DETAILED ACTION
Comments
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
The amendments to the claims filed on 30 April 2026 are entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Claims 1-25 are pending and examined in the instant Office action.
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.
The following rejection is reiterated:
Claim(s) 1-25 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea/law of nature/natural phenomenon without significantly more. Claims 1-7 and 22-25 are drawn to methods, claims 8-14 are drawn to a computer-program product on non-transitory computer-readable media, and claims 15-21 are drawn to systems comprising processors.
In accordance with MPEP § 2106, claims found to recite statutory subject matter are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon (Step 2A, Prong 1). In the instant application, the claims recite the following limitations that equate to an abstract idea:
The independent claims recite the mental steps of obtaining data in the form of tuples.
The independent claims recite the mental steps of constructing a ZDD or BDD diagram.
The independent claims recite the mental steps of updating the state-action value function and repeating the updating set a predetermined number of times.
Claims 2, 9, 16, 23, and 25 recite mathematical equations for updating parameters.
Claims 3, 10, and 17 recite the mental steps of generating the ZDD for computational material discovery for generating new molecular structures satisfying target property values.
Claims 4, 11, and 18 recite the mental steps of the state being a current molecule, the action being a chemical reaction, and the reward being a property to be maximized.
Claims 5, 12, and 19 recite the mental step of constraining the chemical reaction to yield a plurality of candidates.
Claims 6, 13, and 20 recite the mental steps of selecting the candidate having a lowest synthetic accessibility score as the product.
Claim 7, 14, and 21 recite the mental step of the Fitted Q-iteration with ZDD being employed in offline reinforcement learning.
These recitations are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) and comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships. Therefore, these limitations fall under the “Mental process” and “Mathematical concepts” groupings of abstract ideas. Merely reciting that a mental process is being performed in a generic computer environment does not preclude the steps from being performed practically in the human mind or with pen and paper as claimed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then if falls within the “Mental processes” grouping of abstract ideas. As such, claim(s) 1-25 recite(s) an abstract idea/law of nature/natural phenomenon (Step 2A, Prong 1 : YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then 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). This judicial exception is not integrated into a practical application because the claims do not recite an additional element that reflects an improvement to technology or applies or uses the recited judicial exception to affect a particular treatment for a condition. Rather, the instant claims recite additional elements that amount to mere instructions to implement the abstract idea in a generic computing environment or mere instructions to apply the recited judicial exception via a generic treatment.
There are no limitations that indicate that the claimed analysis engine or the formats of the provided data require anything other than generic computing systems. As such, these limitations equate to mere instructions to implement the abstract idea on a generic computer that the courts have stated does not render an abstract idea eligible in Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. As such, claims 1-25 is/are directed to an abstract idea/law of nature/natural phenomenon (Step 2A, Prong 2 : NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that equate to mere instructions to apply the recited exception in a generic way or in a generic computing environment.
As discussed above, there are no additional limitations to indicate that the claimed analysis engine requires anything other than generic computer components in order to carry out the recited abstract idea in the claims. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. MPEP 2106.05(f) discloses that mere instructions to apply the judicial exception cannot provide an inventive concept to the claims. The additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the claims do not amount to significantly more than the judicial exception itself (Step 2B : No). As such, claims 1-25 is/are not patent eligible.
Response to arguments:
Applicant's arguments filed 4 December 2025 have been fully considered but they are not persuasive.
Applicant’s central argument is that the use of ZDDs revolutionized that manner in which Q-fitted iteration functions are calculated by reducing computational time and increasing computational efficiency. This rejection has been reinstated because while it may be true that ZDDs improve calculation efficiency of a Q function, a Q function, itself, is a mathematical judicial exception. A judicial exception that is an improvement to the manner in which the same judicial exception is conventionally calculated remains a judicial exception.
Claim Rejections - 35 USC § 103
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.
The following rejection is reiterated:
35 U.S.C. 103 Rejection #1:
Claim(s) 1-2, 8-9, 15-16, and 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaeta et al. [Applied Mathematical Modelling, volume 40, 2016, pages 9183-9196; on IDS] in view of Minato [NTT LSO Laboratory, 30th ACM/IEEE Design Automation Conference, 1993, pages 272-277].
The independent claims are drawn to an algorithm for estimating a parameterized state-action value function for a Fitted Q-iteration. The algorithm comprises obtaining a set of tuples D and a discount factor, wherein each of the set of tuples includes a state, an action, a reward, and a resulting state. The algorithm comprises constructing a ZDD or BDD of feature vectors for each of the resulting states of the set of tuples. A feature vector is a sparse bit vector and there is a set of actions applicable to a state. The technique comprises updating parameters of a parameterized state-action value function wherein the updating of the parameters comprises computing the function based on the constructed ZDD and repeating the updating step a predetermined number of times of increasing t.
Each of claims 2, 9, 16, 23, and 25 recites equations for updating the parameters.
The document of Gaeta et al. studies fitted Q-iteration by functional networks for control problems [title]. Paragraph 2 of Section 2.1 of Gaeta et al. recites the use of parametric tuples to analyze Q-functions. Section 3 on pages 9185-9186 of Gaeta et al. acquiring the equivalent of the recited tuple data, and updating the parameters using equations that are obvious variants of the recited equations. Paragraph 3 of the introduction of Gaeta et al. teaches using sparse sets of tuples. Paragraph 1 of Section 3.2 of Gaeta et al. teaches expressing tuples as vectors. Figure 9 on page 9191 of Gaeta et al. illustrates the results of updating the data a predetermined number of times within a given time frame.
Gaeta et al. does not teach computing the Q function using a BDD or ZDD.
The document of Minato studies zero-suppressed BDDs for set manipulation in combinatorial problems [title]. The figures of Minato illustrate BDDs and ZDDs.
It would have been obvious to someone of ordinary skill in the art at the time of the effective filing date of the instant application to modify the fitted Q-iteration calculations of Gaeta et al. by use of the BDDs and ZDDs of Minato wherein the motivation would have been that the diagrams of Minato are additional mathematical techniques that facilitate the fitted Q-iteration calculations of Gaeta et al. [Figures of Minato]. In addition, it would have been obvious to try the ZDD of Minato on the Q functions of Gaeta et al. because the ZDD mathematic al technique of Minato is robust and generally applicable to the Q-iteration calculations of Gaeta et al. There would have been a reasonable expectation of success in combining Gaeta et al. and Minato because both studies are analogously applicable to using specific mathematical techniques to analyze state functions.
Response to arguments:
Applicant's arguments filed 30 April 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach or suggest basing the Q function on ZDD. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the motivation for combining Gaeta et al. and Minato would have been that the diagrams of Minato are additional mathematical techniques that facilitate the fitted Q-iteration calculations of Gaeta et al. [Figures of Minato]. In addition, it would have been obvious to try the ZDD of Minato on the Q functions of Gaeta et al. because the ZDD mathematic al technique of Minato is robust and generally applicable to the Q-iteration calculations of Gaeta et al. There would have been a reasonable expectation of success in combining Gaeta et al. and Minato because both studies are analogously applicable to using specific mathematical techniques to analyze state functions.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s argument of the secondary consideration of unexpected results of computational efficiency in calculating the Q-iteration function needs to be supported by more evidence linking the alleged improvement to a claim limitation.
The following rejection is reiterated:
35 U.S.C. 103 Rejection #2:
Claim(s) 3, 7, 10, 14, 17, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaeta et al. in view of Minato as applied to claims 1-2, 8-9, 15-16, and 22-25 above, in further view of Gottipati et al. [arXiv:2001.08116v1, 20 May 2020; on IDS].
Gaeta et al. and Minato make obvious conducting fitted Q-iteration calculations with the assistance of BDDs and ZDDs, as discussed above.
Gaeta et al. and Minato do not apply their analyses to chemicals.
The document of Gottipati et al. studies learning to navigate the synthetically accessible chemical space using reinforcement learning [title]. Figure 1 of Gottipati et al. teaches using machine learning to generate new molecular structures satisfying target properties using chemical reactions. Figure 1 of Gottipati et al. illustrates a plurality of candidates. Page 2 of Gottipati et al. suggests that the product with the lowest synthetic accessibility score is selected.
It would have been obvious to someone of ordinary skill in the art at the time of the effective filing date of the instant application to modify the fitted Q-iteration calculations of Gaeta et al. and the BDDs and ZDDs of Minato by use of the application of machine learning to chemical reactions using reinforcement learning of Gottipati et al. wherein the motivation would have been that Gottipati et al. gives a real-world biological/chemical application of the mathematical calculations of Gaeta et al. and Minato [abstract and Figure 1 of Gottipati et al.].
Response to arguments:
Applicant's arguments filed 30 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Gottipati et al. does not overcome the alleged deficiencies of the initial obviousness prior art rejection. This argument is not persuasive because the initial obviousness prior art rejection is not deficient.
The following rejection is reiterated:
35 U.S.C. 103 Rejection #3:
Claim(s) 4-6, 11-13, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaeta et al. in view of Minato in view of Gottipati et al. as applied to claims 1-3, 7-10, 14-17, and 21-25 above, in further view of Takeda et al. [US PGPUB 2019/0286791 A1; on attached 892 form].
The claims recite that each feature vector in a Morgan fingerprint.
Gaeta et al. and Minato make obvious conducting fitted Q-iteration calculations with the assistance of BDDs and ZDDs, as discussed above.
Gaeta et al. and Minato do not apply their analyses to chemicals.
The document of Gottipati et al. studies learning to navigate the synthetically accessible chemical space using reinforcement learning [title]. Figure 1 of Gottipati et al. teaches using machine learning to generate new molecular structures satisfying target properties using chemical reactions. Figure 1 of Gottipati et al. illustrates a plurality of candidates. Page 2 of Gottipati et al. suggests that the product with the lowest synthetic accessibility score is selected.
Gaeta et al. and Minato do not teach that each feature vector in a Morgan fingerprint.
The document of Takeda et al. studies creation of new chemical compounds having desired properties using accumulated chemical data to construct a new chemical structure for synthesis [title]. The abstract of Takeda et al. teaches using feature vectors to create a regression model. Paragraph 24 of Takeda et al. teaches the use of Morgan fingerprints.
It would have been obvious to someone of ordinary skill in the art at the time of the effective filing date of the instant application to modify the fitted Q-iteration calculations of Gaeta et al., the BDDs and ZDDs of Minato, and the application of machine learning to chemical reactions using reinforcement learning of Gottipati et al. by use of the Morgan fingerprints of Takeda et al. wherein the motivation would have Morgan fingerprints are an additional mathematical tool to facilitate the analysis of feature vectors [abstract and paragraph 24 of Takeda et al.].
Response to arguments:
Applicant's arguments filed 30 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Gottipati et al. and Takeda et al. do not overcome the alleged deficiencies of the initial obviousness prior art rejection. This argument is not persuasive because the initial obviousness prior art rejection is not deficient.
E-mail Communications Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Russell Negin, whose telephone number is (571) 272-1083. This Examiner can normally be reached from Monday through Thursday from 8 am to 3 pm and variable hours on Fridays.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, Larry Riggs, Supervisory Patent Examiner, can be reached at (571) 270-3062.
/RUSSELL S NEGIN/Primary Examiner, Art Unit 1686 20 July 2026
Prosecution Insights