DETAILED ACTION
The Applicant’s filing, received 27 May 2026, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 .
Status of the Claims
Claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 are pending.
Claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 are rejected.
Priority
This application is a 371 of PCT/IL2019/051300, filed 27 November 2019.
Unless otherwise noted, the effective filing date of the claimed invention is 27 November 2019.
Terminal Disclaimer
The terminal disclaimer filed on 27 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No.: 12,443,366 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Drawings
The objection to the drawings in the Office action mailed 28 January 2026 has been withdrawn in view of the amendment received 27 May 2026.
The replacement drawing (i.e., Fig. 6) received 27 May 2026 has been accepted.
Specification
The amendment to the specification received 27 May 2026 has been entered.
Claim Interpretation
The claim limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, in the Office action mailed 28 January 2026 have been withdrawn in part and modified in part in view of the amendment received 27 May 2026, as noted below.
The interpretation of the claim limitation “a sequencing control module” in claims 27 and 29, and the interpretation of the claim limitation “a data inference processing module” in claims 27 and 30, in the Office action mailed 28 January 2026 have been withdrawn because the amended claims recite sufficient structure for performing the claimed function, however these amended claims raise new grounds of rejection under 35 U.S.C. 112(a), as discussed below.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are:
“a container module” in claim 36;
“a harvesting module” in claim 39; and
“a fabrication control unit” in claims 36 and 41.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The written description discloses a corresponding structure for the non-structural generic placeholder:
“a container module” in claim 36 at page 10, line 3 (i.e., a plurality of containers) and at page 38, lines 22-32 (i.e., building-block containers).
The written description does not disclose a corresponding structure for the non-structural generic placeholder:
“a harvesting module” in claim 39; and
“a fabrication control unit” in claims 36 and 41.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
The objections to claims 20, 29, and 36 in the Office action mailed 28 January 2026 have been withdrawn in view of the amendment received 27 May 2026.
Claim Rejections - 35 USC § 112
The amendment received 27 May 2026 has been fully considered, however after further consideration, the rejection of claims 27, 29, 30, 36, 39, and 41 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, has been maintained in part, as noted below.
Additionally, new grounds of rejection are raised under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in view of the amendment, as noted below.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 27, 29, 30, 36, 39, and 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following rejections are maintained in view of the amendment.
Claims 36 and 41 recite the limitation “a fabrication control unit” however the disclosure does not clearly link any structure for the “fabrication control unit” as required by MPEP 2181. For example, the disclosure as filed describes the function of the “fabrication control unit” (e.g., at page 40, lines 6-8, i.e., “To this end, fabrication control unit 730 is adapted for synthesize the population of molecular sequences encoding said block of data at the designated region, by operating the fabrication head…”) but does not link any structure for the ‘unit’ to the functions.
Claims 39 and 41 are rejected for depending from claim 36 and failing to remedy the failure to comply with the written description requirement.
Claim 39 recites the limitation “a harvesting module” however the disclosure does not clearly link any structure for the “harvesting module” as required by MPEP 2181. For example, the disclosure describes the function of the “harvesting module” (e.g., at page 41, lines 1-9, i.e., “for harvesting the population of molecules…”) but does not link any structure for the ‘module’ to the functions.
The following rejections are newly raised in view of the amendment.
Claim 27 recites the limitation “a sequencing control module comprising a processor and being connected to a sequencing system, the processor being programmed to provide commands to the sequencing system, thereby operating the sequencing system…” however the Specification does not contain the term “processor” nor the limitation “the processor being programmed to provide commands to the sequencing system, thereby operating the sequencing system”.
Claims 29 and 30 are rejected for depending from claim 27 and failing to remedy the failure of claim 27 to comply with the written description requirement.
Claim 27 further recites the limitation “a data inference processing module comprising a processor programmed for carrying out the operation…” however the Specification does not contain the term “processor” nor the limitation “a processor programmed for carrying out the operation…”.
Claims 29 and 30 are rejected for depending from claim 27 and failing to remedy the failure of claim 27 to comply with the written description requirement.
Claim 39 recites the newly added limitation “comprising any one of: at least one enzyme, a base, and an ultraviolet light source” however the Specification does not contain the terms “enzyme” or “ultraviolet light source”, and furthermore, the Specification does not provide for the use of the term “base” with regard to a harvesting module. Furthermore, the reference cited in the Specification (i.e., Source 5) and proffered by the Applicant as providing support for the newly added limitation (e.g., see Arguments/Remarks at pages 27-28) is not a proper incorporation by reference for the essential material recited in this limitation (MPEP 608.01(p) subsection I., & 37 C.F.R. 1.57(h)).
The rejection of claims 1-3, 5, 7, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the Office action mailed 28 January 2026 has been withdrawn in view of the amendment received 27 May 2026.
Claim Rejections - 35 USC § 101
The rejection of claims 1-3, 5, 7, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 under 35 U.S.C. 101 in the Office action mailed 28 January 2026 has been maintained with modification in view of the amendment, as noted below.
The rejection of claim 7 has been withdrawn in view of this claim having been cancelled in the amendment.
The rejection of claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 have been modified as necessary to incorporate the newly added limitations presented by the amendment.
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 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite: (a) mathematical concepts, (e.g., mathematical relationships, formulas or equations, mathematical calculations); and (b) mental processes, i.e., concepts performed in the human mind, (e.g., observation, evaluation, judgement, opinion).
Subject matter eligibility evaluation in accordance with MPEP 2106.
Eligibility Step 1: Step 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Claims 1-3, 5, 8, 13, 14, and 17 recite a molecular data storage system (i.e., a machine or manufacture) for encoding one or more data-blocks; claims 20-22, 24, and 26 recite a method (i.e., a process) for reading data stored in a molecular data storage system; claims 27, 29, and 30 recite a data reader system (i.e., a machine or manufacture) adapted to implement the method according to claim 20; claims 31-33 and 35 recite a method (i.e., a process) for fabricating a molecular data storage system; claims 36, 39, and 41 recite a molecular data storage fabrication system (i.e., a machine or manufacture) adapted to implement the method according to claim 31; and claim 45 recites a molecular label (i.e., a machine or manufacture) comprising the data storage system according to claim 1.
Therefore, these claims are encompassed by the categories of statutory subject matter, and thus, satisfy the subject matter eligibility requirements under step 1.
[Step 1: YES]
Eligibility Step 2A: First it is determined in Prong One whether a claim recites a judicial exception, and if so, then it is determined in Prong Two whether the recited judicial exception is integrated into a practical application of that exception.
Eligibility Step 2A Prong One: In determining whether a claim is directed to a judicial exception, examination is performed that analyzes whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim.
Independent claim 1 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
encoding a respective data-block of the one or more data-blocks (i.e., mental processes and mathematical concepts);
the data encoding sections of the molecular sequences of the population collectively encode a sequence of encoded alphabet letters S = (π1, π2, …, πn…, πN-1, πN) (i.e., mental processes and mathematical concepts);
each valid encoded alphabet letter πn at location n of the sequence S of alphabet letters is characterized by occurrence of a predetermined plurality of different types of short k-mers of the building-block-set in a corresponding location n along the data encoding sections of the plurality of molecular sequences of said population (i.e., mental processes); and
each valid encoded alphabet letter πn of the sequence S = (π1, π2, …, πn…, πN-1, πN) belongs to a set of predefined alphabet letters
Σ
≡
σ
m
|
m
=
1
t
o
M
defined as binary occurrence vectors over a space spanned by said number Z of different types of short k-mer building blocks (i.e., mental processes and mathematical concepts).
Independent claim 20 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
defining a data-block (i.e., mental processes);
determining, per each location n of 1 to N locations in data encoding sections of sequenced molecular sequences of said population, an observed binary vector Xn of dimension Z, whereby each binary component indexed z of 1 to Z binary components of the observed binary vector Xn is indicative of whether a corresponding building block Ez of a building-block-set {Ez}|z=1 to z was sequenced at the location n corresponding to the index of said binary vector Xn along any of the sequenced molecular sequences of said population (i.e., mental processes and mathematical concepts);
respective data encoding sections of similar predetermined length N of short k-mers serving as data encoding building blocks and forming a building-block-set {Ez}|z=1 to z consisting of a number Z of different preselected short k-mers by which data of the data-block is encoded, wherein all number Z of types of short k-mers in said building-block-set have a similar predetermined size k≥2 of bases (i.e., mental processes and mathematical concepts); and
determining encoded alphabet letters πn of a sequence S = (π1, π2, …, πn…, πN-1, πN) encoded by said n = 1 to N locations by associating each observed binary vector Xn of each of said n = 1 to N locations, to one of alphabet letters {σm} of a predetermined alphabet ∑ ≡ {σm}|m=1 to M; whereby each letter σm of the alphabet ∑ is defined by a binary occurrence vector of size Z indicative of an occurrence of building blocks of said building-block-set {Ez} in the letter; said associating comprises mapping the observed binary vector Xn at each location n to one of the letters {σm}|m=1 to M of the alphabet ∑ by determining a match between the observed binary vector Xn and the binary vector definition of the letters (i.e., mental processes and mathematical concepts).
Independent claim 27 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
the abstract ideas recited by independent claim 20 as noted above (i.e., mental processes and mathematical concepts) and in particular:
step (i) defining a data-block (i.e., mental processes);
step (ii) determining, per each location n of 1 to N locations in the data encoding sections of sequenced molecular sequences of said population, an observed binary vector Xn of dimension Z, whereby each binary component indexed z of 1 to Z binary components of the observed binary vector Xn is indicative of whether a corresponding building block Ez of a building-block-set {Ez}|z=1 to z was sequenced at the location n corresponding to the index of said binary vector Xn along any of the sequenced molecular sequences of said population (i.e., mental processes and mathematical concepts);
respective data encoding sections of similar predetermined length N of short k-mers serving as data encoding building blocks and forming a building-block-set {Ez}|z=1 to z consisting of a number Z of different preselected short k-mers by which data of the data-block is encoded, wherein all number Z of types of short k-mers in said building-block-set have a similar predetermined size k≥2 of bases (i.e., mental processes and mathematical concepts); and
step (iii) determining encoded alphabet letters πn of a sequence S = (π1, π2, …, πn…, πN-1, πN) encoded by said n = 1 to N locations by associating each observed binary vector Xn of each of said n = 1 to N locations, to one of alphabet letters {σm} of a predetermined alphabet ∑ ≡ {σm}|m=1 to M; whereby each letter σm of the alphabet ∑ is defined by a binary occurrence vector of size Z indicative of an occurrence of building blocks of said building-block-set {Ez} in the letter; said associating comprises mapping the observed binary vector Xn at each location n to one of the letters {σm}|m=1 to M of the alphabet ∑ by determining a match between the observed binary vector Xn and the binary vector definition of the letters (i.e., mental processes and mathematical concepts).
Independent claim 31 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
one or more blocks of data are coded by a sequence of letters S = {πn}|n=1 to N of an alphabet ∑ ≡ {σm}|m=1 to M (i.e., mental processes);
the letters {σm}|m=1 to M of the alphabet ∑ are represented as binary occurrence vectors defined over a space spanned by Z different types of short k-mers of length k>1, which serve as data encoding molecular building blocks {En}|n=1 to Z (i.e., mental processes and mathematical concepts);
sequences of letters S = {πn}|n=1 to N of said block of data (i.e., mental processes); and
binary vector representing the letter πn (i.e., mental processes and mathematical concepts).
Independent claim 36 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
the abstract ideas recited by independent claim 31 as noted above (i.e., mental processes and mathematical concepts) and in particular:
at step (b) one or more blocks of data are coded by a sequence of letters S = {πn}|n=1 to N of an alphabet ∑ ≡ {σm}|m=1 to M (i.e., mental processes and mathematical concepts);
at step (c) the letters {σm}|m=1 to M of the alphabet ∑ are represented as binary occurrence vectors defined over a space spanned by Z different types of short k-mers of length k>1, which serve as data encoding molecular building blocks {En}|n=1 to Z (i.e., mental processes and mathematical concepts); and
indicated to be occurring by the binary vector representing the letter πn (i.e., mental processes and mathematical concepts);
at least one block of data is coded by a sequence of letters S= {πn}|n=1 to N of an alphabet ∑ ≡ {σm}|m=1 to M; and wherein the letters {σm}|m=1 to M of the alphabet ∑ are represented as binary vectors (occurrence vectors) defined over a space spanned by Z different types of said data encoding molecular building blocks {En}|n=1 to Z (i.e., mental processes and mathematical concepts); and
indicated to be occurring by the binary vector representing the letter πn (i.e., mental processes and mathematical concepts)
Independent claim 45 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
the abstract ideas recited in claim 1, as noted above (i.e., mental processes and mathematical concepts); and
at least one data-block is being respectively encoded (i.e., mental processes and mathematical concepts).
Dependent claims 2, 3, 5, 8, 13, 14, 21, 22, 33, 24, 26, 29, 30, 32, and 41 further recite the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas, as noted below.
Dependent claim 2 further recites:
each valid encoded alphabet letter πn at location n of the sequence S of alphabet letters is further characterized by occurrence of a predetermined exact number Y of the different types of short k-mers of the building-block-set in said corresponding location n in the data encoding sections, said predetermined exact number Y being the same for all the valid encoded alphabet letters (i.e., mental processes); and
validating a letter encoded at said location n based on equality between said predetermined exact number Y and an actual number of Y' of different types of short k-mers observed at said corresponding location n of said data encoding sections (i.e., mental processes and mathematical concepts).
Dependent claim 3 further recites:
characterized in that all the different types of preselected short k-mers in said building-block-set have a similar predetermined size k≤20 of bases, thereby facilitating production scale data storage via molecular synthesis and low physical density (i.e., mental processes).
Dependent claim 5 further recites:
the number Z of different types of short k-mers in said building-block-set are characterized in that a hamming distance between each short k-mer in said building-block-set and any other short k-mer in said building-block-set is greater or equal to a certain first threshold of minimal hamming distance denoted by H1, whereby said first threshold satisfies H1≥2 (i.e., mental processes and mathematical concepts).
Dependent claim 8 further recites:
said set of predefined alphabet letters
Σ
≡
σ
m
|
m
=
1
t
o
M
consists only of binary occurrence vectors of said space (i.e., mental processes and mathematical concepts); and
wherein at least one of the following:
said binary occurrence vectors are of equal weight (i.e., mental processes and mathematical concepts);
said binary occurrence vectors having hamming distances between them greater or equal to a certain second threshold of minimal hamming distance denoted as H2 wherein said second threshold of minimal hamming distance H2 is at least (H2≥2) (i.e., mental processes and mathematical concepts).
Dependent claim 13 further recites:
an identifying sequence…indicative of the population with which said molecular sequence is associated (i.e., mental processes); and
wherein said identifying sequence is different in molecular sequences associated with different ones of said one or more populations (i.e., mental processes).
Dependent claim 14 further recites:
the population identification section comprises an identifying sequence (i.e., mental processes);
a difference between the identifying sequences that are used in the population identification sections of different respective populations exceeds a predetermined threshold measured by a certain predetermined distance metric of strings, such as an edit or Hamming distance metric between strings (i.e., mental processes and mathematical concepts).
Dependent claim 21 further recites:
the Z different types of short k-mers in said building-block-set are characterized in that a hamming distance between each short k-mer in said building-block-set and any other short k-mer in said building-block-set is greater or equal to a certain first threshold of minimal hamming distance denoted H1, whereby said first threshold satisfies H1≥2 (i.e., mental processes and mathematical concepts); and
determining of the observed binary vector Xn of dimension Z associated with location n in the data encoding sections, comprises ignoring sequenced short k-mer found at said location in one or more of the data encoding sections which does not belong to the building block set (i.e., mental processes and mathematical concepts).
Dependent claim 22 further recites:
said predefined alphabet ∑ ≡ {σm}|m=1 to M consists only of binary vectors with hamming distances between them being greater or equal to a certain second threshold of minimal hamming distance denoted H2, wherein H2≥2; thereby providing that in case said match between the observed binary vector Xn and said vector of definition of one of the letters {σm}|m=1 to M of the alphabet ∑ is determined, said match being indicative of validity of the reading of the encoded letter πn from the locations n in said data encoding sections of sequenced molecular sequences (i.e., mental processes and mathematical concepts).
Dependent claim 24 further recites:
each letter X in the alphabet letters ∑ ≡ {σm}|m=1 to M is defined by occurrence of a predetermined exact number Y of the different types of short k-mers of said building-block-set {Ez}, said predetermined exact number Y being the same for all the encoded alphabet letters πn; and wherein a stopping condition of said sequencing is that per each location n of said 1 to N locations of the data encoding sections at least said exact number Y of different types of short k-mers belonging to said building-block-set {Ez} is found (i.e., mental processes and mathematical concepts);
Dependent claim 26 further recites:
each letter σm in the alphabet letters ∑ ≡ {σm}|m=1 to M, is defined by occurrence of a predetermined and constant exact number Y of the different types of short k-mers of said building-block-set {Ez}, said predetermined exact number Y being the same for all the alphabet letters (i.e., mental processes); and
a data reading validation/correction operation comprising selectively performing the following for each location n of said 1 to N locations of the data encoding sections at which a respective letter expected to be encoded:
(i) in case a weight Y' of said observed binary vector Xn is equal to said exact number Y, determining said encoded alphabet letters πn at the location n by mapping the observed binary vector Xn to one of the alphabet letters {σm}|m=1 to M based on a match between the observed binary vector Xn and a binary vector representation of said one alphabet letter (i.e., mental processes and mathematical concepts);
(ii) in case a weight Y' of said observed binary vector Xn is larger than said exact number Y, determining that an excess Y' - Y of different types of building blocks is found at the locations n of the data encoding sections; and computing statistical significances of each of the Y' different types of building blocks found at the location n based on a number of times each of said Y’ types of building blocks is sequenced from the locations n (i.e., mental processes and mathematical concepts), and:
in case statistical significance of Y' - Y types of said Y' building blocks are below a predetermined statistical significance threshold denoted ST (i.e., mental processes and mathematical concepts), carrying out the following:
determining that said excess Y'- Y types of building blocks are the Y' - Y types of building blocks for which the statistical significance is below the threshold ST and amending said observed binary vector Xn accordingly to obtain an amended observed binary vector X’n of weight Y (i.e., mental processes and mathematical concepts); and
determining said encoded alphabet letters πn at the location n by mapping the amended observed binary vector X’n to one of the alphabet letters {σm}|m=1 to M based on a match between the amended observed binary vector X’n and a binary vector representation of said one alphabet letter (i.e., mental processes and mathematical concepts);
in case there are less than Y' - Y types of said Y’ building blocks whose statistical significances are below the predetermined statistical significance threshold ST, determining that the observed binary vector Xn may not be mapped to any one of the alphabet letters {σm}|m=1 to M and thereby the encoded alphabet letters πn at the location n is invalid (i.e., mental processes and mathematical concepts);
(iii) in case a weight Y' of said observed binary vector Xn is less than said exact number Y, determining that the observed binary vector Xn may not be mapped to any one of the alphabet letters {σm}|m=1 to M and thereby the encoded alphabet letters πn at the location n is invalid (i.e., mental processes and mathematical concepts).
Dependent claim 29 further recites:
each letter σm in the alphabet letters ∑ ≡ {σm}|m=1 to M is defined by occurrence of a predetermined exact number Y of the different types of short k-mers of said building-block-set {Ez}, said predetermined exact number Y being the same for all the alphabet letters (i.e., mental processes and mathematical concepts); and
a stopping condition of said sequencing is that per each location n of said 1 to N locations of the data encoding sections of at least said exact number Y of different types of short k-mers belonging to said building-block-set {Ez} is found (i.e., mental processes and mathematical concepts).
Dependent claim 30 further recites:
each letter σm in the alphabet letters ∑ ≡ {σm}|m=1 to M, is defined by occurrence of a predetermined exact number Y of the different types of short k-mers of said building-block-set {Ez}, said predetermined exact number Y being the same for all the alphabet letters (i.e., mental processes and mathematical concepts); and
carry out a data reading validation/correction operation according to the method of claim 26, as noted above (i.e., mental processes and mathematical concepts).
Dependent claim 32 further recites:
indicated to be occurring by the binary vector representing the letter πn (i.e., mental processes and mathematical concepts).
Dependent claim 33 further recites:
the first letter π1 being encoded (i.e., mental processes and mathematical concepts).
Dependent claim 41 further recites:
encoding data of a plurality of respective data blocks (i.e., mental processes and mathematical concepts).
The abstract ideas recited in the claims are evaluated under the broadest reasonable interpretation (BRI) of the claim limitations when read in light of and consistent with the specification. As noted in the foregoing section, the claims are determined to contain limitations that can practically be performed in the human mind with the aid of a pen and paper (e.g., determining encoded alphabet letters πn of a sequence S = (π1, π2, …, πn…, πN-1, πN) encoded by said n = 1 to N locations by associating each observed binary vector Xn of each of said n = 1 to N locations, to one of alphabet letters {σm} of a predetermined alphabet ∑ ≡ {σm}|m=1 to M), and therefore recite judicial exceptions from the mental process grouping of abstract ideas. Additionally, the recited limitations that are identified as judicial exceptions from the mathematical concepts grouping of abstract ideas (e.g., the number Z of different types of short k-mers in said building-block-set are characterized in that a hamming distance between each short k-mer in said building-block-set and any other short k-mer in said building-block-set is greater or equal to a certain first H1 threshold of minimal hamming distance, whereby said first threshold satisfies H1≥2) are abstract ideas irrespective of whether or not the limitations are practical to perform in the human mind.
Therefore, claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 recite an abstract idea.
[Step 2A Prong One: YES]
Eligibility Step 2A Prong Two: In determining whether a claim is directed to a judicial exception, further examination is performed that analyzes if the claim recites additional elements that when examined as a whole integrates the judicial exception(s) into a practical application (MPEP 2106.04(d)). A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The claimed additional elements are analyzed to determine if the abstract idea is integrated into a practical application (MPEP 2106.04(d)(I); MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the abstract idea, the claim fails to integrate the abstract idea into a practical application (MPEP 2106.04(d)(III)).
The judicial exceptions identified in Eligibility Step 2A Prong One are not integrated into a practical application because of the reasons noted below.
Dependent claims 2, 3, 5, 8, 21, 22, and 26 do not recite any elements in addition to the judicial exception, and thus are part of the judicial exception.
The additional elements in independent claim 1 include:
one or more populations of molecular sequences; and
each molecular sequence of the molecular sequences of the population comprises a data encoding section comprising a sequence of similar predetermined length N of short k-mers and have a similar predetermined size k≥2 (plurality) of bases.
The additional elements in independent claim 20 include:
providing a molecular data storage system comprising a population of molecular sequences; and
applying sequencing to the population of molecular sequences.
The additional elements in independent claim 27 include:
a sequencing control module comprising a processor and being connected to a sequencing system, the processor being programmed to provide commands to the sequencing system, thereby operating the sequencing system to perform the operations (i) and (ii) of claim 20 to thereby sequence a population of molecular sequences of the data storage system; and
a data inference processing module comprising a processor.
The additional elements in independent claim 31 include:
providing a support substrate having one or more spatially separated regions at which one or more respective populations of molecular sequences can be synthesized;
providing one or more blocks of data to be respectively encoded by the one or more respective populations of molecular sequences which are to be synthesized at said one or more spatially separated regions respectively;
synthesizing a corresponding population of molecular sequences at a respective region of said one or more regions; and
wherein said synthesizing of the population of molecular sequences at the respective region includes selectively depositing building blocks.
The additional elements in independent claim 36 include:
a container module comprising a plurality of containers;
a fabrication head fluidly connected to said Z containers and configured and operable for controlled deposition of basic molecular building-blocks contained in a one or more selected containers;
a fabrication control unit configured and operable to operate the fabrication head for implementing operations (b) and (c) of the method of claim 31; wherein said implementing comprises:
providing at least one block of data;
synthesizing the population of molecular sequences by operating said fabrication head; and
said fabrication head selectively deposits the molecular building blocks from said Z containers.
The additional elements in independent claim 45 include:
at least one population of molecular sequences; and
each molecular sequence of the molecular sequences of the population comprises a data encoding section comprising a sequence of similar predetermined length N of short k-mers and have a similar predetermined size k≥2 (plurality) of bases.
Dependent claims 13, 14, 17, 24, 29, 30, 32, 33, 35, 39, and 41 further recite the following additional elements, as noted below.
The additional element(s) in dependent claim 13 include(s):
each molecular sequence of the molecular sequences of the population includes a population identification section comprising a sequence of molecular bases indicative of the population with which said molecular sequence is associated.
The additional element(s) in dependent claim 14 include(s):
molecular bases included in said population identification section are bases of the same preselected set of bases by which said building-blocks are constructed.
The additional element(s) in dependent claim 17 include(s):
molecular sequences of one or more of said populations are contained together in a common region; and
the molecular sequences associated with the same population can be exclusively selected by utilizing binding molecules configured and operable for selectively binding to the population identification section of the molecular sequences associated with said same population.
The additional element(s) in dependent claim 24 include(s):
sequencing is carried out at least until said stopping condition is fulfilled or until a predetermined maximal sequencing depth.
The additional element(s) in dependent claim 29 include(s):
sequencing control module is adapted to operate the sequencing system at least until said stopping condition is fulfilled or until a predetermined maximal sequencing depth.
The additional element(s) in dependent claim 30 include(s):
data inference processing module.
The additional element(s) in dependent claim 32 include(s):
providing and placing molecular building blocks;
washing said region to remove un-bonded data encoding molecular building-blocks; and
applying un-blocking treatment to "un-block" the data encoding molecular building-blocks that are bounded to molecules at said region.
The additional element(s) in dependent claim 33 include(s):
the support substrate comprises cleavable molecules adapted to bind with said data encoding molecular building-blocks.
The additional element(s) in dependent claim 35 include(s):
synthesizing of the population of molecule sequences comprises synthesizing similar population identification segments, in all molecule sequences of said population.
The additional element(s) in dependent claim 39 include(s):
the fabrication head is configured and operable for depositing cleavable molecules at said region prior to said synthesizing; and
a harvesting module comprising any one of: at least one enzyme, a base, and an ultraviolet light source for harvesting said population of molecules from said region by cleaving said cleavable molecules.
The additional element(s) in dependent claim 41 include(s):
said fabrication control unit is adapted for operating said fabrication head for synthesizing, for all molecules of said population, a similar identification section;
said fabrication control unit is configured and operable for operating said fabrication head to synthesize a plurality of population of molecular sequences.
The additional element of a processor programmed to provide instructions (claim 27); invokes a computer and/or computer-related components merely as a tool for use in the claimed process, such that it amount to no more than mere instructions to apply the exceptions using a generic computer (MPEP 2106.05(f)), and therefore is not an improvement to computer functionality itself, or an improvement to any other technology or technical field, and thus, does not integrate the judicial exceptions into a practical application (MPEP 2106.04(d)(1)).
The additional elements of one or more populations of molecular sequences and each molecular sequence of the molecular sequences of the population comprises a data encoding section comprising a sequence of similar predetermined length N of short k-mers and have a similar predetermined size k≥2 (plurality) of bases (claim 1); providing a molecular data storage system comprising a population of molecular sequences; and applying sequencing to the population of molecular sequences (claim 20); at least one population of molecular sequences (claim 45); each molecular sequence of the molecular sequences of the population comprises a data encoding section comprising a sequence of similar predetermined length N of short k-mers and have a similar predetermined size k≥2 (plurality) of bases (claim 45); sequencing is carried out at least until said stopping condition is fulfilled or until a predetermined maximal sequencing depth (claim 24); and said sequencing control module is adapted to operate the sequencing system at least until said stopping condition is fulfilled or until a predetermined maximal sequencing depth (claim 29); merely indicate a field of use or technological environment (i.e., molecular sequencing and/or synthesis) in which to apply a judicial exception (MPEP 2106.05(h)), and therefore do not meaningfully limit the claims because the claims do not recite any additional elements that are an improvement to computer functionality itself, or an improvement to another technology or technical field (i.e., molecular sequencing and/or synthesis), and thus the recited additional elements do not amount to more than a recitation of the words “apply it” (or an equivalent) and/or do not amount to more than mere instructions to implement an abstract idea (MPEP 2106.05(f)) by performing molecular sequencing and/or molecular synthesis, and therefore do not integrate the recited judicial exceptions into a practical application (MPEP 2106.04(d)).
The additional elements of a sequencing control module comprising a processor and being connected to a sequencing system, the processor being programmed to provide commands to the sequencing system, thereby operating the sequencing system to perform the operations (i) and (ii) of claim 20 to thereby sequence a population of molecular sequences of the data storage system; and a data inference processing module comprising a processor (claim 27); providing a support substrate having one or more spatially separated regions at which one or more respective populations of molecular sequences can be synthesized (claim 31); providing one or more blocks of data to be respectively encoded by the one or more respective populations of molecular sequences which are to be synthesized at said one or more spatially separated regions respectively; (claim 31); synthesizing a corresponding population of molecular sequences at a respective region of said one or more regions and wherein said synthesizing of the population of molecular sequences at the respective region includes selectively depositing building blocks (claim 31); a container module comprising a plurality of containers (claim 36); a fabrication head fluidly connected to said Z containers and configured and operable for controlled deposition of basic molecular building-blocks contained in a one or more selected containers (claim 36); a fabrication control unit configured and operable to operate the fabrication head for implementing operations (b) and (c) of the method of claim 31 (claim 36); molecular sequences of one or more of said populations are contained together in a common region (claim 17); the molecular sequences associated with the same population can be exclusively selected by utilizing binding molecules configured and operable for selectively binding to the population identification section of the molecular sequences associated with said same population (claim 17); data inference processing module (claim 30); synthesizing of the population of molecule sequences comprises synthesizing similar population identification segments, in all molecule sequences of said population (claim 35); the fabrication head is configured and operable for depositing cleavable molecules at said region prior to said synthesizing (claim 39); a harvesting module comprising any one of: at least one enzyme, a base, and an ultraviolet light source for harvesting said population of molecules from said region by cleaving said cleavable molecules (claim 39); said fabrication control unit is adapted for operating said fabrication head for synthesizing, for all molecules of said population, a similar identification section (claim 41); and said fabrication control unit is configured and operable for operating said fabrication head to synthesize a plurality of population of molecular sequences (claim 41); merely indicate a field of use or technological environment (i.e., molecular sequencing and/or synthesis) in which to apply a judicial exception (MPEP 2106.05(h)), and therefore do not meaningfully limit the claims because the claims do not recite any additional elements that are an improvement to computer functionality itself, or an improvement to another technology or technical field (i.e., molecular sequencing and/or synthesis), and thus the recited additional elements do not amount to more than a recitation of the words “apply it” (or an equivalent) and/or do not amount to more than mere instructions to implement an abstract idea (MPEP 2106.05(f)) by performing molecular sequencing and/or molecular synthesis, and therefore do not integrate the recited judicial exceptions into a practical application (MPEP 2106.04(d)).
The additional elements of each molecular sequence of the molecular sequences of the population includes a population identification section comprising a sequence of molecular bases indicative of the population with which said molecular sequence is associated (claim 13); molecular bases included in said population identification section are bases of the same preselected set of bases by which said building-blocks are constructed (claim 14); providing and placing molecular building blocks (claim 32); washing said region to remove un-bonded data encoding molecular building-blocks (claim 32); applying un-blocking treatment to "un-block" the data encoding molecular building-blocks that are bounded to molecules at said region (claim 32); the support substrate comprises cleavable molecules adapted to bind with said data encoding molecular building-blocks (claim 33); merely indicate a field of use or technological environment (i.e., molecular sequencing and/or synthesis) in which to apply a judicial exception (MPEP 2106.05(h)), and therefore do not meaningfully limit the claims because the claims do not recite any additional elements that are an improvement to computer functionality itself, or an improvement to another technology or technical field (i.e., molecular sequencing and/or synthesis), and thus the recited additional elements do not amount to more than a recitation of the words “apply it” (or an equivalent) and/or do not amount to more than mere instructions to implement an abstract idea (MPEP 2106.05(f)) by performing molecular sequencing and/or molecular synthesis, and therefore do not integrate the recited judicial exceptions into a practical application (MPEP 2106.04(d)).
Thus, the additionally recited elements do not amount to an improvement to computer functionality itself, or a technology or technical area; and/or do not amount to more than mere instructions to implement an abstract idea; and/or do not amount to more than a field of use in which to apply a judicial exception; and as such, when all limitations in claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 have been considered as a whole, (i.e., the analysis takes into consideration all the claim limitations and how those limitations interact and impact each other when evaluating whether the exception is integrated into a practical application), the claims are deemed to not recite any additional elements that would integrate a judicial exception into a practical application, and therefore claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 are directed to an abstract idea (MPEP 2106.04(d)).
[Step 2A Prong Two: NO]
Eligibility Step 2B: Because the claims recite an abstract idea, and do not integrate that abstract idea into a practical application, the claims are probed for a specific inventive concept. The judicial exception alone cannot provide that inventive concept or practical application (MPEP 2106.05). Identifying whether the additional elements beyond the abstract idea amount to such an inventive concept requires considering the additional elements individually and in combination to determine if they amount to significantly more than the judicial exception (MPEP 2106.05A i-vi).
The claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception(s) because of the reasons noted below.
Dependent claims 2, 3, 5, 8, 21, 22, and 26 do not recite any elements in addition to the judicial exception(s).
The additional elements recited in independent claims 1, 20, 27, 31, 36, and 45 and dependent claims 13, 14, 17, 24, 29, 30, 32, 33, 35, 39, and 41 are identified above, and carried over from Step 2A Prong Two along with their conclusions for analysis at Step 2B. Any additional element or combination of elements that was considered to be insignificant extra-solution activity at Step 2A Prong Two was re-evaluated at Step 2B, because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and all additional elements and combination of elements were evaluated to determine whether any additional elements or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP 2106.05(d).
The additional element of a processor programmed to provide instructions (claim 27); is a conventional computer component and/or function (see MPEP at 2106.05(b) and 2106.05(d)(II) regarding conventionality of computer components and computer processes).
The remaining additional elements identified at Eligibility Step 2A Prong Two and discussed above are conventional additional elements, as discussed below.
Evidence of the conventionality is shown be Ceze et al. (“Molecular digital data storage using DNA.” Nature, 2019, Vol. 20, pp. 456-466, as cited in the Information Disclosure Statement (IDS) received 12 July 2022, and as cited in the Office action mailed 28 January 2026). Ceze et al. reviews molecular digital data storage using DNA (Title; and Abstract) and shows that the basic process in DNA storage involves encoding digital information into DNA sequences (encoding), writing the sequences into actual DNA molecules (synthesis), physically conditioning and organizing then into a library for long-term storage, retrieving and selectively accessing them (random access), reading the molecules (sequencing) and converting them back to digital data (decoding) (page 456, col. 2, para. 3). Ceze et al. further shows an overview of the major steps of digital data storage in DNA (Figure 2) where first, a computer algorithm maps strings of bits into DNA sequences which are then machine synthesized (write), thereby generating many physical copies of each sequence. Solid-phase synthesis via phosphoramidite-based chemical synthesis can be done on a column (low-throughput) or array (high-throughput) solid support. After synthesis, the resulting DNA material can be cloned and stored within a biological cell (in vivo) or, more commonly, stored in vitro, such as being frozen in solution or dried down for protection from the environment (store). DNA data requested to be read can be selectively retrieved from the DNA pool in a process called random access (retrieve), where random access within DNA data pools can be accomplished with PCR-based enrichment with primer pairs that map to specific data items generated during the encoding process. Finally, automated sequencing instruments are used to generate a set of reads that correspond to the molecules they can detect (read), with the most common sequencing methods being Sanger (low-throughput) and sequencing-by-synthesis instruments (high-throughput, e.g., by Illumina), and more recently, nanopore sequencing (e.g., from Oxford Nanopore Technologies (ONT)) has been used for real-time data reading. Ceze et al. further reviews DNA synthesis technology, e.g., phosphoramidite-based oligonucleotide synthesis for writing DNA (page 461, col. 2, para. 2); array-based synthesis enabling the synthesis of different sequences in different spots in a solid substrate (page 461, col. 2, para. 3); and enzymatic synthesis for writing DNA (page 461, col. 2, para. 5 and page 462, col. 1). Ceze et al. further reviews DNA sequencing technologies for data retrieval (page 462, col. 1 and col. 2) including nanopore sequencing technology enabling real-time sequencing.
Therefore, when taken alone (i.e., individually), all additional elements in claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 do not amount to significantly more than the above-identified judicial exception(s). Even when evaluated as an ordered combination, the additional elements fail to transform the exception(s) into a patent-eligible application of that exception. Thus, claims 1-3, 5, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 are deemed to not contribute an inventive concept, i.e., amount to significantly more than the judicial exception(s) (MPEP 2106.05(II)).
[Step 2B: NO]
Response to Arguments
The Applicant’s arguments/remarks received 27 May 2026 have been fully considered, but are not persuasive.
The Applicant states on page 31 of the Remarks that the claims should be allowed according to Step 1 of the Alice/Mayo test because in the Office action mailed 28 January 2026 (page 13, para. 68) the claims were found to be to a statutory category at Step 1 of the eligibility analysis.
This argument/remark is not persuasive, because as noted in the MPEP at 2106.03(II.) if the claim as a whole falls within one or more statutory categories (Step 1: YES), further analysis is required to determine whether the claim qualifies as eligible at Pathway A or requires further analysis at Step 2A to determine if the claim is directed to a judicial exception. Furthermore, it is noted that the first part of the Alice/Mayo test corresponds with Step 2A in the eligibility analysis flow chart at MPEP 2106.
The Applicant states on page 32 of the Remarks, that in addition to the above argument, the currently pending claims should be found allowable according to Step 2A of the Alice/Mayo test, and that each of the pending claims integrates the allegedly abstract idea into a practical application. The Applicant further states that claim 1 integrates the instant data storage system into a practical application; claim 20 integrates the instant data reading process into a practical application; claim 27 integrates the instant data reader system into a practical application; claim 31 integrates the instant fabrication process into a practical application; claim 36 integrates the instant fabrication system into a practical application; and claim 45 integrates the instant molecular label into a practical application. The Applicant further states that MPEP 2106.04(d)(I) explains that one indication that additional elements in the claim integrate a judicial exception into a practical application is an improvement in the functioning of a computer, or an improvement to other technology or technical field. The Applicant further states that the instant data storage, reading, and fabrication systems, and the process related thereto, represent a technological advancement in the field of molecular data storage. The Applicant further states on page 33 (para. 1) that the data storage system of the instant application utilizes a composite letter alphabet approach, in which each letter is defined by a presence of molecular bases at a particular location in a population of molecules, and that the alphabet is defined by sets of molecular bases present in the location. The Applicant further states (para. 2) that the use of composite letters in molecular-based storage extends the available alphabet beyond the number of different types of basic molecular building-blocks, and thus allows for the coding of longer messages within a fixed synthesized molecule length, and further states that by pre-defining each letter as a composition of molecular building blocks at a location k in multiple molecules, each location in the sequence may represent any one of a large number of letters, and that this provides a higher storage density than is attainable in molecular storage systems which store data in molecules having nominally identical sequences, and are therefore limited to the number of types of basic molecular building-blocks. The Applicant further states (para. 3) that further, the definition of the alphabet as being according to sets of molecular bases present enable a very dense information coding, by enabling associating molecular bases to a plurality of letters, reducing the number of molecular bases needed. The Applicant further states (para. 4) that each of the currently pending claims integrates the data storage system into a practical application, and further reiterates (page 33, bottom and page 34) that claims 1, 20, 27, 31, 36, and 45 provide a practical application.
These arguments/remarks are not persuasive, because first, the instant claims do not recite a single instance of the term “composite” or “composite letter” or “composite letter alphabet”, and therefore the foregoing arguments are not analogous to the pending claims, at least because the fact pattern of the foregoing arguments differs from the fact pattern of the pending claims. Second, the MPEP at 2106.04(d) states that “A claim that integrates a judicial exception into a practical application will apply, rely on, or use (emphasis added) the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I [], in accordance with the procedure described [] in subsection II.” With regard to independent claims 1, 20, 27, 31, 36, and 45, the are no additional elements that ‘apply, rely on, or use’ the judicial exception(s) in a manner that imposes a meaningful limit on the judicial exception(s), because the claimed encoding/decoding scheme comprises the abstract ideas identified at Step 2A Prong One in the above rejection, and when the claims are considered as a whole at Step 2A Prong Two, i.e., the limitations containing the judicial exception(s) as well as the additional elements in the claim besides the judicial exception(s) are evaluated together to determine whether the claim integrates the judicial exception into a practical application, the evaluation results in a determination that the claims do not amount to an improvement to computer functionality itself, or an improvement to any other technology or technical area; and/or do not amount to more than mere instructions to implement an abstract idea; and/or do not amount to more than a field of use in which to apply a judicial exception. In other words, the purported improvement appears to be in the encoding/decoding scheme (i.e., the abstract idea) and not in technologies such as synthesizing and sequencing molecules, which are additional elements that do not amount to more than mere instructions to implement an abstract idea; and/or do not amount to more than a field of use in which to apply a judicial exception.
Claim Rejections - 35 USC § 102
The rejection of claims 1, 2, 3, 7, 13, 14, 17, 20, 35, and 45 under 35 U.S.C. 102(a)(1) as being anticipated by Anavy et al. in the Office action mailed 28 January 2026 has been withdrawn in view of the amendment received 27 May 2026.
Response to Arguments
The Applicant’s arguments/remarks received 27 May 2026 have been fully considered, and are persuasive.
The Applicant states on page 35 of the Remarks that Anavy does not describe at least the feature of “a set of predefined alphabet letters
Σ
≡
σ
m
|
m
=
1
t
o
M
defined as binary occurrence vectors over a space spanned by said number Z of different types of short k-mer building blocks” recited in amended claim 1. The Applicant further states that in the referenced paragraph, Anavy does not describe that the set of predefined alphabet letters is defined as binary occurrence vectors, but rather, Anavy describes a different way of defining the alphabet letters, that is, Anavy describes defining the alphabet according to fractions of DNA bases read in the sequencing of DNA molecules, and therefore, Anavy does not anticipate amended claim 1, and for the same reasons, Anavy does not anticipate claim 20, that recites the definition according to binary occurrence vectors, i.e., “whereby each letter σm of the alphabet ∑ is defined by a binary occurrence vector of size Z indicative of an occurrence of building blocks of said building-block-set {Ez} in the letter”. The Applicant further states that for the same reasons, Anavy does not anticipate claim 45, which requires all of the features of amended claim 1, as the label recited in claim 45 is configured to use the system recited in claim 1.
These arguments are persuasive.
Claim Rejections - 35 USC § 103
The rejection of claims 5, 8, 21, 22, 24, 27, 29, 31, 32, 33, 36, 39, and 41 under 35 U.S.C. 103 as being unpatentable over Anavy et al. as applied to claims 1, 2, 3, 7, 13, 14, 17, 20, 35, and 45 under 35 U.S.C. 102 above, and further in view of Takahashi et al. in the Office action mailed 28 January 2026 has been withdrawn in view of the amendment received 27 May 2026.
The rejection of claims 26 and 30 under 35 U.S.C. 103 as being unpatentable over Anavy et al. as applied to claims 1, 2, 3, 7, 13, 14, 17, 20, 35, and 45 under 35 U.S.C. 102 above in the Office action mailed 28 January 2026 has been withdrawn in view of the amendment received 27 May 2026.
Response to Arguments
The Applicants arguments/remarks received 27 May 2026 have been fully considered, and are persuasive.
The Applicant states on page 36 of the Remarks that Takahashi does not describe the features of “wherein each valid encoded alphabet letter πn of the sequence S = (π1, π2, …, πn…, πN-1, πN) belongs to a set of predefined alphabet letters
Σ
≡
σ
m
|
m
=
1
t
o
M
defined as binary occurrence vectors over a space spanned by said number Z of different types of short k-mer building blocks”. The Applicant further states that Takahashi is aimed at solving issues in the physical implementation of DNA information storage systems, and does not describe how should the information be encoded, i.e., how the alphabet letters may be defined. The Applicant further states that because Takahashi does not describe the aforementioned features, a person of ordinary skill in the art will have not teaching, nor suggestion, nor motivation, to modify Anavy so as to incorporate this feature.
These arguments/remarks are persuasive.
Double Patenting
The rejection of claims 1-3, 5, 7, 8, 13, 14, 17, 20-22, 24, 26, 27, 29-33, 35, 36, 39, 41, and 45 on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,443,366 in the Office action mailed 28 January 2026 has been withdrawn in view of the Terminal Disclaimer filed on 27 May 2026, as noted above.
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 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.
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/S.W.B./Examiner, Art Unit 1687
/Joseph Woitach/Primary Examiner, Art Unit 1687
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