DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 28, 2025 has been entered.
Claims 19-25 are pending examination. Claims 9-18 were previously withdrawn.
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 19-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claims recite a series of steps instructing how to develop a recipe based on a given medicinal compound (e.g., Tetrahydrocannabinol or cannabinoid) and desired effects, which is merely a mental process of composing a recipe that can be performed in the human mind, or by a human using a pen and paper. This judicial exception is not integrated into a practical application. While claim 1 is directed to an abstract idea, the generically recited user interface and computing steps (i.e., extra-solution activity) do not add meaningful limitations to the abstract idea because they amount to simply receiving information and applying known mathematical calculations (e.g. addition and subtraction) to adjust ingredient quantities in a recipe.
Moreover, the additional elements of detecting using a photo recording component , visual input of a package containing the medicinal compound and retrieving based on the visual input (e.g., barcode, QR code, image, text, serial number), characteristics of the medicinal compound, without any limitations specifying the technical details of the visual input or how it is generate or processed is not sufficient to show an improvement in computer-functionality.
The additional element of “combining, using a pump, a solvent with a portion of the medicinal compound to dissolve a component of the medicinal compound; identifying, by a processor, additional characteristics of the medicinal compound based on an analysis of the dissolved component of the medicinal compound” is insignificant extra-solution activity. This additional element represents mere data gathering (obtaining data on the characteristics of the medicinal compound) that can be used in the mathematical calculations applied when generating the quantities of ingredients, including medicinal compounds, in a recipe. Moreover, this additional element does not add an inventive concept to the claim because the extra-solution activity is well-known.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a computer, detecting information via a visual input, programing, gathering of analytical data (i.e., dissolved components of the medicinal compound) and the print out of instructions are routine and conventional.
Response to Arguments
Applicant's arguments filed May 28, 2025 have been fully considered but they are not persuasive.
Applicant submits “the newly-recited features of claim 19 of combining a solvent and a compound to dissolve a component of the compound and identifying characteristics based on an analysis of the dissolved component are physical steps that occur in the real world and cannot be performed in the human mind.”
While the recited steps are not “performed in the mind,” the features amount to no more the mere gathering of data. The additional features themselves do no result in more than the identification of characteristics of the medicinal compound (i.e., gathering of data about the medicinal compound) by well-known steps.
Applicant urges “[t]he claimed invention is not trying to monopolize the alleged abstract idea of generating recipes; rather, the claimed invention is applying to a specific practical application the alleged abstract idea of generating recipes with specific quantities of a medicinal compound and specific tested properties of the medicinal compound.” Applicant explains the claimed invention includes the concrete steps of combining a solvent with a portion of the medicinal compound to dissolve a component of the compound, and identifying additional characteristics of the compound based on an analysis of the dissolved component.”
The Examiner does not suggest the claimed invention is trying to monopolize the idea of generating recipes. However, the Examiner maintains that the idea of generating recipes with a specific quantity of a medicinal or active compound based on preference, tolerance and physical attributes is considered an abstract idea and can be conducted in the mind or simply with a pencil and piece of paper.
Adding visual input (e.g., barcode) to the packaging of the medicinal compound, detecting the visual input and processing the visual input without any limitations specifying the technical details does not show an improvement in computer-functionality. The computer is merely used as a tool. There is no indication that the invention improves the computer functionality.
Applicant argues the claimed features cannot be practically performed in the human mind, especially the limitations of detecting visual input of a package using a photo recording component, retrieving the characteristics of the medicinal compound based on the visual input, combining a solvent with a portion of the medicinal compound to dissolve a component of the compound, and identifying additional characteristics of the compound based on an analysis of the dissolved component
The claimed invention is a method the provides users with a recipe containing a medicinal compound wherein the amount of each ingredient and medicinal compound is determined based on a user profile and input. The additional elements are simply steps of collecting data.
Applicant argue “the claimed elements cannot be performed outside a computer environment and would neither function nor provide any useful output apart from an electronic network.” In addition, Applicants submit “the claims cannot be performed without additional hardware capable of combining a solvent with a portion of the medicinal compound to dissolve a component of the compound, and identifying additional characteristics of the compound based on an analysis of the dissolved component.”
Applicants have not shown why the claimed elements cannot be performed outside a computer environment. The steps of processing the medicinal compound to identify its characteristics is just a step of collecting data. This data might also be found in a scientific publication or in a lab. The use of the data does not and the computer is merely used as a tool. There is no indication that the invention improves the computer functionality.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759