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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 23, 2026 has been entered.
Status of Claims
This action is in response to the RCE and the amendment filed February 23, 2026. Claims 1-6 and 11-18 are pending, of which claims 1-4, 6, and 13-15 have been amended and claims 7-10, 19, and 20 have been canceled.
Claim Objections
Claims 1 and 13 are objected to because of the following informalities:
In claim 1, the language “frequent” is unclear. The term “frequent” is a subjective term that is not defined by the claim, and the specification does not provide an objective standard for ascertaining the meaning of the term “frequent” such that one of ordinary skill in the art would be reasonably apprised of the scope of the claim. The language “patternserrors” at line 39 and “erroridentified” at line 43 should read --patterns errors-- and --error identified--, respectively. In addition, the language “based on at least one identified frequent error identified misunderstood concepts determined from the errors and patterns of steps” appears to be missing a word between identified and misunderstood and/or the language does not make grammatical sense. The examiner notes that a similar amendment was made to claim 13 in which the language was amended to read “based on identified misunderstood concepts determined from the errors and patterns of steps.” It is suggested that similar language be used for claim 1. Appropriate correction is required.
Claims 1 and 13 include the language “wherein the user tool replaces curved arrows used in paper construction of chemical mechanisms with direct movement of electrons.” This language is confusing and/or ambiguous. It is unclear whether actual curved arrows are presented on the interface and replaced when manipulated; or, whether the direct movement of electrons on the interface is used in lieu of curved arrows (which are used on paper). Appropriate correction and/or clarification is required.
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.
Claims 6 and 14-18 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In re claim 6, the claim recites the limitation “the display of the authoring computer device or the user computer device” at line 2. There is insufficient antecedent basis for this limitation in the claim.
In re claims 14 and 15, the claims recite “a user” at line 3. However, claim 13 also recites “a user.” Therefore, it is unclear whether the user recited in claims 14 and 15 is the same as or different than the user recited in claim 13. For purposes of examination they are interpreted as being the same user. The examiner suggests amending this limitation to read --the user--.
Claims 16-18 depend from a rejected base claim, and therefore are rejected for at least the reasons provided for the base claim.
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 1-6 and 11-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination” to determine whether there are additional elements that “transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’-i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter.
Claims 1-18 are directed to method and a system. As such, the claimed invention falls into the broad categories of invention. However, even claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. at 309.
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, “the present invention is related to computer processor applications for teaching chemical reaction mechanisms.” (Specification par. 2).
Independent claim 1 recites the following (with emphasis):
A method comprising:
executing, via a processor of an authoring computer device, an authoring tool to create a chemical mechanism problem, wherein the authoring tool provides a graphical user interface (GUI) that displays a first listing of atoms and molecules;
receiving user selections of atoms and molecules from the first listing and placing them in a design region to create a chemical rendering of starting compounds;
receiving, via the authoring tool, author-defined data for each step of the chemical mechanism problem, the author-defined data including a code for each move characterizing a type of chemical transformation, a score to be awarded for the step, a goal order that indicates a position of the step in the chemical mechanism problem, prerequisite conditions that must be satisfied before the step can be attempted, and a display message for the step, wherein the author- defined data defines both correct steps and incorrect steps of the chemical mechanism problem;
receiving and processing a series of inputs from a user tool on a user computer device, wherein the inputs manipulate atoms and bonds in the chemical rendering of starting chemical compounds to generate one or more intermediate structures, wherein the user tool replaces curved arrows used in paper construction of chemical mechanisms with direct movement of electrons, a user selecting a chemical bond attached to a first source atom and a second atom and dragging the bond off of the second atom and onto a target atom to form a bond thereto, or dragging electrons from a lone pair on a first atom onto a target atom for forming a bond thereto;
automatically adjusting electric charges on atoms in the chemical rendering after a user rearrangement of atoms or bonds;
encoding intermediate structures generated by the user using simplified molecular-input line-entry system (SMILES) strings to monitor which structures were formed while the user was attempting to solve the chemical mechanism problem;
tracking user inputs in real-time, characterizing moves as correct, incorrect, or sub- optimal based on constructing a decision tree from the tracked user inputs, wherein user actions in generating intermediate structures are used to create parts of the decision tree;
storing move data, including the decision tree and the SMILES-encoded intermediate structures, in a structured format in a centralized computer device;
analyzing move data from a plurality of users to identify user errors and learning patterns errors and patterns of steps by parsing individual moves into chemical concepts from a database of chemical concepts and mapping user success or failure in identifying the chemical concepts; and
generating a feedback report, wherein the feedback report provides individualized suggestions to a user based on at least one identified frequent error identified misunderstood concepts determined from the errors and patterns of steps.
The underlined portions of claim 1 generally encompass the abstract idea, with substantially identical features in the system of claim 13, which implements these operations using an authoring device, a plurality of networked computers, a monitoring tool, and a centralized computer. Claims 2-6 and 14-18 further define the abstract idea. Under prong 2, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity. The claims recite a method of teaching students chemical mechanism by providing problems to be solved via an authoring tool (e.g., by a student) and monitoring the efforts to solve using a monitoring tool to identify error, learning patterns, and generate feedback (e.g., by a teacher). This is a method of organizing human activity because it is drawn to a method of managing personal behavior of a student to learn chemical mechanisms through problem solving (i.e., teaching). Furthermore, the method can be performed in the mind of a human teacher/student and/or with the aid of pencil and paper.
Providing problems to users to solve and monitoring their responses, including some form of scoring or grading the solution as a means of teaching, training, and imparting knowledge and feedback is basic to the learning process. The method and system of the instant application simply seek to automate this well-known activity using generic computers recited at a high level of generality, and, therefore, the claims are directed to the abstract concept sub-grouping of "managing personal behavior or relationships or interactions between people" including teaching and following rules or instructions, for example, an authoring and/or solving problems and monitoring the activity to track a user’s progress in learning.
But for the recitation of an authoring computer device having a processor and a display, a user computer device, a graphical user interface, a centralized computer device, a plurality of networked user devices, nothing in the claimed method or operations precludes the recitations from practically being performed in the mind (or with the aid of pen and paper). For example, an authoring tool can be a pencil and paper wherein the mechanism is formulated in the mind a teacher, tutor, or instructor, thinking about a problem and the answers then writing down the problems and answers. Similarly, applying, tracking, storing, analyzing, generating may include a teacher looking at a student work and thinking in their mind whether the solution is correct and writing down the result and writing down feedback for the student. The steps and operations of receiving and processing a series of inputs from a user tool to manipulate atoms and bonds in the chemical rendering of starting chemical compounds to generate one or more intermediate structures with direct movement of electrons and selecting a chemical bond attached to a first source atom and a second atom and dragging the bond off of the second atom and onto a target atom to form a bond thereto, or dragging electrons from a lone pair on a first atom onto a target atom for forming a bond thereto can all be performed either by thinking of these manipulation and/or drawing them. Similarly, automatically adjusting electric charges on atoms in the chemical after a user rearrangement of atoms or bonds can be performed in the mind or on paper. Encoding intermediate structures generated by the user using simplified molecular-input line-entry system (SMILES) strings to monitor which structures were formed while the user was attempting to solve the chemical mechanism problem can be performed by a teacher using short hand recording the information on paper using the SMILEs system. Tracking user inputs in real-time, characterizing moves as correct, incorrect, or sub- optimal based on constructing a decision tree from the tracked user inputs, wherein user actions in generating intermediate structures are used to create parts of the decision tree also can be performed by a teacher observing whether an answer is correct and jotting down the observations on paper to create the decision tree. Analyzing move data from a plurality of users to identify user errors and learning patterns errors and patterns of steps by parsing individual moves into chemical concepts from a database of chemical concepts and mapping user success or failure in identifying the chemical concepts; and generating a feedback report, wherein the feedback report provides individualized suggestions to a user based on at least one identified frequent error identified misunderstood concepts determined from the errors and patterns of steps can also be performed by a teacher. If a claim, under its broadest reasonable interpretation, covers performance of recitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
Therefore, under prong 2, the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity.
Under prong 2, the instant claims do not integrate the abstract idea into a practical application. In other words, the claims do not (1) improve the functioning of a computer or other technology, (2) effect a particular treatment or prophylaxis for a disease or medical condition (3) are not applied with any particular machine, (4) do not effect a transformation of a particular article to a different state, and (5) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception, the claims are directed to the judicially recognized exception of an abstract idea. See MPEP §§ 2106.05(a)-(c), (e)-(h).
While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not affect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. In recent cases, the CAFC has made it clear that the term “practical application” means providing a technical solution to a technical problem in computers or networks per se. To be patent-eligible, the claimed invention must improve the computer as a computer or network as a network. Applicant’s invention does not meet these requirements. Applicant’s invention uses computers and networks to present problems, capture users attempts to solve them, analyze the correctness, and communicate feedback. This does not improve the computer qua computer or the network qua network. Instead, Applicant’s invention uses generic computers and networks as a tool to implement the abstract idea. As such, the claims are not eligible under Section 101.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional elements or combination of elements other than the abstract idea per se amounts to no more than: a system having computers and displays configured to perform the abstract idea. Applicants claims include an authoring computer device having a processor and a display, a user computer device, a graphical user interface, a centralized computer device, a plurality of networked user devices. Applicant’s specification indicates the computers are general purpose in nature. See, ¶¶47-51 &74. As a result, nothing in Applicant’s specification indicates the computer system performs anything other than well understood, routine, and conventional functions, such as receiving, storing, and processing data. See, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (ed. Cir. 2016) (“Nothing in the claims, understood in light of the [S]pecification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Alice, 573 US. at 224—26 (receiving, storing, sending information over networks insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1340, 1355 (ed. Cir, 2014) (That a computer receives and sends the information over a network-—with no further specification—is not even arguably inventive.”). At best, Applicant’s claimed subject matter simply uses generic processing circuitry to perform the abstract idea of converting input data from one form to another (e.g., student answers to error information and/or feedback reports). As noted above, the use of a generic computer system does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
As a result, these elements amount to generic, well-understood and conventional computer components. As demonstrated by Berkheimer v. HP, such computer functions cannot save an otherwise ineligible claim under §101. In short, each step does no more than require a generic computer to perform generic computer functions. The claimed features relating to receiving inputs and storing moves and generating outputs represent extra-solution activities are not particular and are recited at a high level of generality.
Considered as an ordered combination, only generic computer components are present. Viewed as a whole, the claims simply recite the concept of making judgments by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. Under relevant court precedents, that is not enough to transform an abstract idea into a patent-eligible invention.
As a result, claims 1-6 and 14-18 are not patent eligible.
Examiner’s Note
The prior art of record does not anticipate or obviate the following recitations “receiving user selections of atoms and molecules from the first listing and placing them in a design region to create a chemical rendering of starting compounds; receiving, via the authoring tool, author-defined data for each step of the chemical mechanism problem, the author-defined data including a code for each move characterizing a type of chemical transformation, a score to be awarded for the step, a goal order that indicates a position of the step in the chemical mechanism problem, prerequisite conditions that must be satisfied before the step can be attempted, and a display message for the step, wherein the author- defined data defines both correct steps and incorrect steps of the chemical mechanism problem; receiving and processing a series of inputs from a user tool on a user computer device, wherein the inputs manipulate atoms and bonds in the chemical rendering of starting chemical compounds to generate one or more intermediate structures, wherein the user tool replaces curved arrows used in paper construction of chemical mechanisms with direct movement of electrons, a user selecting a chemical bond attached to a first source atom and a second atom and dragging the bond off of the second atom and onto a target atom to form a bond thereto, or dragging electrons from a lone pair on a first atom onto a target atom for forming a bond thereto; automatically adjusting electric charges on atoms in the chemical rendering after a user rearrangement of atoms or bonds; encoding intermediate structures generated by the user using simplified molecular-input line-entry system (SMILES) strings to monitor which structures were formed while the user was attempting to solve the chemical mechanism problem; tracking user inputs in real-time, characterizing moves as correct, incorrect, or sub- optimal based on constructing a decision tree from the tracked user inputs, wherein user actions in generating intermediate structures are used to create parts of the decision tree; storing move data, including the decision tree and the SMILES-encoded intermediate structures, in a structured format in a centralized computer device; analyzing move data from a plurality of users to identify user errors and learning patterns errors and patterns of steps by parsing individual moves into chemical concepts from a database of chemical concepts and mapping user success or failure in identifying the chemical concepts; and generating a feedback report, wherein the feedback report provides individualized suggestions to a user based on at least one identified frequent error identified misunderstood concepts determined from the errors and patterns of steps” in combination with the rest of the elements in claim 1. Similar features are found in claim 13. The remaining claims 2-6, 11, 12, and 14-18 depend from claims 1 and 13 and therefore also include these features.
Response to Arguments
Applicant’s arguments filed February 23, 2026, have been fully considered.
The objection to claims 3, 4, and 6 are withdrawn in view of Applicant’s amendments; however, new objections to 1 and 13 are made in view Applicant’s amendments. The examiner notes Applicant’s remarks indicated that the term “frequent” has been removed from the claims. However, the term still appears in claim 1 and has only been deleted in claim 13. The examiner suggests also removing this term from claim 1.
The previous rejection of claims 1-5 and 7-12 as indefinite under 35 U.S.C. § 112(b) is withdrawn in view of Applicant’s amendments; however, a new rejection of claims 6 and 14-18 have been made in view of the amendments.
Applicant’s arguments with respect to the rejection of claims 1-6 and 11-18 under 35 U.S.C. § 101 have been considered, but are not persuasive. The rejection has been updated in view of Applicant’s amendments.
Applicant argues method of claim 1 is not directed to an abstract idea. In support, Applicant argues “The Office Action characterizes the claims as directed to teaching and mental processes. That characterization omits the claims' recitation of a specific computer-implemented molecular state manipulation and validation engine that (i) captures user-driven electron/bond manipulations as machine events, (ii) converts each intermediate molecular state into a standardized machine- readable molecular encoding (SMILES), and (iii) builds and stores a state-transition decision tree from those encoded molecular states for automated downstream analysis. These are technical operations on computer-represented molecular graphs and data structures, not mental steps of instruction.” However, all of these operations can be performed mentally and/or with aid of pen and paper. The operations are only “technical” in the sense that a computer is recited as implementing them. The computer is not special and is merely used as a tool to carry out these operations in an automated fashion.
Applicant the claims are directed to a “technological improvement in how a computer represents, validates, and tracks molecular transformations during interactive manipulation. The claims require a particular interaction model (direct bond/electron dragging), automatic post-manipulation charge adjustment, and real-time validation feedback that causes the rendering to revert (automatic bond re-formation/breaking) with defined audiovisual indicators. This is not merely presenting questions and grading. Instead, it is an improved computer-mediated manipulation and consistency-checking workflow for molecular graph states.” Applicant characterizes these claims as providing a technical improvement. However, Applicant has not explained what the actual improvement is. Moreover, the interaction model and manipulation are not a technological improvement. It does not improve how the computer operates. It merely uses the computer as a tool to carry out and implement the operations (which constitute the abstract idea). The manipulation is facilitated by the computer, but does not represent and advance of technology of the computer or the interface, and merely automates the chemical manipulation process using the computer as the tool to implement the manipulation. This is not a technical improvement.
Applicant continues “Even if the claims are viewed as involving an abstract idea, they integrate any such idea into a practical application. The recited SMILES encoding of user-generated intermediate structures is used to monitor which molecular structures were formed during solving and to construct a decision tree from the tracked user inputs. In other words, the system transforms transient GUI manipulations into persistent, comparable, machine-readable molecular state representations and organizes them as a state-transition structure (decision tree). This is a concrete technical application that enables automated state comparison, storage, and analysis that cannot be achieved by pen-and-paper teaching workflows.” The examiner respectfully disagrees. The Examiner notes Applicant’s remarks make reference to “concrete”; however, the "useful, concrete and tangible result" test used to determine patent eligibility has been replaced by the Supreme Court's two-part test in Alice Corp. v. CLS Bank International. Therefore, whether the application is “concrete” or note is not determinative. According to the two-part test, the claims are examined to determine whether they recite an abstract concept, and if an abstract concept is recites whether there is a practical application of the concept or additional elements such that the claims as a whole amounts to significantly more than the abstract concept. Here the steps pointed to by Applicant are directed to the abstract concept (albeit performed by a computer). The use of a computer to automate operations is not a practical application.
Applicant concludes “Under Alice Step 2B, the claims recite an inventive concept in the ordered combination of elements: (a) author-defined step data including move codes, goal order, prerequisites, and correct/incorrect steps; (b) a molecular manipulation paradigm replacing curved-arrow input with direct bond/electron dragging between specific atoms; (c) automatic charge adjustment after rearrangement; (d) SMILES encoding of intermediate molecular states for monitoring; (e) automatic rendering reversion for incorrect bond-making/bond-breaking with jagged-edge and audio indicators; (f) decision-tree construction from user-generated intermediate states; and (g) parsing moves into chemical concepts from a concept database with success/failure mapping. This ordered combination is not a generic computer performing generic 'receive/analyze/display' functions. Instead, it is a specific, domain-constrained molecular state-processing pipeline.” However, each of these steps/operations, as explained above, is an automation of the abstract idea using general purpose computers. Applicant however did not invent computer-based training, chemical graphical user interfaces, tracking student errors, or any of these operations (such as use of a SMILES for chemical encoding).1 Applying rules specific to chemical analysis and education is an improvement to the abstract process of teaching and/or how people learn chemistry and not a solution to a problem of how to improve the function of computers/networks, (i.e., a technical solution). The improvement is not technical but an abstract one. No matter how much of an advance in the chemistry or educational field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting. See, e.g., SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. 2018).
Applicant’s arguments with respect to obviousness of claims 1-6 and 11-18 are considered persuasive, therefore, the rejections under Section 103 have been withdrawn in view of the amendment and Applicant’s remarks.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew Bodendorf whose telephone number is (571) 272-6152. The examiner can normally be reached M-F 9AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached on (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
1 See, “SMILES, a Chemical Language and Information System. 1. Introduction to Methodology and Encoding Rules” by David Weininger, 0095-23381881 1628-003 1, American Chemical Society 1988.