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 1-20 are pending and examined in the instant application.
Information Disclosure Statement
The IDS of 8/24/2022 has been considered.
Priority
The instant application has been filed on 4/21/2022. The instant application claims benefit to provisional application 63/189,373, filed on 5/17/2021.
While the independent claims have support in application ‘373, application ‘373 does not have possession of the plurality of each of precursor and successor metabolite lists in each of claims 2-5 and 12-15. In addition, application ‘373 does not have possession of updating a user interface with metabolite data for each of the aforementioned lists in claims 2-10 and 12-19. In addition, application ‘373 does not have possession of visual user interfaces with pop-ups recited in claims 9 and 19.
Consequently, while the benefit date of instant independent claims 1, 11, and 20 is the filing date of provisional application ‘373 of 5/17/2021, the benefit date of all of the dependent claims (i.e. claims 2-10 and 12-19) is the filing date of the instant application of 4/21/2022.
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) 1-20 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 1-10 are drawn to methods, claims 11-19 are drawn to systems comprising devices, and claim 20 is drawn to a non-transitory computer readable medium.
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 receiving reaction data comprising reaction steps between a starting metabolite and one or more neighbor metabolites.
The independent claims recite the mental step of generating a first precursor metabolite list of precursor metabolites and first successor metabolite list of successor metabolites.
The independent claims recite the mental step of generating a visual path of reactions from the precursor list to the successor list wherein each metabolite is selectable.
The independent claims recite the mental step of outputting data to a display.
Claims 2 and 12 recite mental steps of adding reactions steps of second metabolites with second precursor and successor metabolite lists with modifying and updating the visual interface.
Claims 3 and 13 recite mental steps of adding reactions steps of third metabolites with third precursor and third metabolite lists with modifying and updating the visual interface.
Claims 4-5 and 14-15 recite mental steps regarding updating data on the interface and storing relevant data.
Claims 6-10 and 16-19 recite mental steps of constraints regarding updating visual data on interactive user displays.
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) 1-20 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 1-20 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.
The document of Jassal et al. [Nucleic Acids Research, volume 48, 6 November 2019, pages D498-D503; on IDS] teaches and illustrates that visual and modifiable (e.g. selectable and with “pop-ups”) user interface devices for displaying metabolite data are routine and conventional in the prior art.
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 1-20 is/are not patent eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
35 U.S.C. 102 Rejection #1:
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karp et al. [arXiv:1510.03964v4, 12 November 2020; on IDS].
Claim 1 is drawn to a method for generating a visual path through a metabolic network. The method comprises receiving first reaction data for a starting metabolite. The first reaction data comprises one or more reaction steps of the starting metabolite with one or more neighbor metabolites. The method comprises generating from the one or more first neighbor metabolites, a precursor metabolite list of precursor metabolites and a first successor list of successor metabolites based on the first reaction data. The method comprises generating a user interface comprising the visual path that includes interactive visual data. The interactive visual data indicates each metabolite from the first precursor metabolite list and the first successor metabolite list. Each metabolite from the first precursor metabolite list and the first successor metabolite list is selectable and indicates a corresponding potential reaction step of the one or more potential reaction steps of the starting metabolite. The method comprises outputting the user interface for display at a display device.
Claim 11 is drawn to similar subject matter as claim 1, except claim 11 is drawn to a metabolic network exploration system comprising devices.
Claim 20 is drawn to similar subject matter as claim 1, except claim 20 is drawn to a non-transitory computer-readable medium.
The document of Karp et al. studies integrated software for pathway/genome informatics and systems biology [title]. The abstract of Karp et al. teaches that Pathways Tools is a software suite for computers that allows visualization and representation of an editable user interface. Figure 3 on page 28 of Karp et al. illustrates a selectable and updatable user interface. Figure 2 on page 20 of Karp et al. illustrate the outputs of starting pathways and reactions involving metabolites (and neighboring metabolites) with a precursor list of “compounds-and-elements” and a successor list of polypeptide metabolites based on enzymatic reaction data. Section 4.1. on age 21 of Karp et al. teaches that analysis occurs in a computer.
With regard to claims 2-10 and 12-19, Figure 12 of Karp et al. illustrates a pathway collage. Figure 12 of Karp et al. teaches second and third precursor metabolite lists (i.e. each metabolite lists with metabolites and neighboring metabolites) ----and second and third successor metabolite lists. Figures 8 and 9 on page 37 of Karp et al. illustrate user selectable, editable, and updatable visual interfaces with computer storage of reaction pathways. Figures 8 and 9 on page 37 of Karp et al. illustrates chemical structures and text. Figure 4 on page 31 of Karp et al. illustrates pop-up windows. Figure 8-9 and 12 of Karp et al. includes at least two metabolites connected by multiple reactions.
35 U.S.C. 102 Rejection #2:
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paley et al. [BMC Bioinformatics, volume 17, 2016, article 529, pages 1-10; on IDS].
Claim 1 is drawn to a method for generating a visual path through a metabolic network. The method comprises receiving first reaction data for a starting metabolite. The first reaction data comprises one or more reaction steps of the starting metabolite with one or more neighbor metabolites. The method comprises generating from the one or more first neighbor metabolites, a precursor metabolite list of precursor metabolites and a first successor list of successor metabolites based on the first reaction data. The method comprises generating a user interface comprising the visual path that includes interactive visual data. The interactive visual data indicates each metabolite from the first precursor metabolite list and the first successor metabolite list. Each metabolite from the first precursor metabolite list and the first successor metabolite list is selectable and indicates a corresponding potential reaction step of the one or more potential reaction steps of the starting metabolite. The method comprises outputting the user interface for display at a display device.
Claim 11 is drawn to similar subject matter as claim 1, except claim 11 is drawn to a metabolic network exploration system comprising devices.
Claim 20 is drawn to similar subject matter as claim 1, except claim 20 is drawn to a non-transitory computer-readable medium.
The document of Paley et al. studies pathway collages as personalized multi-pathway diagrams [title]. The abstract of Paley et al. teaches software for computers to use to analyze pathways that allows visualization and representation of an editable user interface. Figure 1 on page 5 of Paley et al. illustrates a selectable and updatable user interface. Figures 2-3 on pages 6-7 of Paley et al. illustrate the outputs of starting pathways and reactions involving metabolites (and neighboring metabolites) with a precursor list of compounds and a successor list of metabolites based on reaction data.
With regard to claims 2-10 and 12-19, Figures 4-5 on pages 8-9 of Paley et al. illustrate a pathway collage. Figures 4-5 of Paley et al. et al. teach second and third precursor metabolite lists (i.e. each metabolite lists with metabolites and neighboring metabolites) ----and second and third successor metabolite lists. Figures 4-5 of Paley et al. illustrate user selectable, editable, and updatable visual interfaces with computer storage of reaction pathways. Figures 2-5 of Paley et al. illustrates chemical structures and text. The section bridging pages 3-4 of Paley et al. teaches interactive refinement of the user database. Figure 3 on page 7 of Paley et al. illustrates a pop-up element denoted by the contents of the dotted line rectangle insert in the figure.
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 29 July 2026
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