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.
Claims 1-24 are pending and examined in the instant Office action.
Foreign Priority
The instant application claims foreign priority to Japanese application JP2021-020762, filed 12 February 2021, in which this foreign priority claim is perfected with the filing of the certified translation of this Japanese application on 16 February 2026.
Withdrawn Rejections
The indefiniteness rejections are withdrawn in view of arguments on pages 9-10 of the Remarks. Specifically, page 7 of the specification explains that a maximum confidence limit is equivalent to having the maximum confidence limit compared to other confidence limit scores within a cluster.
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) 1-24 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 15-19 are drawn to methods, and claims 8-14 and 20-24 are drawn to non-transitory computer readable media.
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 steps of a selection step of classifying a plurality of molecules into clusters based on a feature amount and selecting a starting molecule having a maximum confidence limit value from each of the classified clusters.
The independent claims recite the mental steps of a selection step of calculating a feature amount of each of a plurality of initial molecules and selecting molecules according to a probability value calculated based on a feature amount.
The independent claims recite the mental step of an evolutionary development step of evolving each of the starting molecules.
The independent claims recite the mental steps of repeatedly executing the selection and evolutionary development steps for the molecules.
Claims 4-6 and 11-13 recite the mental step of constraining the molecular structure to be in graph notation with nodes and edges.
Claims 7 and 14-24 recite the mental step of constraining the evolutionary development to be caused by a crossover-reaction or mutation.
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) 1-24 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 1-24 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 1-24 is/are not patent eligible.
Response to arguments:
Applicant's arguments filed 16 February 2026 have been fully considered but they are not persuasive.
Applicant argues that the amendments to the claims overcome the rejections. This argument is not persuasive because, as discussed in the rejection statement above, performing judicial exceptions on a generic computer does not result in subject matter eligible claims.
Applicant provides the general assertion that performing a clustering algorithm increases computational efficiency relative to conventionally performed algorithms without providing support and/or evidence of this result for this particular claim listing.
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.
The following rejection is reiterated:
Claim(s) 1-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. [Nature: Computational Materials, volume 4, 2018, pages 1-7; on IDS] in view of Prat et al. [US PGPUB 2022/0198286 A1].
Claim 1 is drawn to a molecular structure generation method. The method comprises a selection step of classifying a plurality of initial molecules prepared in advance into clusters based on a feature amount and selecting a starting molecule having a confidence limit value for each of the clusters. The method comprises an evolutionary development step of evolving each of the starting molecules. The method requires that the selection step and evolutionary development step are repeatedly executed for all molecules including the initial molecules and the evolved starting molecules to generate a new molecular structure.
Claim 2 is drawn to similar subject matter as claim 1.
Claim 3 is drawn to similar subject matter as claim 1, except the selection step requires calculating a feature amount of each of a plurality of initial molecules prepared in advance and selecting a starting molecule according to a probability value calculated based on the feature amount.
Claims 8-10 are drawn to similar subject matter as claims 1-3, respectively, except claims 8-10 are drawn to non-transitory computer readable media.
The document of Kim et al. studies a deep-learning-based inverse design model for intelligent discovery of organic molecules [title]. Figures 1 and 2 of Kim et al. teach iterative machine learning to evolve a molecular structure until the molecular structure meets a feature property within a confidence limit or probability.
Kim et al. does not completely teach the selection steps of the independent claims.
The document of Prat et al. studies a system and method for molecular reconstruction from molecular probability distributions [title]. Paragraph 15 of Prat et al. teaches clustering molecular structures based on similarities. Figure 4 of Prat et al. illustrates molecules selected within five different clusters. Figure 17 of Prat et al. illustrates an iteration of evolving and refining molecular structure using machine learning.
With regard to claims 4-6 and 11-13, Figure 6 of Kim et al. illustrates molecular structures in graph notations with atoms as nodes and bonds as edges.
With regard to claims 7 and 14-24, Figures 1 and 2 of Kim et al. and Figure 17 of Prat et al. illustrates iterations of evolving molecular structure involving chemical structure mutations in each iteration that results in the chemical structures of Figure 6 of Kim et al.
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 iterative evolution of molecular structure of Kim et al. by use of the clustering and evolution of Prat et al. wherein the motivation would have been that Prat et al. adds additional mathematical techniques to facilitate the calculations of Kim et al. [paragraph 15 of Prat et al.]. There would have been a reasonable expectation of success in combining Kim et al. and Prat et al. because both studies analogously use machine learning to evolve and refine molecular structure.
Response to arguments:
Applicant's arguments filed 16 February 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach “classifying a plurality of initial molecules prepared advance into clusters” and “selecting a starting molecule having a maximum confidence limit value from each of the classified clusters.” This argument is not persuasive because paragraph 15 of Prat et al. teaches clustering similar substructures, and Figure 17 of Prat et al. and Figures 1 and 2 of Kim et al. illustrate selecting molecular structures based on probabilities. In addition, Figure 17 of Prat et al. and Figures 1 and 2 of Kim et al. illustrate evolutionary (i.e. iterative) algorithms for development of the molecule.
Related Prior Art
The prior art document of Yang et al. [Science and Technology of Advanced Materials, volume 18, pages 972-976; on IDS] studies an efficient python library for de novo molecular generation [title]. Yang et al. is an analogous study to that of Kim et al. wherein mathematical algorithms and machine learning are used to evolve molecular structures.
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.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to 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 23 July 2026
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