DETAILED ACTION
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 .
Response to Amendment
Applicant’s amendments to the claims, filed 10/22/2025, are accepted and appreciated by the
Examiner.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/22/2025, with respect to the rejection of claim 1 under 35 U.S.C. 101 have been fully considered and are persuasive in light of the amendments. The 35 U.S.C. 101 rejection of claim 1 has been withdrawn.
Applicant's arguments, see Remarks, filed 10/22/2025, with respect to the rejection of claim 16 under 35 U.S.C. 101 have been fully considered but they are not persuasive. As seen in MPEP 2106.04 “Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” The claim amendment just states that digitizing the method of digital synthesis enables efficient production of a large number of chemical products, however the claim does not include components or steps that lead to that improvement. The claim just teaches inputting a process sequence into a computer and it is unclear how it is tied to the production of chemical products.
Applicant's arguments, see Remarks, filed 10/22/2025, with respect to the rejection of claim 16 under 35 U.S.C. 102 have been fully considered and are persuasive in light of the amendments. Therefore, the rejection has been withdrawn. However, it is not stated in the claims that the process sequence is translated from one language to another. Translating is defined by Oxford Languages as moving from one place or condition to another. Therefore, the broadest reasonable interpretation of claim can be moving a chemical process into a digital model. There is nothing preventing the process from already being digital. As seen in Col. 3 Ln. [12-15] of Huse two data structures representing chemicals and chemical reaction sequences are combined to form a third data structure. Where the third data structure which is viewed as a digital model that includes the chemical and the physical steps. Furthermore, MPEP 2145 teaches “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” As previously discussed, Para. [0012] of the specification elaborates “the step of translating the process sequence may involve data entry into a computer to record the processes of the method of synthesis. Such data entry may be manual data entry, for example by a skilled chemist, entering pertinent process information into a computer. Alternatively, a computer may be used to analyse reported methods of syntheses and may provide these in a suitable digital format for later use.” In combining the two data structures the system of Huse is providing the methods of synthesis for further use. Additionally, the initial first and second data structures of Huse must be input into the library system in order to be used and are thus translated from physical processes into a digital format. See Col. 5 Ln(s). [0045-0062] of Huse. Therefore, upon further consideration, a new ground(s) of rejection is made in view of Huse (US 5862514 A) and Nandigam (US 20160147202 A1).
Applicant's arguments, see Remarks, filed 10/22/2025, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered but they are not persuasive. MPEP 2145 teaches “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 4 just requires that there is a digital reaction module for each step of the process sequence and it is interpreted by the examiner that the process sequence as seen in figure 1 and page 350 of Symes contains just three steps. Furthermore, Page 349 of Symes further teaches “All the parameters regarding the dimensions of these devices could be adjusted digitally during the computer-aided design process with great ease, and subsequent printing could be automated effectively.” The devices being adjusted digitally would mean that the different chambers are interconnected digitally in order to control the target product.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 2, 7, 8, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Huse (US 5862514 A) as modified by Symes (“Integrated 3D-printed reactionware for chemical synthesis and analysis.” Nature Chemistry) and Cronin (US 20150010461 A1).
Regarding Claim 1,
A method for digitising a method of chemical synthesis, the method comprising the steps of: identifying a method of chemical synthesis for a target product, (Col. 3 Ln. [1-25] teaches “The invention is embodied as a machine or as a machine-executed method for simulating chemical function using a database in which data representations of chemicals, data representations of synthesis procedures, and a set of functions representing assay procedures are stored. In this regard, a first set of first data structures representing chemicals of the chemical library is obtained from the database. A second set of second data structures representing industrially performable reactions by which chemicals represented by the first data structures are combined is also obtained from the database. The first and second sets are combined to produce a third set of data structures that represent experimentally performed, or hypothetically specified synthesis procedures in which chemicals in the chemical library and reactions in the reaction library are involved. The feasibility of a synthesis procedure represented by a third data structure is simulated by subjecting the third data structure to a function of the set of functions, such that the function produces a simulation value. A product chemical is synthesized according to the specified synthesis procedure and assayed to produce an assay result. The assay result is compared with the simulation value with reference to a tolerance limit, and another function may be selected from the set of functions based upon the comparison.”)
establishing a process sequence for the method of synthesis, in which the process sequence is a collection of chemical and/or physical steps within the method of synthesis; (Col. 6 Ln. [53-56] teaches “W represents a reaction sequence which can be represented as a tree-shaped graph as shown in FIG. 3.”. Where a reaction sequence would be a collection of chemical steps.)
translating the process sequence to a digital model of the method of synthesis, in which the digital model comprises a digital description of the chemical and/or physical steps within the method of synthesis.( Col. 3 Ln. [12-15] teaches “The first and second sets are combined to produce a third set of data structures that represent experimentally performed, or hypothetically specified synthesis procedures in which chemicals in the chemical library and reactions in the reaction library are involved.”)
Huse does not explicitly teach,
further comprising the step of: (iv) designing a digital reactionware for the method of synthesis, where the digital reactionware provides a digital reaction module for each step in the process sequence, and the digital modules are digitally interconnected for the digital production of the target product
(v) generating the physical reactionware from the digital reactionware.
Symes teaches,
further comprising the step of: (iv) designing a digital reactionware for the method of synthesis, where the digital reactionware provides a digital reaction module for each step in the process sequence, and the digital modules are digitally interconnected for the digital production of the target product. (The abstract teaches “Here, using a low-cost 3D printer and open-source design software we produced reactionware for organic and inorganic synthesis, which included printed-in catalysts and other architectures with printed-in components for electrochemical and spectroscopic analysis. This enabled reactions to be monitored in situ so that different reactionware architectures could be screened for their efficacy for a given process, with a digital feedback mechanism for device optimization.”. The conclusion teaches “Using such methods, we believe that it should be feasible to create active reactors, that is ‘reactionware’ that has control over reagent mixing sequences, flow rates and methods.”. Each unique process would require its own unique reactionware.)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Huse wherein: (iv) designing a digital reactionware for the method of synthesis, where the digital reactionware provides a digital reaction module for each step in the process sequence, and the digital modules are digitally interconnected for the digital production of the target product such as that of Symes.
One of ordinary skill would have been motivated to modify Huse, because to properly model a chemical reaction all facets of the reaction should be accounted for especially the container of the reaction if it affects the reaction. Furthermore, the abstract of Symes teaches “Taken together, this approach constitutes a relatively cheap, automated and reconfigurable chemical discovery platform that makes techniques from chemical engineering accessible to typical synthetic laboratories.”
The combination of Huse and Symes does not explicitly teach,
(v) generating the physical reactionware from the digital reactionware.
Cronin teaches,
(v) generating a physical reactionware from the digital reactionware. (Abstract teaches “Providing a reaction vessel that is obtained by a 3-D printing method”)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse and Symes further comprising the step of: (v) generating a physical reactionware from the digital reactionware, where the physical reactionware has a module for each step in the process sequence such as that of Cronin.
One of ordinary skill would have been motivated to modify the combination of Huse and Symes, because producing physical reactionware would allow the synthesis to be performed so that the target product can be reached.
Regarding Claim 2,
Huse further teaches,
The method of claim 1, wherein the method of synthesis identified in step (i) is for a target product is a multistep method of chemical synthesis, such as having three or more reaction steps in a sequence. (Col. 6 Ln. [53-56] teaches “W represents a reaction sequence which can be represented as a tree-shaped graph as shown in FIG. 3.”. Where a reaction sequence would be a collection of chemical steps. The tree shows more than three steps.)
Regarding Claim 7,
The combination of Huse, Symes, and Cronin further teach the method of claim 1.
Huse further teaches,
Pulling chemical and reaction properties from specific libraries (Fig. 5)
Huse does not explicitly teach,
Symes teaches,
Designing digital reactionware with open-source software. (abstract)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Symes, and Cronin, wherein the digital reactionware may be obtained from common digital components from a digital reactionware library such as that of Symes.
One of ordinary skill would have been motivated to modify the combination of Huse, Symes, and Cronin, because pulling reactionware designs from a library of known designs would save time and cost of having to design every piece of reactionware.
Regarding Claim 8,
Huse doesn’t explicitly teach,
wherein the digital reactionware library holds modules having reaction chambers and modules having purification components.
Symes teaches,
That flow rates and methods of purification built into the reactor design. (Conclusion)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Symes, and Cronin wherein the digital reactionware library holds modules having reaction chambers and modules having purification components such as that of Symes.
One of ordinary skill would have been motivated to modify the combination of Huse, Symes, and Cronin, because including purification components would reduce the amount parts needed to synthesis the chemical or compound thus simplifying the design.
Regarding Claim 10,
The combination of Huse, Symes, and Cronin teaches the method of claim 1.
Huse does not explicitly teach,
wherein physical reactionware is generated in step (v), at least in part, by 3D printing or injection moulding, according to the design in the digital reactionware.
Cronin teaches,
wherein physical reactionware is generated in step (v), at least in part, by 3D printing or injection moulding, according to the design in the digital reactionware. (Abstract teaches “Providing a reaction vessel that is obtained by a 3-D printing method”)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Symes, and Cronin, wherein physical reactionware is generated in step (v), at least in part, by 3D printing or injection moulding, according to the design in the digital reactionware such as that of Cronin.
One of ordinary skill would have been motivated to modify the combination of Huse, Symes, and Cronin, because producing the reactionware with 3D printing saves time compared to traditional methods.
Regarding Claim 11,
Huse does not explicitly teach,
wherein the physical reactionware has a security device that is a physical feature of the physical reactionware.
Cronin teaches,
wherein the physical reactionware has a security device that is a physical feature of the physical reactionware. (“The coating may be provided as a layer to protect the material underneath. The coating will therefore be unreactive to a particular reagent, product or solvent, whereas the material is. Where the coating is the security device that secures the reaction from interference from the reactionware.)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Symes, and Cronin wherein the physical reactionware has a security device that is a physical feature of the physical reactionware such as that of Cronin.
One of ordinary skill would have been motivated to modify the combination of Huse, Symes, and Cronin, because protecting the reaction from unwanted interference from the vessel that holds the reaction would ensure a better final product.
Regarding Claim 13,
Huse does not explicitly teach,
A method of performing a method of synthesis, the method comprising the steps (i) to (v) as described in claim 9 with the additional step of: (vi) performing a method of synthesis in the physical reactionware for the production of a target product.
Cronin teaches,
further comprising the step of: (vi) performing a method of synthesis in the physical reactionware for the production of a target product. (Para. [0013] teaches “Providing one or more reagents, optionally together with a catalyst or a solvent, for use in the synthesis of the product compound”)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Symes, and Cronin, further comprising the step of: (vi) performing a method of synthesis in the physical reactionware for the production of a target product such as that of Cronin.
One of ordinary skill would have been motivated to modify the combination of Huse, Symes, and Cronin, because if this step in the method did not occur the previous steps would amount to no physical synthesis of the chemical or compound.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Huse (US 5862514 A) as modified by Symes (“Integrated 3D-printed reactionware for chemical synthesis and analysis.” Nature Chemistry) and Cronin (US 20150010461 A1) as applied to claim 1 above, and further in view of in view of Bode (US 20190209995 A1).
Regarding Claim 3,
Huse does not explicitly teach,
wherein the chemical steps are interspersed with one or more purification steps.
Bode teaches,
wherein the chemical steps are interspersed with one or more purification steps. (“Accordingly, an apparatus for the automated synthesis of at least one chemical compound, in particular for compounds comprising at least one N-heterocyclic structure, is provided, wherein the apparatus comprises: [0010] at least one cartridge comprising [0011] at least one first compartment for providing at least one first reagent for the chemical synthesis of the at least one compound; [0012] at least one second compartment for providing at least one second reagent for the chemical synthesis of the at least one compound, and [0013] at least one third compartment for purifying the at least one synthesized compound.”)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Syme, and Cronin wherein the chemical steps are interspersed with one or more purification steps such as that of Bode.
One of ordinary skill would have been motivated to modify the combination of Huse, Syme, and Cronin, because interspersing purification steps with other chemical steps would lead to a purer and more refined final product.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Huse (US 5862514 A) as modified by Symes (“Integrated 3D-printed reactionware for chemical synthesis and analysis.” Nature Chemistry) and Cronin (US 20150010461 A1) as applied to claim 1 above, and further in view of Koswara (US 10751685 B2).
Regarding Claim 4,
Huse does not explicitly teach,
wherein the process sequence established in step (ii) is the collection of chemical and physical steps within the method of synthesis.
Koswara teaches,
wherein the process sequence established in step (ii) is the collection of chemical and physical steps within the method of synthesis. (Fig. 1A teaches a cooling step amongst many chemical steps.)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Syme, and Cronin wherein the process sequence established in step (ii) is the collection of chemical and physical steps within the method of synthesis such as that of Koswara.
One of ordinary skill would have been motivated to modify the combination of Huse, Syme, and Cronin, because there are many compounds and chemicals that need certain physical steps to be synthesized so including both physical and chemical steps would allow for the synthetization of more final products.
Regarding Claim 5,
Huse does not explicitly teach,
wherein the physical steps include one or more steps selected from a group consisting of admixture of materials for use in the reaction, heating, cooling, degassing, irradiation and saturation.
Koswara teaches,
wherein the physical steps include one or more steps selected from the group consisting of admixture of materials for use in the reaction, heating, cooling, degassing, irradiation and saturation. (Fig. 1A teaches a cooling step amongst many chemical steps.)
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Huse, Syme, and Cronin wherein the physical steps include one or more steps selected from the group consisting of admixture of materials for use in the reaction, heating, cooling, degassing, irradiation and saturation such as that of Koswara.
One of ordinary skill would have been motivated to modify the combination of Huse, Syme, and Cronin, because according to Koswara Col.8 Ln. [ 29-31] some reaction and purification steps would be performed at higher temperature while others at a significantly lower temperature. In order to synthesize more final products including a heating and a cooling element would be critical.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Huse (US 5862514 A) as modified by Nandigam (US 20160147202 A1).
Regarding Claim 16,
Huse teaches,
A method for digitising a method of chemical synthesis, the method comprising the steps of: identifying a method of chemical synthesis for a target product, (Col. 3 Ln. [1-25] teaches “The invention is embodied as a machine or as a machine-executed method for simulating chemical function using a database in which data representations of chemicals, data representations of synthesis procedures, and a set of functions representing assay procedures are stored. In this regard, a first set of first data structures representing chemicals of the chemical library is obtained from the database. A second set of second data structures representing industrially performable reactions by which chemicals represented by the first data structures are combined is also obtained from the database. The first and second sets are combined to produce a third set of data structures that represent experimentally performed, or hypothetically specified synthesis procedures in which chemicals in the chemical library and reactions in the reaction library are involved.”)
establishing a process sequence for the method of synthesis, in which the process sequence is a collection of chemical and/or physical steps within the method of synthesis; (Col. 6 Ln. [53-56] teaches “W represents a reaction sequence which can be represented as a tree-shaped graph as shown in FIG. 3.”. Where a reaction sequence would be a collection of chemical steps.)
translating the process sequence to a digital model of the method of synthesis, in which the digital model comprises a digital description of the chemical and/or physical steps within the method of synthesis.( Col. 3 Ln. [12-15] teaches “The first and second sets are combined to produce a third set of data structures that represent experimentally performed, or hypothetically specified synthesis procedures in which chemicals in the chemical library and reactions in the reaction library are involved.”)
Huse does not explicitly teach,
Wherein translation of the process enables digitization of the method of chemical synthesis for the efficient production of a large number of chemical products.
Nandigam teaches,
Wherein translation of the process enables digitization of the method of chemical synthesis for the efficient production of a large number of chemical products. (Abstract teaches “computer program product for increasing efficiency in a plant by creating a planning model for said plant comprising a plurality of runtime models stored in a database.” (i.e. planning model is viewed as a digitized method of synthesis.))
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Huse wherein translation of the process enables digitization of the method of chemical synthesis for the efficient production of a large number of chemical products such as that of Nandigram.
One of ordinary skill would have been motivated to modify Huse, because according to para. [0002] of Nandigam “a new method, apparatus, and computer program product are disclosed for increasing efficiency in a refinery or processing plant, such that the refiner can optimize product returns or efficient use of crude materials.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to JOSHUA L FORRISTALL whose telephone number is 703-756-4554. The examiner
can normally be reached Monday-Friday 8:30 AM- 5 PM.
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/JOSHUA L FORRISTALL/Examiner, Art Unit 2863
/Catherine T. Rastovski/Supervisory Primary Examiner, Art Unit 2863