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 .
Election/Restrictions
Applicant’s election without traverse of claims 5-7 in the reply filed on May 4, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 7, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the cell population" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that it is unclear if “the cell population” references cells utilized in the first cellular assay or the second cellular assay as both assays utilize cells that express G protein-coupled receptors and/or channels.
Claim 7 recites the limitation "the cell population" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that it is unclear if “the cell population” references cells utilized in the first cellular assay or the second cellular assay as both assays utilize cells that express G protein-coupled receptors and/or channels.
Claim 20 recites the limitation "the pancreatic islet B cells" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that claim 20 depends on claim 19, which depends from claim 5. Independent claim 5 does not recite pancreatic islet B cells, thus the limitation in claim 20 lacks antecedent basis.
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 5-7 and 18-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) the abstract ideas of determining an ATP to ADP ratio, comparing two ATP to ADP ratios to each other, and selecting a compound. The steps of determining an ATP to ADP ratio are abstract ideas in that they require mathematical calculations that can be performed in a persons mind (MPEP 2106.04(a)(2) I C) (MPEP 2106.04 III A, B). The comparing step is also an abstract idea in that it only requires reviewing data and making a determination with respect to whether modulation of G protein-coupled receptors are regulated (MPEP 2106.04 III). Similarly, selecting a compound is an abstract in that it only requires reviewing the ratio and selecting a particular compound. This judicial exception is not integrated into a practical application because nothing occurs with the compound after it is selected. Specifically, the Examiner notes that nothing occurs with the compound after it is selected thus the claims do not recite any application of the compound after it is selected. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are directed to insignificant extra-solution activity that amounts to mere data gathering (MPEP 2106.05(g). The introducing steps of claim 5 are viewed as mere data gathering as they are utilized to generate the data to which the abstract ideas are applied. As such, the introducing steps do not provide a meaningful limitation on the claim. For the sake of brevity, the Examiner has provided analysis with respect to claim 5, but notes that claims 6, 7, and 18-20 do not provide any limitations that overcome the rejection. Therefore, in light of the rationale provided above, the Examiner contends that the limitations of the instant claims do not comply with 35 U.S.C. 101, thus the claims are directed to ineligible subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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