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 .
Applicant's response filed 11/14/2025 has been fully considered. The following rejections
and/or objections are either reiterated or newly applied.
Status of Claims
Claims 1-14 are pending and examined on the merits.
Priority
The instant application is a 371 national stage entry of PCT/JP2020/018586 filed on 5/7/2020, and claims the benefit of priority to Application No. JP2019-089616 filed on 5/10/2019. Thus, the effective filing date of the claims is 5/10/2019.
The applicant is reminded that amendments to the claims and specification must comply with 35 U.S.C. § 120 and 37 C.F.R. § 1.121 to maintain priority to an earlier-filed application. Claim amendments may impact the effective filing date if new subject matter is introduced that lacks support in the originally filed disclosure. If an amendment adds limitations that were not adequately described in the parent application, the claim may no longer be entitled to the priority date of the earlier filing.
Information Disclosure Statement
Applicant acknowledged IDS objection and stated they "will resubmit the identified reference with the required translation " (Remarks 11/14/2025 Page 3). No new material has been submitted or added to the file wrapper.
Claim Interpretation
Applicant has not acknowledged Examiner's claim interpretation explicitly. However, Applicant's claim amendments filed 11/14/2025 no longer invoke 35 USC 112(f), therefore the claim interpretation under 35 USC 112(f) is withdrawn.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process, a mathematical concept, organizing human activity, or a law of nature or natural phenomenon without significantly more. 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:
Claims 1 and 8: “identifying, from a result of measuring an analyte contained in a sample using an analyzer, the analyte” provides an evaluation (identifying the analyte) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
“extract a related term related to the analyte, from a database in which document data is accumulated, on a basis of the first identification information acquired by the information acquisition unit” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
Claims 2 and 9: “extract a related term commonly related to the plurality of analytes” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
Claims 3 and 10: “extract the related term on a basis of both the first identification information and the second identification information” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
Claims 5 and 12: “extract the related term using a data mining analysis method” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
Claims 6 and 13: “extract the related term using association analysis” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
Claims 7 and 14: “extract the related term according to a rule that adopts at least one of a confidence level, a support level, and a lift value in the association analysis” provides an evaluation (extracting related terms implies determining relatedness between information) that may be performed in the human mind and is therefore considered a mental process, which is an abstract idea.
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 are mathematical relationships. Therefore, these limitations fall under the “Mental process” grouping of abstract ideas. Additionally, while claims 1-7 recite performing some aspects of the analysis on “an analytical device [] an information acquisition unit [] an extraction unit [] and a presentation unit”, there are no additional limitations that indicate that this requires anything other than carrying out the recited mental processes or mathematical concepts in a generic computer environment. 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 it falls within the “Mental processes” grouping of abstract ideas. As such, claims 1-20 recite an abstract idea (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). The judicial exceptions listed above are not integrated into a practical application because the claims do not recite an additional element or elements that reflects an improvement to technology. Specifically, the claims recite the following additional elements:
Claims 1 and 8: "uses a database in which document data is accumulated and the document data is indexed, for bibliographical information of each literature in the database, by an assigned term for serving as a keyword for searching the database and by an identification number assigned to the term serving as a keyword" provides insignificant extra-solution activities (accumulating and indexing data are pre-solution activities involving data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
“acquiring a first identification number” provides insignificant extra-solution activities (acquiring data are pre-solution activities involving data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
“extracting a second identification number or the term servicing as a keyword” provides insignificant extra-solution activities (extracting data are pre-solution activities involving data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
“present the related term acquired by the extraction unit to a user” provides insignificant extra-solution activities (displaying information is a post-solution activity involving data manipulation steps) that do not serve to integrate the judicial exceptions into a practical application.
Claims 2 and 9: “acquire first identification information corresponding to each of a plurality of analytes” provides insignificant extra-solution activities (acquiring data are pre-solution activities involving data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
Claims 3 and 10: “receive an input from a user” and “acquire second identification information received by the reception unit” provides insignificant extra-solution activities (acquiring data from a user are pre-solution activities involving data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
Claim 8: “acquiring a result of measuring an analyte contained in a sample using an analyzer” provides insignificant extra-solution activities (performing measurements using an analyzer on an analyte to acquire data are pre-solution activities involving sample manipulation and data gathering steps) that do not serve to integrate the judicial exceptions into a practical application.
The steps for acquiring, receiving, extracting, and displaying data and measuring an analyte in a sample are insignificant extra-solution activities that do not serve to integrate the recited judicial exceptions into a practical application because they are pre- and post-solution activities involving data gathering, data manipulation, and sample manipulation steps (see MPEP 2106.04(d)(2)). Furthermore, the limitations regarding implementing program instructions do not indicate that they require anything other than mere instructions to implement the abstract idea in a generic way or in a generic computing environment. As such, this limitation equates 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. Therefore, claims 1-14 are directed to an abstract idea (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 are insignificant extra-solution activities that do not serve to integrate the recited judicial exceptions into a practical application, or 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 elements to indicate that the claimed “an analytical device [] an information acquisition unit [] an extraction unit [] and a presentation unit” 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. MPEP 2106.05(f) discloses that mere instructions to apply the judicial exception cannot provide an inventive concept to the claims. Additionally, the limitations for acquiring, receiving, extracting, and displaying data and measuring an analyte in a sample are insignificant extra-solution activities that do not serve to integrate the recited judicial exceptions into a practical application. Furthermore, no inventive concept is claimed by these limitations as they are demonstrated by the application’s specification to be well-understood, routine, and conventional.
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 1-14 are not patent eligible.
Response to Arguments under 35 USC § 101
Applicant’s arguments filed 11/14/2025 are fully considered but they are not persuasive.
Applicant asserts that the amendments to claims 1 and 8 now recite patent eligible subject matter in the form of a practical application (Remarks11/14/2025 Pages 3-4). All other claims depend from independent claims 1 and 8, therefore are likewise patentable under 35 USC 101. The Examiner has indicated above that these amendments still provide mental processes which are both abstract ideas. Additionally, the amended additional element of looking up documents in a database based on keywords or identification numbers is an insignificant extra-solution activity that does not serve to integrate the recited judicial exceptions into a practical application. Furthermore, no inventive concept is claimed by this amendment as data look-up via database on a computer is well-understood, routine, and conventional as evidenced by Knock (computer matching mass spectra) and Willett (chemical similarity searching, and page 10 col 2 last paragraph suggests using computers for this search as far back as the mid-1980s "In the mid-1980s, when these comparative experiments were carried out, computer limitations (in terms of both raw CPU speeds and the clustering algorithms available) meant that Ward’s method could not be applied to databases of substantial size").
The Examiner also notes that MPEP 2106(I) states that if the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Id. citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). In the “search for an ‘inventive concept’” (the second part of the Alice/Mayo test), the additional elements identified 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 because accumulating and indexing data are all well-understood, routine, and conventional techniques that are insignificant extra-solution activities that do not serve to integrate the recited judicial exceptions into a practical application. Therefore, combining insignificant extra-solution activities with any of the identified judicial exceptions would not result in patent eligible subject matter because integrating well-understood, routine, and conventional techniques does not yield “significantly more” to a mental process, a mathematical concept, organizing human activity, or a law of nature or natural phenomenon.
Therefore, the rejection of claims 1 and 8 under 35 USC 101 is maintained. All other claims depend from these independent claims; therefore, their rejection is likewise maintained.
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, 4-9, and 11-14 rejected under 35 U.S.C. 103 as being unpatentable over Knock et al. (Knock et al. "Compound identification by computer matching of low resolution mass spectra." Analytical Chemistry 42.13 (1970): 1516-1520.) in view of Willett et al. (Willett et al. "Chemical Similarity Searching." Journal of Chemical Information and Computer Sciences, American Chemical Society, 1998, doi: 10.1021/ci9800211).
Regarding claims 1 and 8, Knock teaches acquiring a result of measuring an analyte contained in a sample using an analyzer (Page 1 col 1 paragraph 1 "A low resolution mass spectrum is to an increasing extent the first or only piece of structural information available on an unknown compound. Complex mixtures after analysis by combined GC-MS present the chemist with large numbers of unknown spectra. Any rapid method of identification from the low resolution mass spectrum alone is thus of considerable assistance to the analyst. The computer analysis of the spectrum, from first principles (7), demands some a priori knowledge of the compound.").
Knock also teaches acquiring first identification information for identifying the analyte from the result of measuring the analyte (Page 1 col 2 paragraph 2 "For a considerable time, the mass spectroscopist has found printed indexes to mass spectra, ordered on the six or ten strongest peaks (8, 9), extremely valuable for manual compound identification.").
Knock also teaches presenting a result to a user (Page 1 col 1 paragraph 2 "This paper deals with the development and testing of computer programs which are designed to match unknown spectra against a library file of standard spectra and to print out a list of compounds according to the degree of matching").
Knock does not explicitly teach extracting and presenting a related term related to the analyte from a database in which document data is accumulated on a basis of the first identification information.
However, Willett teaches extracting a related term related to the analyte from a database in which document data is accumulated on a basis of the first identification information (Page 7 col 2 paragraph 3 "An alternative to the algorithmically generated descriptors described above is to define and to search for particular functional groups, which may be expressed in specific or general terms. Once defined, the functional groups can be detected by scanning the connection tables for instances of them. A more efficient way is to use string-searching of a linear representation of the molecule, for instance by defining the functional groups in terms of SMARTS strings and using them to search SMILES representations.").
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the methods of Knock as taught by Willett in order to strike a balance between effective (descriptions and properties) and efficient (simple structure search) similarity searches (page 7 col 1 Section 4 paragraph 1 "Similarity searching in large chemical databases needs representations of the molecules that are both effective, i.e., can differentiate between molecules that are different, and efficient, i.e., quick to calculate, in operation. There is a general conflict between these two requirements in that the most effective methods of representation tend to be the least efficient to calculate, and vice versa, so a suitable compromise needs to be made. For instance, quantum-mechanical descriptions, such as the electron probability density function described by Carbo and Calabuig, take too long to calculate whereas, at the other extreme, simple atom and bond counts are generally too trivial to discriminate between many molecules. In the middle lie descriptors based on 2D and 3D substructural fragments or properties. These are the ones that are currently most commonly used for similarity searching and that form the principal focus of the subsequent discussion."). One skilled in the art would have a reasonable expectation of success because both methods are employing chemical data for identity and similarity search operations. It would then be trivial to combine these extracted terms or descriptors of Willett with the presenting of output by Knock in order to present related terms to a user.
Regarding claims 2 and 9, Knock in view of Willett teach the methods of Claims 1 and 8 on which these claims depend, respectively. Knock also teaches acquiring first identification information corresponding to each of a plurality of analytes (Page 1 col 2 paragraph 2 "For a considerable time, the mass spectroscopist has found printed indexes to mass spectra, ordered on the six or ten strongest peaks (8, 9), extremely valuable for manual compound identification.").
Knock does not explicitly teach extracting a related term commonly related to the plurality of pieces of first identification information.
However, Willett also teaches extracting a related term commonly related to the plurality of pieces of first identification information (Page 7 col 2 paragraph 3 "An alternative to the algorithmically generated descriptors described above is to define and to search for particular functional groups, which may be expressed in specific or general terms. Once defined, the functional groups can be detected by scanning the connection tables for instances of them. A more efficient way is to use string-searching of a linear representation of the molecule, for instance by defining the functional groups in terms of SMARTS strings and using them to search SMILES representations.").
Regarding claims 4 and 11, Knock in view of Willett teach the methods of Claims 1 and 8 on which these claims depend, respectively. Knock also teaches the analyzer is a mass spectrometer (Page 1 col 1 paragraph 1 "Complex mixtures after analysis by combined GC-MS present the chemist with large numbers of unknown spectra.").
Regarding claims 5 and 12, Knock in view of Willett teach the methods of Claims 1 and 8 on which these claims depend, respectively. Willett also teaches extracting the related term using a data mining analysis method (Page 12 col 1 paragraph 3 "Its [similarity searching] importance can only increase further as 3D-based similarity measures become established, complementing the 2D similarity measures in current chemical information systems, and as new applications are investigated, e.g., the use of similarity measures in diversity analysis, data mining, and pattern").
Regarding claims 6 and 13, Knock in view of Willett teach the methods of Claims 5 and 12 on which these claims depend, respectively. Willett also teaches extracting the related term using association analysis (Page 3 col 2 paragraph 2 "Some coefficients are measures of the distance, or dissimilarity between objects (and have a value of 0 for identical objects), while others measure similarity directly (and have their maximum value for identical objects). In most cases the values that can be taken by a coefficient lie in the range from 0 to 1 or can be normalized to that range: this is typically effected by means of a function based on the values of the attributes for the two objects that are being compared, with the resulting coefficients being referred to as association coefficients. The zero-to-unity range provides a simple means for converting between a similarity coefficient and a complementary distance coefficient, namely, subtraction from unity. In some cases a similarity coefficient and its complement have been developed independently and are known by different names; e.g., the Soergel distance coefficient is the complement of the Tanimoto (or Jaccard) association coefficient").
Regarding claims 7 and 14, Knock in view of Willett teach the methods of Claims 6 and 13 on which these claims depend, respectively. Willett also teaches extracting the related term according to a rule that adopts at least one of a confidence level, a support level, and a lift value in the association analysis (same excerpt used for claims 6 and 13, the range from 0 to 1 is essentially a confidence level).
Claims 3 and 10 rejected under 35 U.S.C. 103 as being unpatentable over Knock et al. (Knock et al. "Compound identification by computer matching of low resolution mass spectra." Analytical Chemistry 42.13 (1970): 1516-1520.) in view of Willett et al. (Willett et al. "Chemical Similarity Searching." Journal of Chemical Information and Computer Sciences, American Chemical Society, 1998, doi: 10.1021/ci9800211) as applied to claims 1, 2, 4-9, and 11-14 above, and further in view of Aravamudan et al. (US-20180082197).
Knock et al. in view of Willett et al. are applied to claims 1, 2, 4-9, and 11-14.
Regarding claims 3 and 10, Knock in view of Willett teach the methods of Claims 1 and 8 on which these claims depend, respectively.
Knock nor Willett explicitly teach: receiving an input of second identification information from a user; acquiring second identification information received in the reception step; nor extracting the related term on a basis of both the first identification information and the second identification information.
However, Aravamudan teaches receiving an input of second identification information from a user; acquiring second identification information received in the reception step; and extracting the related term on a basis of both the first identification information and the second identification information (Para.0294 " A user can input two entities E1 and E2 for comparison (Steps 1905, 1910, 1915) A suitable entity collection (e..e, the most relevant entity collection) to which E1 and E2 each belong can be computed by default, or the user can specify the entity collection to be used for each entity in the query").
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the methods of Knock and Willett as taught by Aravamudan in order to identify significant association between entities, including compounds and assays such as mass spectrometry (para.0258 "Disclosed systems and methods can identify and visualize, at the incipient stages, significant associations between [] science entities []. Sets of entities can be grouped into entity collections, which include but are not limited to the following: Biomolecules [], Bio-entities [], Diseases [], Assays (e.g., High throughput cell screening, Kinome profiling. Growth inhibition, mass spectrometry, etc.), [], Phenotypes [], Drugs []."). One skilled in the art would have a reasonable expectation of success because both methods involve matching and association of mass spectrometry and other data types.
Response to Arguments under 35 USC § 103
Applicant’s arguments filed 11/14/2025 are fully considered but they are not persuasive.
Applicant asserts that the amendments to claims 1 and 8 are "neither taught nor suggested by Knock or Willet" (Remarks 11/14/2025 Page 5). Applicant also asserts that the "advantageous effect [of the user being able to easily search the database for relevant document data for understanding the measurement results] is distinct from the effects expected from the cited references (Knock: identifying an unknown compound; Willett: obtaining relevant chemical substance information through chemical similarity searching)". Examiner notes that the database of the disclosure has no meaningfully different functions from a database utilized by Knock or Willett. The function of the database (i.e. looking up data based on keywords or values) is not distinct, and there is no innovative data structure disclosed that cannot be reproduced using the methods of the cited references.
Applicant also asserts that Aravamudan "does not remedy the deficiencies [of] Knock and Willet[t] to teach all of the element[s] of amended claims 1 and 8" (Remarks 11/14/2025 Page 5). Examiner notes that, as expressed above, Knock and Willett do indeed address the amendments to the claims. However, it is also noted that Aravamudan explicitly addressed the claimed amendments to claims 1 and 8 in para.0066: "A method according to one embodiment of the present disclosure can include identifying semantic entities and associated semantic collections present in one or more knowledge bases, wherein the semantic entities include one or more of single words or multi-word phrases, and the semantic entities of a semantic collection share an entity type; determining a time period for analysis; dividing the time period into one or more time slices; generating, for each time slice, a set of word embeddings for the identified semantic entities based on one or more corpora; characterizing a temporal semantic association between a first semantic entity input and a second semantic entity input by performing the steps of determining, for each time slice, a first semantic association strength between the first semantic entity input and the second semantic entity input; determining, for each time slice, a second semantic association strength between the first semantic entity input and a plurality of semantic entities associated with a semantic collection that is associated with the second semantic entity; determining, for each time slice, a probability measure relating the first semantic association strength with the second semantic association strength; assigning a time value to each time slice, determining a sequence of two-dimensional points by associating, for each time slice, the assigned time value for the time slice with the probability measure for the time slice, wherein the sequence is ordered by increasing time values; fitting a curve to the ordered sequence, extracting characteristics of the curve fit, wherein the characteristics include one or more of a time of increase value representing the time value at winch a statistically significant magnitude change of the probability measure occurs, a probability saturation value representing the maximum value of the probability measure, or an area under the curve value; providing the characteristics of the curve fit from the characterizing the temporal semantic association between the first semantic entity input and the second semantic entity input."
Therefore, the rejection of claims 1 and 8 under 35 USC 103 is maintained. All other claims depend from these independent claims; therefore, their rejection is likewise maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of US-11880374 in view of Knock et al. (Knock et al. "Compound identification by computer matching of low resolution mass spectra." Analytical Chemistry 42.13 (1970): 1516-1520.) and Willett et al. (Willett et al. "Chemical Similarity Searching." Journal of Chemical Information and Computer Sciences, American Chemical Society, 1998, doi: 10.1021/ci9800211).
Regarding claims 1-3 and 8-10, although the claims at issue are not identical, they are not patentably distinct from each other because both involve the analysis of a sample containing an analyte, an information acquisition unit, an information reception unit, an extraction unit for relevant/overlapping terms, manipulating data from a first and second analyte, and a display unit to display relevant terms.
While US-20220382767 does not explicitly teach identifying the analyte, it would have been obvious to one of ordinary skill in the art to modify these methods, with those taught by Knock as described above for claims 1 and 8 in section “Claim Rejections - 35 USC § 103”, in order to be able to identify an unknown compound or analyte (page 1 col 1 paragraph 1 "A low resolution mass spectrum is to an increasing extent the first or only piece of structural information available on an unknown compound."). One skilled in the art would have a reasonable expectation of success because both approaches use mass spectroscopy data.
Regarding claims 4 and 11, US-20220382767 in view of Knock teach the methods of Claims 1 and 8 on which these claims depend, respectively. While US-20220382767 does not explicitly teach that the analyzer is a mass spectrometer, Knock does, as described above for claims 4 and 11 in section “Claim Rejections - 35 USC § 103”.
Regarding claims 5 and 12, US-20220382767 in view of Knock teach the methods of Claims 1 and 8 on which these claims depend, respectively. While US-20220382767 does not explicitly teach extracting the related term using a data mining analysis method, it would have been obvious to one of ordinary skill in the art to modify these methods, with those taught by Willett as described above for claims 5 and 12 in section “Claim Rejections - 35 USC § 103”, in order to expand the compound dataset for comparative investigations (page 12 col 1 paragraph 1 "The growing number of similarity measures available means that such comparative investigations will become increasingly important, and their execution will be facilitated by the development of standard datasets containing structural and biological data for nontrivial numbers of compounds."). One skilled in the art would have a reasonable expectation of success because both approaches use mass spectroscopy data.
Regarding claims 6 and 13, US-20220382767 in view of Knock and Willett teach the methods of Claims 5 and 12 on which these claims depend, respectively. While US-20220382767 does not explicitly teach extracting the related term using association analysis, Willett does, as described above for claims 6 and 13 in section “Claim Rejections - 35 USC § 103”.
Regarding claims 7 and 14, US-20220382767 in view of Knock and Willett teach the methods of Claims 6 and 13 on which these claims depend, respectively. While US-20220382767 does not explicitly teach extracting the related term according to a rule that adopts at least one of a confidence level, a support level, and a lift value in the association analysis, Willett does, as described above for claims 7 and 14 in section “Claim Rejections - 35 USC § 103”.
Claims 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of 18/027,024 in view of Willett et al. (Willett et al. "Chemical Similarity Searching." Journal of Chemical Information and Computer Sciences, American Chemical Society, 1998, doi: 10.1021/ci9800211).
Regarding claims 1-4 and 8-11, although the claims at issue are not identical, they are not patentably distinct from each other because both involve identification of a substance in a sample, comparing a plurality of substance information, displaying the associated substances, receiving user input(s), and analyzing mass spectrometry data.
While US-20230366862 does not explicitly extracting related terms, it would have been obvious to one of ordinary skill in the art to modify these methods, with those taught by Willett as described above for claims 1 and 8 in section “Claim Rejections - 35 USC § 103”, in order to strike a balance between effective (descriptions and properties) and efficient (simple structure search) similarity searches (page 7 col 1 Section 4 paragraph 1 "Similarity searching in large chemical databases needs representations of the molecules that are both effective, i.e., can differentiate between molecules that are different, and efficient, i.e., quick to calculate, in operation. There is a general conflict between these two requirements in that the most effective methods of representation tend to be the least efficient to calculate, and Vice Versa, so a suitable compromise needs to be made. For instance, quantum-mechanical descriptions, such as the electron probability density function described by Carbo and Calabuig,47 take too long to calculate whereas, at the other extreme, simple atom and bond counts are generally too trivial to discriminate between many molecules. In the middle lie descriptors based on 2D and 3D substructural fragments or properties. These are the ones that are currently most commonly used for similarity searching and that form the principal focus of the subsequent discussion."). One skilled in the art would have a reasonable expectation of success because both methods are employing chemical data for identity and similarity search operations.
Regarding claims 5 and 12, US-20230366862 in view of Willett teach the methods of Claims 1 and 8 on which these claims depend, respectively. While US-20230366862 does not explicitly teach extracting the related term using a data mining analysis method, it would have been obvious to one of ordinary skill in the art to modify these methods, with those taught by Willett as described above for claims 5 and 12 in section “Claim Rejections - 35 USC § 103”, in order to expand the compound dataset for comparative investigations (page 12 col 1 paragraph 1 "The growing number of similarity measures available means that such comparative investigations will become increasingly important, and their execution will be facilitated by the development of standard datasets containing structural and biological data for nontrivial numbers of compounds."). One skilled in the art would have a reasonable expectation of success because both approaches use mass spectroscopy data.
Regarding claims 6 and 13, US-20230366862 in view of Willett teach the methods of Claims 5 and 12 on which these claims depend, respectively. While US-20230366862 does not explicitly teach extracting the related term using association analysis, Willett does, as described above for claims 6 and 13 in section “Claim Rejections - 35 USC § 103”.
Regarding claims 7 and 14, US-20230366862 in view of Willett teach the methods of Claims 6 and 13 on which these claims depend, respectively. While US-20230366862 does not explicitly teach extracting the related term according to a rule that adopts at least one of a confidence level, a support level, and a lift value in the association analysis, Willett does, as described above for claims 7 and 14 in section “Claim Rejections - 35 USC § 103”.
Response to Arguments under Double Patenting
Applicant’s arguments filed 11/14/2025 are fully considered but they are not persuasive.
Applicant submits that the amendments to claims 1 and 8 "have sufficiently distinguished the claimed invention from the claims subject to the double patenting rejection" (Remarks 11/14/2025 Page 6). Examiner notes that the amendments have not materially changed the scope or interpretation of the claimed invention as detailed in the above sections.
Therefore, the rejection of claims 1-14 on the ground of nonstatutory double patenting is maintained.
Conclusion
No claims are allowed.
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 TH REE-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 finaI action.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A. Player whose telephone number is (571)272-6350. The examiner can normally be reached Mon-Fri, 8am-5pm.
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, Larry D. Riggs can be reached on 571-270-3062. 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.
/R.A.P./Examiner, Art Unit 1686
/LARRY D RIGGS II/Supervisory Patent Examiner, Art Unit 1686