DETAILED ACTION
Applicant’s response, filed Jul 22 2026, has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. 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 .
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 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.
Claim Status
Claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 are pending.
Claims 2, 6, 11, 14-15, 19-23, and 25-26 are canceled.
Claims 28-32 are newly added.
Claims 1 and 27 are objected to.
Claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 are rejected.
Priority
Applicant's claim for the benefit of a prior-filed application, PCT/CN2021/121089, filed Sep 27 2021, is acknowledged.
However, PCT/CN2021/121089 does not provide support for the limitation in claims 1 and 27 of “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics”.
Accordingly, each of claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 are afforded the effective filing date of Sep 28 2022.
Information Disclosure Statement
The information disclosure statement (IDS) filed on Jul 22 2026 is in compliance with the provisions of 37 CFR 1.97 and has therefore been considered. A signed copy of the IDS document is included with this Office Action.
Claim Objections
The outstanding objections to the claims are withdrawn in view of the amendments submitted herein.
The claims are objected to because of the following informalities. The instant objection is newly stated and is necessitated by claim amendment.
Claim 1 recites, in the 6th limitation, “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism”, which is not grammatically correct. It is assumed that the “of” after “explain” should be removed. Claim 27 is similarly objected to.
Claim Rejections- 35 USC § 112
35 USC § 112(a)
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 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 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 instant rejection is newly stated and is necessitated by claim amendment.
Claims 1 and 27 recite “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics”. The specification as published discloses in the background that “Noncoding RNA (ncRNA) is involved in many complex cellular processes, plays an important role in life processes such as alternative splicing, chromatin modification and epigenetics, and is closely related to many diseases” at [0004]. However, there is not support within the specification, nor has Applicant provided such support, for “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics” as instantly claimed. Therefore, the limitation introduces new matter. Claims 3-5, 7-10, 12-13, 16-18, 24, and 28-32 are rejected based on their dependency from claims 1 and 27.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to one or more judicial exceptions without significantly more. Any newly recited portions are necessitated by claim amendment.
MPEP 2106 organizes judicial exception analysis into Steps 1, 2A (Prongs One and Two) and 2B as follows below. MPEP 2106 and the following USPTO website provide further explanation and case law citations: uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Framework with which to Evaluate Subject Matter Eligibility:
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter;
Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea;
Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application (Prong Two); and
Step 2B: If the claims do not integrate the judicial exception, do the claims provide an inventive concept.
Framework Analysis as Pertains to the Instant Claims:
Step 1
With respect to Step 1: yes, the claims are directed to a method and an electronic device, i.e., a process, machine, or manufacture within the above 101 categories [Step 1: YES; See MPEP § 2106.03].
Step 2A, Prong One
With respect to Step 2A, Prong One, the claims recite judicial exceptions in the form of abstract ideas. The MPEP at 2106.04(a)(2) further explains that abstract ideas are defined as:
mathematical concepts (mathematical formulas or equations, mathematical relationships and mathematical calculations);
certain methods of organizing human activity (fundamental economic practices or principles, managing personal behavior or relationships or interactions between people); and/or
mental processes (procedures for observing, evaluating, analyzing/ judging and organizing information).
The claims also recite a law of nature or a natural phenomenon. The MPEP at 2106.04(b) further explains that laws of nature and natural phenomena include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature.
With respect to the instant claims, under the Step 2A, Prong One evaluation, the claims are found to recite abstract ideas that fall into the grouping of mental processes (in particular procedures for observing, analyzing and organizing information) and mathematical concepts (in particular mathematical relationships and formulas) as well as a law of nature or a natural phenomenon are as follows:
Independent claims 1 and 27: obtaining a sequence feature of the RNA-protein pair to be predicted by performing feature extraction on the RNA-protein pair to be predicted;
obtaining an RNA sequence representation vector and a protein sequence representation vector in the RNA-protein pair to be predicted by vectorizing the RNA-protein pair to be predicted;
obtaining respectively by using multiple interaction prediction models, multiple interaction prediction values of the RNA-protein pair to be predicted, based on the sequence feature of the RNA-protein pair to be predicted, the RNA sequence representation vector and the protein sequence representation vector in the RNA-protein pair to be predicted;
determining an interaction between the RNA and the protein according to the multiple interaction prediction values;
applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics;
wherein obtaining the sequence feature of the RNA-protein pair to be predicted by performing the feature extraction on the RNA-protein pair to be predicted comprises:
obtaining an original data set;
performing feature extraction on each RNA-protein pair in the original data set to obtain an original sequence feature set; and
determining the sequence feature of the RNA-protein pair to be predicted according to the original sequence feature set;
wherein performing the feature extraction on each RNA-protein pair in the original data set to obtain the original sequence feature set further comprises:
converting an RNA sequence and a protein sequence in each RNA-protein pair into k-mer subsequences, respectively, and forming a first candidate itemset by using the k-mer subsequences, wherein the k-mer subsequences comprise an RNA k-mer subsequence and a protein k-mer subsequence;
counting frequency of occurrence of each of the k-mer subsequences contained in the first candidate itemset in the original data set, and forming a frequent itemset by using a k-mer subsequence that meets a preset occurrence frequency threshold;
cross-combining the RNA k-mer subsequence and the protein k-mer subsequence contained in the frequent itemset, and forming a second candidate itemset by using a k-mer subsequence pair obtained through cross-combination;
counting frequency of occurrence of each k-mer subsequence pair contained in the second candidate itemset in the original data set, to obtain a support degree of each k-mer subsequence pair; and
forming the original sequence feature set by using a k-mer subsequence pair whose support degree meets a preset condition; and
wherein obtaining respectively by using multiple interaction prediction models, multiple interaction prediction values of the RNA-protein pair to be predicted, based on the sequence feature of the RNA-protein pair to be predicted, the RNA sequence representation vector and the protein sequence representation vector in the RNA-protein pair to be predicted comprises:
inputting the sequence feature of the RNA-protein pair to be predicted into at least one traditional machine learning model to obtain at least one first interaction prediction value; and
inputting the RNA sequence representation vector and the protein sequence representation vector in the RNA-protein pair to be predicted into at least one deep learning model to obtain at least one second interaction prediction value; and
wherein each of the at least one deep learning model comprises at least two sub-deep learning models; and inputting the RNA sequence representation vector and the protein sequence representation vector in the RNA-protein pair to be predicted into at least one deep learning model to obtain at least one second interaction prediction value comprises:
inputting the RNA sequence representation vector in the RNA-protein pair to be predicted into a first sub-deep learning model to obtain a first sequence feature;
inputting the protein sequence representation vector in the RNA-protein pair to be predicted into a second sub-deep learning model to obtain a second sequence feature; and
fusing the first sequence feature and the second sequence feature, and obtaining the second interaction prediction value according to a fused feature.
Dependent claim 28: training the multiple interaction prediction models jointly.
Dependent claims 3-5, 7-10, 12-13, 16-18, and 29-32 recite further steps that limit the judicial exceptions in independent claim 1 and, as such, also are directed to those abstract ideas. For example, claims 3-5 further limit determining a sequence feature in claim 2; claims 7-10 further limit performing feature extraction in the original data set in claim 6 to include specific calculations and mathematical formula; claim 12 further limits obtaining an RNA sequence representation vector and a protein sequence representation vector in claim 1; claims 13 and 16 further limit obtaining multiple interaction prediction values in claim 1 to comprising traditional machine learning and deep learning models; claims 17-18 further limit determining an interaction to calculations; and claims 29-32 further limit training the multiple interaction prediction models jointly.
The abstract ideas recited in the claims are evaluated under the Broadest Reasonable Interpretation (BRI) and determined to each cover performance either in the mind and/or by mathematical operation because the method only requires a user to manually determine an interaction between an RNA and a protein. Without further detail as to the methodology involved in “obtaining… by performing feature extraction”, “obtaining… by vectorizing”, “obtaining respectively by using multiple interaction prediction models”, and “determining an interaction”, under the BRI, one may simply, for example, use pen and paper to record sequence features of an RNA-protein pair, record a vector of the RNA and protein sequence, input vectors into prediction models to obtain prediction values, and determine whether or not the RNA and protein interact. Further, one may similarly use pen and paper to determine sequence features of an original sequence features set and the RNA-protein pair according to k-mer subsequence conversion, combining, counting, and searching, as recited in the dependent claims.
Some of these steps and those recited in the dependent claims require mathematical techniques as the only supported embodiments. Specifically, vectorizing recites the mathematical technique of turning sequence data into a numbered vector. The prediction models are considered to recite mathematical models because they produce prediction values. Dependent claim 9 further limits the feature extraction to involving a mathematical formula. Dependent claims 29-32 recite mathematical techniques in words and a formula. Further support for mathematical techniques in the claims is disclosed in the specification as published: descriptions of counting k-mers in sequences and equations for examining the k-mer numbers [0078-0090]; descriptions of vectorizing sequences based on k-mers [0128]; “Exemplarily, traditional machine learning models may include linear regression models, logistic regression models, support vector machine models, decision tree models, K-Nearest Neighbor (KNN) models, random forest models, naive Bayesian models, etc.” [0135].
The claims also recite determining the natural relationship of whether an RNA and a protein interact. The ability of the RNA and the protein to interact is the result of their natural, intrinsic properties conveyed in the sequence of the RNA and the protein.
Therefore, claims 1 and 27 and those claims dependent therefrom recite an abstract idea and a law of nature/natural phenomenon [Step 2A, Prong 1: YES; See MPEP § 2106.04].
Step 2A, Prong Two
Because the claims do recite judicial exceptions, direction under Step 2A, Prong Two, provides that the claims must be examined further to determine whether they integrate the judicial exceptions into a practical application (MPEP 2106.04(d)). A claim can be said to integrate a judicial exception into a practical application when it applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. This is performed by analyzing the additional elements of the claim to determine if the judicial exceptions are integrated into a practical application (MPEP 2106.04(d).I.; MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the judicial exceptions, the claim is said to fail to integrate the judicial exceptions into a practical application (MPEP 2106.04(d).III).
Additional elements, Step 2A, Prong Two
With respect to the instant recitations, the claims recite the following additional elements:
Independent claims 1 and 27: acquiring an RNA-protein pair to be predicted.
Dependent claim 16: the deep learning model comprises at least one of a convolutional neural network model and a recurrent neural network model.
Dependent claim 24: outputting a prediction result of the interaction between the RNA and the protein.
The claims also include non-abstract computing elements. For example, independent claim 27 includes an electronic device, comprising a processor and a memory for storing instructions executable by the processor.
Considerations under Step 2A, Prong Two
With respect to Step 2A, Prong Two, the additional elements of the claims do not integrate the judicial exceptions into a practical application for the following reasons. Those steps directed to data gathering, such as “acquiring” an RNA-protein pair as in claims 1 and 27, and to data outputting, such as “outputting” a prediction result as in claim 24, perform functions of collecting and outputting the data needed to carry out the judicial exceptions. Data gathering and outputting do not impose any meaningful limitation on the judicial exceptions, or on how the judicial exceptions are performed. Data gathering and outputting steps are not sufficient to integrate judicial exceptions into a practical application (MPEP 2106.05(g)).
Further steps directed to additional non-abstract computing elements do not describe any specific computational steps by which the “computer parts” perform or carry out the judicial exceptions, nor do they provide any details of how specific structures of the computer, such as the computer-readable recording media, are used to implement these functions. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. Hence, these are mere instructions to apply the judicial exceptions using a computer, and therefore the claim does not integrate that judicial exceptions into a practical application. The courts have weighed in and consistently maintained that when, for example, a memory, display, processor, machine, etc.… are recited so generically (i.e., no details are provided) that they represent no more than mere instructions to apply the judicial exception on a computer, and these limitations may be viewed as nothing more than generally linking the use of the judicial exception to the technological environment of a computer (MPEP 2106.05(f)).
Further, the limitation reciting “the deep learning model comprises at least one of a convolutional neural network model and a recurrent neural network model” in claim 16 provides nothing more than mere instructions to implement the abstract idea of obtaining prediction values on a generic computer. See MPEP 2106.05(f). MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. Therefore, the limitations merely serve to link the judicial exception of “obtaining prediction values” to the technological environment of a neural network model.
The specification as published discloses that “ characteristics of multiple interaction prediction models can be combined effectively, which can further improve the accuracy of predicting the interaction between the RNA and the protein” at [0059], but does not provide a clear explanation for how the additional elements provide these improvements. Therefore, the additional elements do not clearly improve the functioning of a computer, or comprise an improvement to any other technical field. Further, the additional elements do not clearly affect a particular treatment; they do not clearly require or set forth a particular machine; they do not clearly effect a transformation of matter; nor do they clearly provide a nonconventional or unconventional step (MPEP2106.04(d)).
Thus, none of the claims recite additional elements which would integrate a judicial exception into a practical application, and the claims are directed to one or more judicial exceptions [Step 2A, Prong 2: NO; See MPEP § 2106.04(d)].
Step 2B (MPEP 2106.05.A i-vi)
According to analysis so far, the additional elements described above do not provide significantly more than the judicial exception. A determination of whether additional elements provide significantly more also rests on whether the additional elements or a combination of elements represents other than what is well-understood, routine, and conventional. Conventionality is a question of fact and may be evidenced as: a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates a well-understood, routine or conventional nature of the additional element(s); a citation to one or more of the court decisions as discussed in MPEP 2106(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); and/or a statement that the examiner is taking official notice with respect to the well-understood, routine, conventional nature of the additional element(s).
With respect to the instant claims, the courts have found that receiving and outputting data are well-understood, routine, and conventional functions of a computer when claimed in a merely generic manner or as insignificant extra-solution activity (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015), and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, as discussed in MPEP 2106.05(d)(II)(i)). As such, the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (MPEP2106.05(d)). The data gathering steps as recited in the instant claims constitute a general link to a technological environment which is insufficient to constitute an inventive concept which would render the claims significantly more than the judicial exception (MPEP2106.05(g)&(h)).
With respect to claims 1 and 27 and those claims dependent therefrom, the computer-related elements or the general purpose computer do not rise to the level of significantly more than the judicial exception. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions. The additional element of the neural networks recited in claim 16 is, at best, a mere instruction to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f). Hence, these are mere instructions to apply the judicial exceptions using a computer, which the courts have found to not provide significantly more when recited in a claim with a judicial exception (Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984; see MPEP 2106.05(A)). The specification also notes that computer processors and systems, as example, are commercially available or widely used at FIG. 1, for example. The additional elements are set forth at such a high level of generality that they can be met by a general purpose computer. Therefore, the computer components constitute no more than a general link to a technological environment, which is insufficient to constitute an inventive concept that would render the claims significantly more than the judicial exceptions (see MPEP 2106.05(b)I-III).
Taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception(s). Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claims as a whole do not amount to significantly more than the exception itself [Step 2B: NO; See MPEP § 2106.05].
Therefore, the instant claims are not drawn to eligible subject matter as they are directed to one or more judicial exceptions without significantly more. For additional guidance, applicant is directed generally to the MPEP § 2106.
Response to Applicant Arguments
At p. 15-16, par. 2, Applicant submits that the claims do not recite an abstract idea or a law of nature/natural phenomenon at Step 2A, Prong 1, because the claims merely use mathematical tools for processing the “code” or “information” inherent in the RNA and protein sequences. Applicant submits that the claims are not intended to address the mathematical formulas themselves, but rather to employ mathematical tools as technical means applied to a specific technical problem. Applicant submits that the purpose of the application is to use technical means to discover whether intrinsic relationships exist and how the RNA and protein interact, rather than focusing on the relationships themselves.
It is respectfully submitted that this is not persuasive. At Step 2A, Prong 1, the claims are examined limitation by limitation to identify whether the claimed concept (the specific claim limitation(s) that recite an exception) aligns with at least one judicial exception, and, if found to do so, then the claims are determined to recite a judicial exception (see MPEP 2106.04(I)). In the above rejection, the limitations considered to recite judicial exceptions at Step 2A, Prong 1, have been identified. Applicant’s submission that the claims use mathematical tools for processing the “code” or “information” inherent in the RNA and protein sequences supports the finding that the claims recite mathematical techniques and a law of nature/natural phenomenon. Applicant’s identification of steps to generate the data which is analyzed by the mathematical tools also identifies steps which recite mental actions. It is further submitted that even if the mathematical limitations indicated by Applicant were considered to merely rely on mathematical techniques without reciting math (which they are not, as described in more detail below), the limitations still recite mental processes, which Applicant has not provided arguments against.
While the actions indicated by Applicant do not all recite mathematical symbols, it is important to note that a mathematical concept need not be expressed in mathematical symbols. The instant claims recite words operating on data to solve a problem, which serves the same purpose as a formula (see MPEP 2106.04(a)(2)). It is noted that newly included claim 31 explicitly recites a mathematical formula. Finally, the limitations require the use of mathematical concepts as their only embodiment for performance. There is no way to use the prediction models on the data forms generated in the claim without using mathematical concepts. Ultimately, the claim is directed to a method for determining an interaction between an RNA and protein based on mathematical predictive models. Applicant’s arguments that the claims recite concepts which are only based on mathematical concepts is unpersuasive because the claims recite steps which require the performance of mathematical concepts, described in words, as their only embodiment.
Applicant’s remarks regarding the application using a technical means to reveal intrinsic interactions between RNA and protein are also unpersuasive because such an act of revealing the intrinsic nature inherently relies on that intrinsic nature. The claims ultimately recite a method that describes the natural relationship between an RNA molecule and a protein, and therefore recite a natural phenomenon.
At p. 16, par. 3 through p. 17, par. 1, Applicant submits that the claims integrate any alleged judicial exception into a practical application at Step 2A, Prong 1, because revealing the interaction between the RNA and the protein is of great significance for revealing the molecular mechanism of noncoding RNA in human diseases and life activities, and is an important way to analyze functions in noncoding RNA and protein.
It is respectfully submitted that this is not persuasive. Applicant alleges that the limitation “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics” represents a “practical application”. However, steps directed to “applying” that provide the supposed improvement in the instant claims are steps that are, themselves, the judicial exceptions and cannot therefore be a practical application of the judicial exception. The courts have made clear that a judicial exception is not eligible subject matter (Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)) if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, it is the additional elements (if any) in the claim that must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible. It is submitted here that the instant claims do not include any additional elements that provide for a practical application. Rather, the “additional element” in the instant claims (see exemplary claim 1) includes only the step of “acquiring” data. As set forth above, said steps operate in the claim as data gathering steps and do not integrate any of the recited judicial exceptions into a practical application, nor do the claims as a whole include any inventive concept beyond well-understood, routine and conventional steps.
At p. 17, par. 2 through p. 18, Applicant submits that the claims recite significantly more than any alleged judicial exception at Step 2B because the claim recites, among other limitations, jointly training and using machine learning models including neural networks. Applicant submits that because claim 11, which was previously found to be free of the art, is included in amended claim 1, that the claim is not merely a well-understood, routine, and conventional activity.
It is respectfully submitted that this is not persuasive. MPEP 2106.05(d) sets forth that, at Step 2B, it is the additional elements which are examined to determine whether they are well-understood, routine, conventional activities previously known to the industry. The analysis at Step 2A, Prong 2, considers the claims as a whole, i.e., the additional elements in combination with the judicial exceptions (see MPEP 2106.05(a)), although the integration or improvement provided in the claim must flow from the additional elements and not the judicial exceptions to be considered persuasive. However, Step 2B requires examining only the additional elements, either alone or in combination with one another, for conventionality. An “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself (Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)). The limitations pointed to be Applicant are considered to recite a judicial exception as described above and are therefore not considered at Step 2B.
While the claim does recite several additional elements, including steps for acquiring data, outputting results, and using a convolutional neural network model or a recurrent neural network model, those limitations are considered to be well-understood, routine, and conventional, as described in the above rejection. It is further noted that Applicant’s arguments are not completely commensurate with the scope of claim 1, because claim 1 does not recite a neural network or joint determination of a prediction result.
Applicant addresses that novelty alone is not dispositive of subject-matter eligibility. Indeed, the standard for assessing the conventionality of the additional elements at Step 2B of the 35 USC 101 analysis is separate and distinct from the standard for applying prior art under 35 USC 102 or 103 (see MPEP 2106.05(I)). Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. As described above, it is only the additional elements which are evaluated for significantly more at Step 2B.
Claim Rejections - 35 USC § 102 & § 103
The outstanding prior art rejections under 35 USC 102 and 103 over claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 is withdrawn in view of the amendments submitted herein. Specifically, neither the closest prior art to Pan et al. (BMC Genomics, 2016, 17(582):1-14) or any art identified in IDS or through the indicated searches teach the limitations “counting frequency of occurrence of each of the k-mer subsequences contained in the first candidate itemset in the original data set, and forming a frequent itemset by using a k-mer subsequence that meets a preset occurrence frequency threshold”, “cross-combining the RNA k-mer subsequence and the protein k-mer subsequence contained in the frequent itemset, and forming a second candidate itemset by using a k-mer subsequence pair obtained through cross-combination”, “counting frequency of occurrence of each k-mer subsequence pair contained in the second candidate itemset in the original data set, to obtain a support degree of each k-mer subsequence pair”, and “forming the original sequence feature set by using a k-mer subsequence pair whose support degree meets a preset condition”.
Double Patenting
The outstanding rejection is withdrawn in view of the amendments submitted herein. Specifically, copending Application No. 17/916,540 does not disclose “applying the interaction between the RNA and the protein determined to explain of a molecular mechanism of a cellular process involving noncoding RNAs, the cellular process comprising alternative splicing, chromatin modification and epigenetics” as recited in claims 1 and 27.
Conclusion
No claims are allowed.
Claims 1, 3-5, 7-10, 12-13, 16-18, 24, and 27-32 appear to be free of the prior art. Neither the closest prior art to Pan et al. (BMC Genomics, 2016, 17(582):1-14) or any art identified in IDS or through the indicated searches teach the limitations “counting frequency of occurrence of each of the k-mer subsequences contained in the first candidate itemset in the original data set, and forming a frequent itemset by using a k-mer subsequence that meets a preset occurrence frequency threshold”, “cross-combining the RNA k-mer subsequence and the protein k-mer subsequence contained in the frequent itemset, and forming a second candidate itemset by using a k-mer subsequence pair obtained through cross-combination”, “counting frequency of occurrence of each k-mer subsequence pair contained in the second candidate itemset in the original data set, to obtain a support degree of each k-mer subsequence pair”, and “forming the original sequence feature set by using a k-mer subsequence pair whose support degree meets a preset condition”.
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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/JANNA NICOLE SCHULTZHAUS/Examiner, Art Unit 1685
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