DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/2/2026 has been entered.
Responses to Amendments and Arguments
The amendments filed 3/2/2026 have been entered. Claims 1 and 14 are amended. Claims 1-17 remain pending in the application.
Applicant's argument and amendments filed 3/2/2026 with respect to
the rejection of claims 1-17 directed to a judicial exception under 35 U.S.C. 101 have been fully considered but are not persuasive. (See the detailed response presented below).
On pages 5-7 of Applicant’s response, Applicant alleges that the claims are not directed to an abstract idea but rather to a specific, practical application in the field of nuclear magnetic resonance (NMR) spectroscopy. The claimed steps are not mere mathematical concepts or mental processes, but a particular technological improvement applied to a specific type of data (1H-NMR spectral data), which typically consists of large datasets … The extraction and differentiation are targeted solely at the imaginary part, which, as described in the specification, results in the enhancement of small molecule signals and suppression of macromolecular signals … This produces a usable, tangible output. That is, an improved spectrum that facilitates analysis in practical applications (such as metabolomics), where distinguishing small molecule signals from macromolecular interference is critical. The claimed process integrates any purported abstract idea into a practical application by transforming raw experimental data into an enhanced spectral output that addresses the specific problem in NMR spectroscopy of baseline confounding from macromolecules. This is not a generic computer implementation but a specific sequence of operations … to achieve a technological result.
The Examiner respectfully disagrees.
Note that the feature of “extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data … first differentiating the imaginary part to obtain a first derivative” may encompass calculating or inferring an imaginary part of spectral data, where the steps of the extraction and differentiation are indicative of mathematical calculations. (See at least pages 18 and 25-26 of the specification). If Applicant believes that the steps related to the extraction and first differentiation are meaningful as alleged, at least the claims present the specific structure/features of a tangible or physical structure related to resulting in enhancement of small molecule signals and suppression of macromolecular signals. The claims do not present tangible or physical elements/components and/or integration of improvements to be indicative of specific features/structure/acts, for example, how and/or with what to extract and differentiate an imaginary part of spectral data to thereby result in enhancement of small molecule signals and suppression of macromolecular signals. (See MPEP 2106.04(d)). Further, the claims do not present a technical solution to a technical problem by providing an improvement to the functioning of computer, or to any other technology or technical field related to, for example, extracting and differentiating an imaginary part of spectral data to thereby result in enhancement of small molecule signals and suppression of macromolecular signals. (See MPEP 2106.04(d)). Therefore, the Examiner is not persuaded by Applicant’s amendments and arguments. The Examiner maintains the claims are ineligible.
Applicant’s amendments and arguments filed 3/2/2026, with respect to the rejection of claims 1-16 under 35 U.S.C. 103 have been fully considered and are persuasive, because the applied arts do not teach “extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data; first differentiating the imaginary part to obtain a first derivative”.
Applicant’s arguments filed 3/2/2026, with respect to the rejection of claim 17 under 35 U.S.C. 103 have been fully considered but are not persuasive.
On pages 7- of Applicant’s response, Applicant alleges AN does not teach differentiating an imaginary part of Fourier-transformed spectral data, much less extracting an imaginary part of said data before differentiating it alone. … Thus, the alleged combination of HIRAKAW A and AN fail to meet the limitations of claim I as currently amended. Since AN also fails (for at least the same reasons) to teach extracting an imaginary part of Fourier-transformed spectral data, followed by first differentiation of said imaginary part, no combination of HIRAKA WA and AN can remedy the deficiency that HIRAKAWA does not disclose.
The Examiner respectfully disagrees.
Examiner notes that Claim 17 makes no amendments and has similar limitations as of previous claim 1. Note that, under the broadest reasonable interpretation, calculating a derivative of the imaginary part of the NMR spectra data as taught by HIRAKAWA, is indicative of a mathematical calculation related to differentiating an imaginary part of spectral data, which is to calculate a rate of change for an imaginary part of spectral data. That is, the claimed features related to “differentiating the imaginary part of spectral data” is explicitly or inherently taught by calculating a derivative of the imaginary part of the NMR spectra data (see at least pages 2 and 4 of the English machine translation of HIRAKAWA). Even though it is assumed that HIRAKAWA fails to literally disclose differentiating the imaginary part of the Fourier-transformed spectral data, at least paragraph 0036 in AN teaches a mathematical function, differentiating an imaginary part of the Fourier-transformed spectral data to calculate a derivative (i.e., a rate of change) for the imaginary part.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The current 35 USC 101 analysis is based on the current guidance (Federal Register vol. 79, No. 241. pp. 74618-74633). The analysis follows several steps. Step 1 determines whether the claim belongs to a valid statutory class. Step 2A prong 1 identifies whether an abstract idea is claimed. Step 2A prong 2 determines whether any abstract idea is integrated into a practical application. If the abstract idea is integrated into a practical application the claim is patent eligible under 35 USC 101. Last, step 2B determines whether the claims contain something significantly more than the abstract idea. In most cases the existence of a practical application predicates the existence of an additional element that is significantly more.
The 35 USC 101 analysis between each element of claims and its combination is presented in the table below
Claim number and elements
Judicial exception (Step 2A Prong one)
Practical application (Step 2A Prong two)/ Significantly more (Step 2B)
Claim 1
Step 1: Yes, statutory class
Step 2A Prong two: No / Step 2B: No
A computer-implemented method, comprising:
Step2A Prong one: Yes
receiving 1H-NMR spectral data for a sample which includes small molecules and macromolecules;
performing a Fourier transform of the 1H-NMR spectral data to obtain Fourier- transformed spectral data;
abstract idea
mathematical process
“receiving ~” is insignificant pre-solution activity to collect data which are used to perform abstract idea itself.
“performing a Fourier ~” is a mathematical process based on the spectral data.
extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data;
mathematical process
“extracting … or extracting …” is a mathematical calculation. (page 25 of the specification).
first differentiating the imaginary part to obtain a first derivative;
storing the first derivative in storage; and
“first differentiating …” is a mathematical calculation. (pages 18, 25-26 of the specification).
“storing ~” is an insignificant post-solution activity to perform a generic function of a generic computer component.
generating a spectrum or a set of spectra using the first derivative in which signals from the small molecules in the sample are enhanced by suppressing baseline confounding broad signals arising from the macromolecules.
abstract idea
mathematical process
“generating a spectrum …” is mathematical calculation. (pages 2-3, 18, 25-26 of the specification)
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-16 are directed to an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as addressed below and presented in the above table.
Step 2A: Prong One
Regarding Claim 1, the limitations recited in Claim 1, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mathematical calculations and/or the mind, as presented in the above table. Nothing in the claim elements precludes the step from practically being performed in the mind and/or the mathematical calculations. For example, “performing a Fourier transform of the 1H-NMR spectral data to obtain Fourier- transformed spectral data” and “extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data to obtain a first derivative; first differentiating the imaginary part to obtain a first derivative” in the context of this claim may encompass mathematical calculations by calculating the 1H-NMR spectral data using a mathematical tool such as a Fourier transform to obtain a mathematical result (i.e., the Fourier- transformed spectral data) and by further calculating the imaginary part of the Fourier-transformed spectral data to obtain another mathematical result (i.e., the a first derivative), where the steps of the extraction and differentiation are indicative of mathematical calculations. (See at least pages 15-16, 18, 23 and 25-26 of the specification). The “imaginary part of the Fourier- transformed spectral data …” and the “first derivative” are both indicative of mathematical values/amounts/results calculated using mathematical calculations/relationship. For example, “generating a spectrum or a set of spectra using the first derivative in which signals from the small molecules in the sample are enhanced by suppressing baseline confounding broad signals arising from the macromolecules” in the context of this claim may encompass calculating or inferring a spectrum or a set of spectra using the mathematically calculated result (i.e., the first derivative), where the step of “suppressing baseline confounding broad signals …” is indicative of a part of the mathematical calculation for generating the spectrum or the set of spectra. (See at least pages 2-3, 15-16, 18, 23 and 26 of the specification).
Step 2A: Prong Two
This judicial exception is abstract ideal itself and not integrated into a practical application. In particular, the specification details use of a processor to perform mathematical calculations of “performing a Fourier transform of the 1H-NMR spectral data to obtain Fourier- transformed spectral data”, “extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data to obtain a first derivative; first differentiating the imaginary part to obtain a first derivative” and “generating a spectrum or a set of spectra using the first derivative in which signals from the small molecules in the sample are enhanced by suppressing baseline confounding broad signals arising from the macromolecules”. The limitation of “receiving 1H-NMR spectral data for a sample” is insignificant pre-solution activity necessary to merely gather data (i.e., the 1H-NMR spectral data) to be used for performing the abstract idea. The limitation of “storing the first derivative in storage” is insignificant post-solution activity necessary to perform a generic function of a generic computer component. See MPEP 2106.05(g). Claim 1 does not present tangible or physical elements/components and/or integration of improvements to be indicative of specific features/structure/acts, for example, how and/or with what to extract and differentiate an imaginary part of spectral data to thereby result in enhancement of small molecule signals and suppression of macromolecular signals. (See MPEP 2106.04(d)). Further, Claim 1 does not present a technical solution to a technical problem by providing an improvement to the functioning of computer, or to any other technology or technical field related to, for example, extracting and differentiating an imaginary part of spectral data to thereby result in enhancement of small molecule signals and suppression of macromolecular signals. (See MPEP 2106.04(d)). There is no showing of integration into a practical application such as an improvement to the functioning of a computer, or to any other technology or technical field, or use of a particular machine.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations of “receiving 1H-NMR spectral data for a sample” and of “storing the first derivative in storage” are insignificant extra-solution activities recited to perform the abstract idea, as set forth above. See MPEP 2106.05(g). As discussed above, with respect to integration of the abstract idea into a practical application, using the computer system to perform “receiving 1H-NMR spectral data for a sample”, “storing the first derivative in storage”, “performing a Fourier transform of the 1H-NMR spectral data to obtain Fourier- transformed spectral data”, “extracting an imaginary part of the Fourier-transformed spectral data or extracting an imaginary part of processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data to obtain a first derivative; first differentiating the imaginary part to obtain a first derivative” and “generating a spectrum or a set of spectra using the first derivative in which signals from the small molecules in the sample are enhanced by suppressing baseline confounding broad signals arising from the macromolecules” amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept cannot provide statutory eligibility. Claim 1 is not patent eligible.
Regarding Claims 2-13 and 15-16, the limitations are further directed to an abstract idea, as described in claim 1. For the reasons described above with respect to Claim 1, the judicial exceptions are not meaningfully integrated into a practical application, or amount to significantly more than the abstract idea. The additional elements of the processor in Claim 13, the computer program product comprising a non-transitory computer-program readable medium in Claims 12 and 13, the storage in Claim 15, and the apparatus in Claims 15 and 16 are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processes related to mathematical calculation) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The limitations of “apodizing the 1H-NMR spectral data prior to performing the Fourier transform using an apodization function” in Claim 5, “processing the Fourier-transformed spectral data to generate processed Fourier- transformed spectral data” in Claim 6, and “performing phase correction on the Fourier-transformed spectral data” in Claim 7 in the context may encompass mathematical calculations using a Fourier transform. The limitations of “storing one or more sets of 1H-NMR spectral data” and “processing 1H-NMR spectral data, the apparatus configured to retrieve the one or more sets of 1H-NMR spectral data from storage and” in Claim 15, and “generating 1H-NMR spectral data for a sample” in Claim 16 are insignificant extra-solution activities used to perform a generic computer function of generic computer component and/or abstract idea related to mathematical calculations as set forth above.
Regarding Claim 14, it is an apparatus type claim having similar limitations as of claim 1 above. Therefore, it is rejected under the same rationale as of claim 1 above. The additional elements of the processor and the memory are high-level of generalities recited to perform a generic computer function of a generic computer to perform mathematical calculation.
Regarding Claim 17, it is a method type claim having similar limitations as of claim 1 above. Therefore, it is rejected under the same rationale as of claim 1 above. The additional limitation of “generating 1H-NMR spectral data for a sample” is insignificant pre-solution activity necessary to merely gather data (i.e., the 1H-NMR spectral data) to be used for performing the abstract idea.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over HIRAKAWA KEIKO et al. (JP 2006337354 A, hereinafter referred to as “HIRAKAWA”, cited in IDS dated 11/01/2022) in view of AN et al. (CN 104391285 A, hereinafter referred to as “AN”).
Regarding Claim 17, HIRAKAWA teaches a method, comprising:
generating 1H-NMR spectral data for a sample (Abstract, “a large number of samples from an NMR equipment 102 are transformed into NMR spectra”); and
processing the 1H-NMR spectral data (Abstract, “analytical processings of NMR spectra”), including:
performing a Fourier transform of the 1H-NMR spectral data to obtain Fourier- transformed spectral data (Abstract; “In the NMR spectrum processing 110, the FID data of each sample is converted into NMR spectrum data by Fourier transform … In step 124, Fourier transform processing is performed on the FID data that has passed” in pages 3 and 4 of the English machine translation);
first differentiating the imaginary part of the Fourier-transformed spectral data or processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data to obtain a first derivative (Abstract, “calculate an absolute value derivative that is the square root of the sum of the squares of the frequency derivative of the real part in each of the NMR spectra, and a square of frequency derivative of an imaginary part (step 110)”; “the absolute value differentiation of NMR spectrum data is the square root of the sum of the square of the frequency (chemical shift) derivative of the real part of the NMR spectrum and the square of the frequency (chemical shift) derivative of the imaginary part. By performing spectrum analysis using such absolute value differential spectrum data, …” in page 2 of the English machine translation; “In the NMR spectrum processing 110, the FID data of each sample is converted into NMR spectrum data by Fourier transform, and the NMR spectrum data is further converted into “absolute differential calculation method” according to the principle of the present invention by “absolute differential calculation method” in page 4 of the English machine translation);
storing the first derivative in storage (Fig. 1, 106, “a storage device 106 for storing … data processed by the processor 104” in page 3 of the English machine translation).
As to the limitation of “first differentiating the imaginary part of the Fourier-transformed spectral data or processed Fourier-transformed spectral data obtained from the Fourier- transformed spectral data to obtain a first derivative”, Note that, under the broadest reasonable interpretation, HIRAKAWA teaches calculating a derivative of the imaginary part of the NMR spectra data is indicative of a mathematical calculation related to differentiating an imaginary part of spectral data, which is to calculate a rate of change for an imaginary part of spectral data. That is, the claimed features related to “differentiating the imaginary part of spectral data” is explicitly or inherently taught by calculating a derivative of the imaginary part of the NMR spectra data (see at least pages 2 and 4 of the English machine translation of HIRAKAWA). Even though it is assumed that HIRAKAWA fails to explicitly disclose differentiating the imaginary part of the Fourier-transformed spectral data, AN teaches a mathematical function, differentiating an imaginary part of the Fourier-transformed spectral data to obtain a derivative (Claim 1; Para 0036, “wherein (f) is a derivative of Fn (j), less than (Adding is Fn (j) conjugated, Im {} is calculating the imaginary part operator”).
HIRAKAWA and AN are both considered to be analogous to the claimed invention because they are in the same field of calculating an imaginary part of the Fourier transformed data. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified HIRAKAWA to incorporate the teachings of AN by providing operations of calculating a rate of change (i.e., derivative) of an imaginary part of the spectral data, by using a mathematical function of differentiation (i.e., differentiating an imaginary part of the Fourier-transformed spectral data to obtain a derivative), taught by AN at least at paragraph 0036 and claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BYUNG RO LEE whose telephone number is (571)272-3707. The examiner can normally be reached on Monday-Friday 8:30am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lee Rodak can be reached on (571) 270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-2555.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BYUNG RO LEE/Examiner, Art Unit 2858
/LEE E RODAK/Supervisory Patent Examiner, Art Unit 2858
Prosecution Insights