DETAILED ACTION
Comments
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.
Election/Restrictions
Applicant’s election without traverse of Species A-1 and B-2 in the reply filed on 27 April 2026 is acknowledged. In view of a lack of search burden, the species in each of Categories A and B are rejoined.
Claims 1-21 are pending in the instant application.
Claims 1-21 are 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.
Claim(s) 1-21 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 1-19 are drawn to methods, claim 20 is drawn to a non-transitory computer readable-medium, and claim 21 is drawn to a system comprising at least one processor.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1 : YES) 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 step of receiving the target product.
The independent claims recite the mental step of executing a graph traversal thread.
The independent claims recite the mental step of requesting a first set of reactant predictions for the target product.
The independent claims recite the mental step of executing a molecule expansion thread.
The independent claims recite the mental step of determining the first set of reactant predictions.
The independent claims recite the mental step of storing the first set of reactant predictions as at least part of the set of reactions.
Claim 2 recites the mental step of requesting a second set of reactant predictions for a reactant prediction from the first set of reactant predictions.
Claim 2 recites the mental step of executing a second molecule expansion thread.
Claim 2 recites the mental step of determining the second set of reactant predictions.
Claim 3 recites the mental step of storing the second set of reactant predictions with the first set of reactant predictions as at least part of the set of reactions.
Claim 4 recites the mental steps of accessing a set of training reactions and training the reactant prediction model using the set of training reactions.
Claim 5 recites the mental step of incrementally augmenting the set of training reactions during training.
Claims 6 and 7 recite the mental steps of augmenting a first and a second portion of the of the set of training reactions, respectively.
Claims 6 and 7 recite the mental steps of training the reactant prediction model using the augmented first and second portions (respectively) of the set of training reactions using the product as input and the set of reactions as output.
Claims 8 and 9 recite the mental steps of augmenting a first and a second portion of the of the set of training reactions, respectively.
Claims 8 and 9 recite the mental steps of training the reactant prediction model using the augmented first and second portions (respectively) of the set of training reactions using the set of reactions as input and the product as output.
Claim 10 recites the mental step of executing the graph traversal thread.
Claim 10 recites the mental step of receiving the request for the first set of reactant predictions for the target product.
Claim 10 recites the mental step of executing the molecule expansion thread to determine the first set of reactant predictions.
Claim 11 recites the mental step of requiring the orchestrator thread to transmit the determine first set of reactant predictions to the graph traversal thread.
Claim 12 recites the mental step of requiring the orchestrator thread to store the first set of reactant predictions to maintain a retrosynthesis graph.
Claim 13 recites the mental step of executing a tree search on the retrosynthesis graph to identify a set of possible routes through the retrosynthesis graph.
Claim 14 recites the mental step of updating the blacklist of reactant-product pairs.
Claim 15 recites the mental step of omitting one or more additional routes from the set of possible routes by determining that the one or more additional routes containing a reaction in a reaction-product pair is in the blacklist.
Claim 16 recites the mental step of requiring the reactant prediction model to be a trained single-step retrosynthesis model that determines the first set of reactant predictions based on the target product .
Claim 17 recites the mental steps of requiring a trained forward prediction model and a trained reverse prediction model.
Claim 18 recites the mental steps of constraining the types of input reactants and/or reactant predictions.
Claim 19 recites the mental steps of predicting either the reactants or the products based on whether there was a forward or reverse model and storing the results.
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) 1-21 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.
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 1-21 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. 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 1-21 is/are not patent eligible.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwaller et al. [arXiv; 17 October 2019; on IDS].
Claim 1 is drawn to a computerized method for determining a set of reactions to produce a target product. The method comprises receiving the target product and executing a graph traversal thread. The method comprises requesting a first set if reactant predictions for the target product. The method comprises executing a molecule expansion thread. The method comprises determining the first set of reaction predictions. The method comprises storing the first set of reactant predictions as at least part of the set of reactions.
Claim 20 is drawn to similar subject matter as claim 1, except claim 20 is drawn to a non-transitory computer readable medium.
Claim 21 is drawn to similar subject matter as claim 1, except claim 21 is drawn to a system comprising at least one processor.
The document of Schwaller et al. studies predicting retrosynthetic pathways using a combined linguistic model and hyper-graph exploration strategy [title]. The abstract of Schwaller et al. teaches retrosynthesis route planning. The last paragraph before Section 2 on page 4 of Schwaller et al. and Section 2.1 of Schwaller et al. teach review of several retrosynthetic problems for given targets. Sections 2.1 and 4.5 of Schwaller et al. teach a multi-step workflow using a hypergraph (i.e. a directed acyclic graph of all possible retrosynthesis of a given target and finding the optimal route in an iterative manner). The top of page 5, page 18, algorithm 1, and Figure 1 and 8 of Schwaller et al. teach a multi-step retrosynthetic workflow to generate a precursor set (i.e. a first set of reactant predictions). In this section, Schwaller et a. teaches that the resulting single-step retrosynthetic predictions are filtered and combined for ranking all the options. In this section, Schwaller et al. teaches that if the predicted reactants are commercially available, a solution is stored and exploration (i.e. expansion) of the tree is complete. Schwaller et al. teaches that otherwise, the predicted precursors are used as new initial targets, and the procedure is repeated.
While Schwaller et al. suggests computer assistance, Schwaller et al. does not teach all of the computer limitations of the instantly rejected claims.
With regard to claims 2-3, The top of page 5, page 18, algorithm 1, and Figure 1 and 8 of Schwaller et al. teach a multi-step retrosynthetic workflow to generate a precursor set (i.e. a first set of reactant predictions). In this section, Schwaller et a. teaches that the resulting single-step retrosynthetic predictions are filtered and combined for ranking all the options. In this section, Schwaller et al. teaches that if the predicted reactants are commercially available, a solution is stored and exploration (i.e. expansion) of the tree is complete. Schwaller et al. teaches that otherwise, the predicted precursors are used as new initial targets, and the procedure is repeated.
With regard to claims 4-9 and 16-19, Figure 8 of Schwaller et al. illustrates augmented portions of a training set in that a plurality of training reactions (i.e. each reaction with distinct sets of reagents and products) are used to train the reaction prediction model. The web-like structure of Figure 8 of Schwaller et al. teaches that either the reactants (i.e. reagents) or the products can be used to train a forward-predicting, or reverse predicting model to predict either the products or reactants, respectively.
With regard to claim 10-15, Figures 2-3 on page 7 of Schwaller et al. illustrate execution, transmission, and storage of a graph traversal thread with reactant predictions and a resultant product for a retrosynthesis graph. Section 2.1 of Schwaller et al. teaches a Monte Carlo Tree Search algorithm to provide assistance in identifying routes through the retrosynthesis graph. Figure 2 of Schwaller et al. also teaches surveying previous work from reaction routes with accepting certain reactant-product pairs and omitting (i.e. blacklisting) other reactant-product pairs that are not accurate.
It would have been obvious at the time of the effective filing date of the instant application to modify the reaction retrosynthesis algorithm of Schwaller et al. by use of automation wherein the motivation would have been that automating manual processes facilitates efficiency and accuracy [In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958)].
Related Prior Art
The document of Segler et al. [Workshop – ICLR, 2017, 4 pages; on IDS] studies the impact of the software “AlphaChem” on chemical synthesis planning with tree search and deep neural network policies. The abstract of Segler et al. teaches use of “AlphaChem” in analysis of retrosynthesis coupled with neural networks and Monte Carlo tree searches to best identify reactants that form products. Figure 1 on page 2 of Segler et al. is an example of using “AlphaChem” in this manner.
The document of Lin et al. [Chem. Sci., 3 March 2020, volume 11, pages 3355-3364; on IDS] studies automatic retrosynthesis route planning using template-free models [title]. Lin et al. teaches the use of the software “AutoSynRoute” in combination with transformers and Monte Carlo tree search algorithms to identify the reactants that produce a desired product. Figure 1 on page 3356 of Lin et al. teaches the schematic of the architecture of the algorithm.
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 2 August 2026
Prosecution Insights