Prosecution Insights
Last updated: April 19, 2026
Application No. 17/163,430

TRIAL DESIGN WITH PARETO TECHNIQUES

Final Rejection §112
Filed
Jan 30, 2021
Examiner
NGUYEN, HIEP VAN
Art Unit
3686
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Cytel Inc.
OA Round
4 (Final)
55%
Grant Probability
Moderate
5-6
OA Rounds
4y 2m
To Grant
84%
With Interview

Examiner Intelligence

Grants 55% of resolved cases
55%
Career Allow Rate
564 granted / 1025 resolved
+3.0% vs TC avg
Strong +29% interview lift
Without
With
+29.3%
Interview Lift
resolved cases with interview
Typical timeline
4y 2m
Avg Prosecution
47 currently pending
Career history
1072
Total Applications
across all art units

Statute-Specific Performance

§101
27.9%
-12.1% vs TC avg
§103
46.9%
+6.9% vs TC avg
§102
7.3%
-32.7% vs TC avg
§112
10.2%
-29.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1025 resolved cases

Office Action

§112
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 476-479, 481-493, 495 have been examined. Claims 476, 495 have been amended.. Claims 1-475 and 494, 496-696 have been previously canceled. 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 476, 487, 495 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. Claim limitation “identifying a second level pareto frontier”. However, the written description fails to disclose the corresponding structure, material to the function. The specification is devoid of adequate structure to perform claimed function. In particular, the specification states the claimed function of identifying a second level ….by filtering/filter. There is no disclosure of any structure, either explicitly or inherently, to identify a second level pareto frontier. The limitation filtering is not adequate structure for identifying a second level pareto frontier. And the specification does not provide sufficient details such that one of ordinary skill in the art would understand which filtering structure performs the claimed function. Therefore, the claim is indefinite and is rejected under 35 USC 112(b) or pre-AIA 35 USC 112, second paragraph. 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. Claims 476, 487, 495 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. The disclosure does not provide adequate structure to perform the claim function of identifying a second level Pareto Frontier. Paragraph 0408 in Specification only describes the modification that may include determining epsilon-distance designs, clustering, determining second level Pareto designs, filtering sibling and twin designs, and the like. The specification does not demonstrate that the applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that invention had possession of the claimed function. Allowable Subject Matter Over the Prior Art The primary reason for indicating allowability over the prior art is the inclusions of the following limitations in the combination as recited. Claim 476 is directed towards a method comprising: obtaining trial design simulation results for a set of trial designs; determining a score for each trial design based on a performance criteria; generating, for each score, a vector of values identifying a normalization function or a scoring function used to compute the score for each trial design; identifying comparable scores by comparing the vectors of values for mismatches in the normalization function or the scoring function; evaluating the comparable scores for each design in the set of trial designs to determine a Pareto frontier; filtering designs that are not on the Pareto frontier; communicating the Pareto frontier designs; and identifying a second level Pareto frontier. For claim rejection under 35 USC 103, the prior art closely relates to Fang-Fang Yin et al. (US 20160129282A1 hereinafter Fang-Fang Yin) in view of Walk et al. (US 20080234945A1 hereinafter Walk) and further in view of Fiege et al. (US 20130197878A1 hereinafter Fiege)). Fang-Fang Yin discloses to provide for dose prediction models that are established by learning from databases of patient treatment plans generated by human expert planners, Pareto-optimal plans generated by the multi-objective optimizations or similar systems, and by learning from published radiation treatment guidelines, personal treatment planning knowledge, etc. (‘282; Para 0053). Walk discloses a method for analyzing at least one test sample, wherein said test sample comprises at least one compound, said method comprising the steps of: a) providing at least one test sample comprising at least one compound; b) determining said at least one compound in said test sample whereby raw results are generated; and c) analyzing the raw results obtained in step b. Fiege discloses PARETO (Pareto-Aware Radiotherapy Evolutionary Treatment Optimization), makes use of a multi-objective genetic algorithm capable of optimizing several objective functions simultaneously and mapping the structure of their trade-off surface efficiently and in detail. PARETO generates a database of Pareto non-dominated solutions and allows the graphical exploration of trade-offs between multiple planning objectives during IMRT treatment planning PARETO offers automated and truly multi-objective treatment plan optimization, which does not require any objective weights to be chosen, and therefore finds a large sample of optimized solutions defining a trade-off surface, which represents the range of compromises that are possible. However, the prior art does not disclose filtering designs that are not on the Pareto frontier; communicating the Pareto frontier designs and identifying a second level Pareto Frontier. Claims 476-479, 481-493, 495-496 would be allowable if rewritten to overcome the rejection(s) under 35USC112(a) and 35USC 112(b), as set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. See 37 CFR 1.111(b) and MPEP § 707.07(a). Response to Arguments Applicant’s arguments, see Remark, filed 08/14/2025, with respect to the rejection(s) of claim(s) 487 under 35USC112(f) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2009/0292554 A1, Nov. 26, 2009; Schultz et al.; Method and Apparatus for planning and management of clinical trials. WO 2019/144116 A1, July 25, 2019, Hoos, William Arthur et al.; Platforms for conducting virtual trials. 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 HIEP VAN NGUYEN whose telephone number is (571)270-5211. The examiner can normally be reached Monday through Friday between 8:00AM and 5:00PM EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason B Dunham can be reached on 5712728109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /HIEP V NGUYEN/Primary Examiner, Art Unit 3686
Read full office action

Prosecution Timeline

Jan 30, 2021
Application Filed
Jan 13, 2024
Non-Final Rejection — §112
Jul 18, 2024
Response Filed
Oct 16, 2024
Final Rejection — §112
Apr 01, 2025
Request for Continued Examination
Apr 03, 2025
Response after Non-Final Action
Apr 09, 2025
Non-Final Rejection — §112
Aug 14, 2025
Response Filed
Nov 23, 2025
Final Rejection — §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
55%
Grant Probability
84%
With Interview (+29.3%)
4y 2m
Median Time to Grant
High
PTA Risk
Based on 1025 resolved cases by this examiner. Grant probability derived from career allow rate.

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