
`
`display the second piece of spectral data in a second display form, and the second display form
`is different from thefirst display form.”
`
`Claim 8 recites “wherein the CPU is further configured to control the display device to display
`the first piece of spectralin a different color from the second piece of spectral data.”
`
`Claim 9 recites “wherein the CPU is further configured to control the display device to display
`the first piece of spectral-data with different transparency from the second piece of spectral
`data.”
`
`Claim 10 recites “wherein the CPU is further configured to dynamically change the display of the
`first piece of spectral data and the display of the second piece of spectral data, basedona
`
`dynamical change of the second threshold.”
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 7
`
`e Claim11 recites “wherein the CPU is further configured to transmit the compressedplurality of
`pieces of spectral data to a device, and the device is connected tothe information processing
`apparatus via the network.”
`
`e
`
`e
`
`Claim 12 recites “wherein the CPU is further configured to acquire the result of the clustering
`process from the device.”
`
`Claim 13 recites “wherein the plurality of pieces of spectral data is output from a flow
`cytometer.”
`
`e Claim14 recites “wherein the CPU is further configured to control the display device to display
`the result of the clustering process.”
`
`e Claim15 recites “acquiring, by a central processing unit (CPU), a plurality of pieces of spectral
`data based onirradiation of a plurality of particles witha laser beam; transmitting, bythe CPU,
`the compressedplurality of pieces of spectral data via a network; acquiring, by the CPU, based
`on the transmission, a result of a clustering process of the compressed plurality of pieces of
`
`spectral data; controlling, by the CPU, a display device to dis play the selected cluster on which
`the sampling process is performed.
`
`e Claim15 alsorecites “by the CPU.”
`e
`Claim 16 recites “A non-transitory computer-readable medium having stored thereon,
`computer-executable instructions which, when executed by a processor, cause the processor to
`
`execute operations, the operations comprising: acquiring a plurality of pieces of spectral data
`based onirradiation of a plurality of particles witha laser beam; transmitting the compressed
`plurality of pieces of spectral data via a network; acquiring based on the transmission, a result of
`a clustering process of the compressed plurality of pieces of spectral data; controlling a display
`device to display the selected cluster on which the sampling process is performed.”
`
`Regarding the abovecited limitations in claims 1-3 and 6-16 of the CPU, the display device, the
`
`device, the computer-readable medium, and the processor. These limitations appear to be components
`
`of ageneric computer and of a generic computing system, andthere are no limitations that they require
`
`anything other thana generic computing system. Therefore, these limitations equate to mere
`
`instructions to implement an abstract idea on a generic computer, which the courts have established
`
`does not render an abstract idea eligible in Alice Corp. 573 U.S. at 223, 110 USPQ2d at 1983.
`
`Regarding the abovecited limitations in claims 1-3 and 7-16 of acquiring data, transmitting data,
`
`and displaying data on a display device. These limitations equate to insignificant, extra-solution activity
`
`of mere data gathering and outputting.
`
`As such, claims 1-3 and 6-16 are directed to an abstract idea (Step 2A, Prong 2: No).
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Step 2B:
`
`Page 8
`
`Claims found to be directed to a judicial exception are then further evaluated to determineif
`
`the claims recite an inventive concept that provides significantly more than the judicial exception itself
`
`(Step 2B). These claims do not include additional elements that are sufficient to amountto significantly
`
`more than the judicial exception because these claims recite additional elements that equate to
`
`instructions to apply the recited exception in a generic way or ina generic computing environment
`
`(MPEP § 2106.05(f)) and to well-understood, routine and conventional (WURC) limitations (MPEP §
`
`2106.05(d)). The instant claims recite the following additional elements:
`
`e Claim1 recites “acentral processing unit (CPU) configured to: acquire a plurality of pieces of
`spectral data based on irradiation of a plurality of particles with a laser beam; transmit the
`compressed plurality of pieces of spectral data viaa network; acquire, based on the
`transmission, a result of a clustering process of the compressed plurality of pieces of spectral
`data; and control a display device to display the first cluster on which the sampling process is
`
`performed.”
`
`
`
`e Claim2recites “wherein the CPU is further configured to... and control the display device to
`display the result of the clustering process based on the specified target.”
`
`e Claim3 recites “wherein the CPU is further configured to:... and control the display device to. .
`
`e Claim6 recites “wherein the CPU is further configured to...”
`
`e Claim7 recites “wherein the CPU is further configured to:... control, based on the
`determination that the degree of deviation of a first piece of spectral data of the acquired
`plurality of pieces of spectral data is equal to or larger than the second threshold, the display
`device to display the first piece of spectral dataina first display form; and control, based on the
`
`determination that the degree of deviation of a second piece of spectral data of the acquired
`plurality of pieces of spectral data is smaller than the second threshold, the display device to
`display the second piece of spectral data in a second display form, and the second display form
`is different from thefirst display form.”
`
`e Claim8 recites “wherein the CPU is further configured to control the display device to display
`the first piece of spectralin a different color from the second piece of spectral data.”
`e Claim9 recites “wherein the CPU is further configured to control the display device to display
`the first piece of spectral-data with different transparency from the second piece of spectral
`data.”
`
`e
`
`Claim 10 recites “wherein the CPU is further configured to dynamically change the display of the
`first piece of spectral data and the display of the second piece of spectral data, basedona
`dynamical change of the second threshold.”
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 9
`
`e Claim11 recites “wherein the CPU is further configured to transmit the compressedplurality of
`pieces of spectral data to a device, and the device is connected tothe information processing
`apparatus via the network.”
`
`e
`
`e
`
`e
`
`Claim 12 recites “wherein the CPU is further configured to acquire the result of the clustering
`process from the device.”
`
`Claim 13 recites “wherein the plurality of pieces of spectral data is output from a flow
`cytometer.”
`
`Claim 14 recites “wherein the CPU is further configured to control the display device to display
`the result of the clustering process.”
`
`e Claim15 recites “acquiring, by a central processing unit (CPU), a plurality of pieces of spectral
`data based onirradiation of a plurality of particles witha laser beam; transmitting, by the CPU,
`the compressedplurality of pieces of spectral data via a network; acquiring, by the CPU, based
`on the transmission, a result of a clustering process of the compressed plurality of pieces of
`
`spectral data; controlling, by the CPU, a display device to display the selected cluster on which
`the sampling process is performed.
`
`e Claim15 alsorecites “by the CPU.”
`e
`Claim 16 recites “A non-transitory computer-readable medium having stored thereon,
`computer-executable instructions which, when executed by a processor, cause the processor to
`
`execute operations, the operations comprising: acquiring a plurality of pieces of spectral data
`based onirradiation of a plurality of particles witha laser beam; transmitting the compressed
`plurality of pieces of spectral data via a network; acquiring based on the transmission, a result of
`a clustering process of the compressed plurality of pieces of spectral data; controlling a display
`device to display the selected cluster on which the sampling process is performed.”
`
`Regarding the abovecited limitations in claims 1-3 and 6-16 of the CPU, the display device, the
`
`device, the computer-readable medium, and the processor. These limitations appear to be components
`
`of ageneric computer and of a generic computing system. Therefore, these limitations equate to
`
`instructions to implement an abstract idea on a generic computing system, which the courts have
`
`established does not provide aninventive concept in Intellectual Ventures! LLC v. Capital One Bank
`
`(USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Additionally, storing code in a non-
`
`transitory computer readable medium as stated inclaim 16 equates to storing information in memory,
`
`which the courts have established as a WURC function of a generic computer in Versata Dev. Group, Inc.
`
`v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 10
`
`Regarding the abovecited limitations in claims 1-3, 7-12 and 14-16 of acquiring data, outputting
`
`data, and displaying the outputted data, these limitations read on receiving/transmitting data overa
`
`network, which the courts have established as WURC function of a generic computer in buySAFF, Inc.v.
`
`Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014). Furthermore, claim 13 also
`
`equates to trans mitting/receiving data because it merely limits the type of data being
`
`transmitted/received.
`
`When these additional elements are considered individually and in combination, they amount to
`
`WURC generic computer functions/components and therefore do not comprise an inventive concept
`
`that transforms the claimed judicial exception into a patent-eligible application of the judicial exception
`
`itself (Step 2B: No).
`
`As such, claims 1-3 and 6-16 are not patenteligible.
`
`Response to Arguments under 35 USC 101
`
`Applicant's argumentsfiled 10/17/2024 have been fully considered but they are not persuasive.
`
`Applicant asserts that the limitations in claim 1 listed on pg. 13, last para. —pg. 14, para. 1 of
`
`Applicant’s remarks cannot be practically performed in the human mind. Applicant further states that
`
`these limitations are inextricably tiedto a machine and do not presenta mental process (pg. 14, para. 1
`
`of Applicant’s remarks). These arguments are not persuasive.
`
`MPEP 2106.04{a){2).111.C.3 recites:
`“Using a computer as a tool to performa mental process. An example of a casein
`which a computer was used as a tool to perform a mental process is Mortgage
`Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage
`Grader claimed acomputer-implemented system for enabling borrowers to
`anonymously shop for loan packages offered by a plurality of lenders, comprising a
`database that stores loan package data from the lenders, and a computer system
`providing an interface and a grading module. The interface prompts a borrower to enter
`personal information, which the grading module uses to calculate the borrower's credit
`grading, and allows the borrower to identify and compare loan packages inthe database
`using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit
`determined that these claims were directed to the concept of "anonymous loan
`
`

`

`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 11
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`shopping”, which was a conceptthat could be "performed by humans without a
`computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another exampleis Berkheimerv.
`HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee
`claimed methods for parsing and evaluating data using a computer processing system.
`The Federal Circuit determined that these claims were directed to mental processes of
`parsing and comparing data, because the steps wererecited at a high level of generality
`and merely used computersas a tool to perform the processes. 881 F.3d at 1366, 125
`USPQ2d at 1652-53.”
`Regarding the limitationslisted in claim 1 on pg. 13, last para. —pg. 14, para. 1 of Applicant’s
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`remarks. The limitations for selecting a first cluster, determining a number of particles, and performing a
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`sampling process have been identified as reciting a mental process. Even though the CPU in claim 1 is
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`performing the stepsof selecting, determining and performing, they are nonetheless a mental process.
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`As cited above in MPEP 2106.04(a)(2).II1.C.3, using a computer (i.e., a CPU) as a tool to perform a mental
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`process stillrecites a mental process.
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`Moreover, as discussedin the rejection above, the CPU performing limitations that equatetoa
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`mental process merely equatesto instructions to implement an abstract idea on a generic computing
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`system (MPEP 2106.05(f)), which does not integrate a judicial exception into a practical application.
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`This argumentis thus not persuasive.
`
`Applicant asserts that evenif the claims recitedajudicial exception, the claims are integrated
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`into a practical application (pg. 14, para. 2 of Applicant’s remarks). Applicant cites the following para. of
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`the specification referencing the alleged practical application: [6], [20], [33], [55], [65-66] and [68-70].
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`(pg. 14, para. 3 — pg. 17, para. 1 of Applicant’s remarks). Applicant also appears to make the argument
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`that the information processing apparatus acquires data from a flow cytometer and performs a
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`compression process on the data, wherein compression of the data reduces the amountof data and
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`reduces transfer time of data being transferred from a local environment to a cloud environment(pg.
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`16, para. 1 of Applicant’s remarks). Applicant also asserts that performing subsampling increases the
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`speed of drawing the analysis results (pg. 16, para. 2 of Applicant’s remarks). Applicant states that this
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`

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`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 12
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`all leads to being able to display a distribution of a rare cell group in an easily understandable manner
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`(pg. 17, para. 1 of Applicant’s remarks). Applicant also asserts that the limitations claim 1 of compressing
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`spectral data and performing sampling provide the improvementin technology (pg. 17, last para. of
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`Applicant’s remarks). These arguments are not persuasive.
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`MPEP 2106.05(a) recites:
`“Itis important to note, the judicial exception alone cannot provide the improvement.
`The improvement can be provided by one or more additional elements. See the
`discussion of Diamondv. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in
`subsection II, below. In addition, the improvement can be provided by the additional
`element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d)
`(discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282,
`1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim asa
`whole when determining whether the claim provides animprovement to the
`functioning of computers or an improvementto other technology or technical field.”
`
`It appears that the alleged improvements are derived from the steps of compressing spectral
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`data, clustering the compressed spectral data, setting a threshold, selecting a cluster, determining a
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`number of particles, and performing a sampling process. These limitations have been identified as
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`reciting a judicial exception, as discussed in the rejection above. However,limitations that have been
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`identified as reciting a judicial exception cannot provide the improvement. Only limitations that recite
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`additional elements can provide the improvement (MPEP 2106.05(a)).
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`As discussedin the rejection above, the additional elements in claim 1 equate to mere
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`instructions to implement an abstract idea on a generic computer (MPEP 2106.05(f)) and to insignificant,
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`extra-solution activity of mere data gathering and outputting (MPEP 2106.05(g)); both of which cannot
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`provide a practical application. These arguments are thus not persuasive.
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`Applicant asserts that the additional elements in claim 1 are not well-understood, routine, and
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`conventional (WURC) (pg. 18, para. 1 of Applicant’s remarks). This argument is not persuasive.
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`As discussedin the rejection above, the additional elements in claim 1 equate to instructions to
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`implement an abstract idea on a generic computing system, which the courts have established does not
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`

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`Application/Control Number: 17/291, 700
`Art Unit: 1687
`
`Page 13
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`provide an inventive conceptin Intellectual Ventures! LLCv. Capital One Bank (USA), 792 F.3d 1363,
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`1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). The additional elements in claim 1 alsoequate to
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`receiving/transmitting data over a network, which the courts have established as WURC function of a
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`generic computer in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed.
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`Cir. 2014). Therefore, when the additional elements in claim 1 are considered individually and in
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`combination, they amount to WURC generic computer functions/components and thus do not comprise
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`an inventive concept that transforms the claimed judicial exception into a patent-eligible application of
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`the judicial exception itself. This argument is thus not persuasive.
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`Cla