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 .
Claim Status
Claim 1-8 and 10-15 are pending and under examination.
Claim 9 has been canceled.
Response to Amendment
The amendments to the drawings and specification received on 03/05/2026 are accepted. Accordingly, the previous drawing and specification objections are withdrawn.
Claim the amendments have overcome the claim objections previously set forth in the Non-Final Rejection. Therefore, the claim objections have been withdrawn. However, based on the amended claims, new claim objections have been set forth.
The 112(f) claim interpretation(s) have been maintained.
The 112(a) enablement rejection(s) have been modified and maintained. Further, based on the claim amendments, new 112(a) new matter rejection(s) have been set forth.
Applicant’s amendments to the claims have overcome each 112(b) rejection. Therefore, the 112(b) rejection(s) have been withdrawn.
Based on the amended claims, new 112(d) rejection(s) have been set forth.
The 101 rejection(s) have been modified and maintained to address the amended claims.
Based on the amended claims and remarks, received 03/05/2026, the previous prior art rejection over Simakova has been withdrawn and a new prior art rejection set forth (see below).
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 recites “uthe client device” which appears to be a grammatical/clerical mistake and should recite “the client device”.
Appropriate correction is required.
Claim Interpretation
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) is/are:
“an obtaining unit configured to receive a digital representation” in claim 10.
“a model unit configured to provide a data driven model” in claim 10.
“a pareto unit configured to provide a provisional pareto front” in claim 10.
“a property determination unit configured to determine the at least two characteristic material properties” in claim 10.
“a validation unit configured to compare the determined at least two characteristic material properties” in claim 10.
“a providing unit configured to, based on the comparison provide a control file” in claim 10.
Claim element “an obtaining unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “An obtaining unit 510 is configured for receiving a digital representation of a material. In this example the obtaining unit is a client device communicatively coupled to a property determination unit 520.”. Accordingly, the examiner interpreting claim limitation “obtaining unit” as any computer, display, or personal electronic device configured to communicate with a processor.
Claim element “a model unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “A model unit 530, is configured to provide a data driven model trained based on digital representations of previously presented materials and at least two of their respective characteristic properties. In this example the model unit 530 comprises a database with the stored data driven model”. See paragraph [0134] of applicant’s printed publication. Accordingly, the examiner interpreting claim limitation “model unit” as a database or storage medium with a model.
Claim element “a pareto unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “A pareto unit 532 is configured to provide a provisional pareto front to the validation unit 522. In this example, the pareto unit comprises a database storing the provisional pareto front”. Accordingly, the examiner interpreting claim limitation “pareto unit” as a database or storage medium that stores a pareto front.
Claim element “a property determination unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “In this example the obtaining unit is a client device communicatively coupled to a property determination unit 520. The obtaining unit may be communicatively coupled to the property determination unit by a bus system, wired, wirelessly as well as over via an internet protocol … The property determination unit 520 is configured to determine the at least two characteristic material properties of the candidate material based on the digital representation and the data driven model.”. Further, fig. 5 shows property determination unit 520 as a processor. Accordingly, the examiner interpreting claim limitation “property determination unit” as a processor in communication with a computer, display, or personal electronic device and a database.
Claim element “a validation unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “A pareto unit 532 is configured to provide a provisional pareto front to the validation unit 522 … The validation unit compares the preliminary praetor front with the determined at least two characteristic properties of the candidate material.”. Accordingly, the examiner interpreting claim limitation “validation unit” as any computer component or processor configured to compare data.
Claim element “a providing unit” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the specification states “Control unit 540 is communicatively coupled to a providing unit 524 and is configured to control the synthesis equipment, 550, 560, 570, 580, 590 … The control unit 540 controls the synthesis equipment according to the control file provided by the providing unit 524.”. Accordingly, the examiner interpreting claim limitation “providing unit” as any computer component or processor configured to transmit or send data.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/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 it/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 it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1-8 & 10-15 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
That is, the factors described in In re Wand have been fully considered and are specifically addressed as follows:
(A) The breadth of the claims:
Claim 1 is directed toward a computer implemented method for controlling synthesis of a polymer material. Claim 10 is directed towards an apparatus for controlling synthesis of a polymer material. Claim 13 is directed towards a computer implemented method for determining a provisional pareto front associated with characteristic material properties of polymers in particular for screening. However, the synthesis of a polymer material by determining/predicting at least two characteristic material properties of a candidate material based on material properties of previously presented materials does not appear to be enabled by the original disclosure.
(B) The nature of the invention:
The method and apparatus broadly claim “controlling synthesis of a material … wherein the candidate material is a polymer … determining the at least two characteristic material properties of the candidate material based on the data driven model and the digital representation, wherein the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability … comparing the determined at least two characteristic material properties with the provisional pareto front, wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front”. In the present case, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to create and use the invention commensurate in scope with the claims. Specifically, with respect to the claimed “synthesis of polymer materials [by] determining at least two material properties of a candidate material based on digital representations of previously presented materials and at least two of their respective characteristic properties”.
(C) The State of the prior art:
Simakova et al. (US 2020/0093930) discloses a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions.
(D) The level of one of ordinary skill:
The level of one of ordinary skill in the art is high as it would require synthesis of any polymer material solely based on two characteristic properties from dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability of any previously presented polymer materials.
(E) The level of predictability in the art:
The level of predictability in the art based on Simakova is that a polymer-based material may be synthesized for a particular application based on a specific length that yields higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics. However, synthesis of any candidate material solely based on any material properties of previously any presented materials is not predicable in the art.
(F) The amount of direction provided by the inventor:
Applicants printed publication discloses the following structure related to the claimed method/apparatus:
(i) an obtaining unit 510; figs. 5, [0134]
(ii) a property determination unit 520; figs. 5, [0134]
(iii) a model unit 530; figs. 5, [0134]
(iv) a pareto unit 532; figs. 5, [0134]
(v) a validation unit 522; figs. 5, [0134]
(vi) a control unit 540; fig. 5, [0134]
(vii) a providing unit 524; [0134]
(viii) one or more reservoirs 550; fig. 5, [0134]
(ix) one or more valves 560/610; fig. 5, [0134]
(x) reactor 570; fig. 5, [0134]
(xi) a mixer 580; fig. 5, [0134]
(xii) a heating/cooling element 590; fig. 5, [0134]
(xiii) a motor 600; fig. 5, [0134]
(xiv) measurement apparatus 620; fig. 5, [0134]
(G) The existence of working examples:
Applicants printed publication does not provide any working examples nor does it provide specific polymer materials or material properties. Paragraph [0046] defines “Materials” as “a chemical substance or mixture of substances, a chemical substance may be e.g., polymers, emollients, formulations, mixtures, alloys, ceramics, glasses” and paragraph [0050] defines “Characteristic material properties” as “physical or chemical properties of a material, in particular to technical application properties of the material. Characteristic material properties may relate to molecular properties. The characteristic material properties may also be named objected”. However, these definitions broadly encompass virtually any material or property, and the remainder of the specification is devoid of specific working examples.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applicants printed publication does not provide any working examples nor does it provide specific polymer materials or material properties. Based on the broad definitions for “materials” and “characteristic material properties” in paragraphs [0046] and [0050] of applicants printed publication, virtually any polymer material or any property and application would satisfy these definitions. Further, given all of the permutations for the properties recited in claims 1, 10, and 13 and all the polymer materials, the quantity of experimentation needed to make or use the invention based on the content of the disclosure would be high. Accordingly, there is insufficient direction or existence of working examples provided by the inventor to convey to one or ordinary skill in the art how any material may be synthesized based on any property of any previously presented material.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1, 10, and 13.
Claims 2-8 and 12 are also rejected by their dependency from claim 1. Claim 11 is also rejected by its dependency from claim 10. Claims 14-15 are also rejected by their dependency from claim 13.
Claims 1-8 and 10-15 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.
Claims 1, 10, and 13 have been amended to recite “wherein the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability”. However, a review of applicants printed publication does not set forth any of the characteristic properties set forth in the amended claims. Accordingly, the claimed characteristic properties including dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability are now new 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. Claims 2-8 and 12 are also rejected by their dependency from claim 1. Claim 11 is also rejected by its dependency from claim 10. Claims 14-15 are also rejected by their dependency from claim 13.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites “wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front”. However, claim 1 lines 15-16 have been amended to recite “wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front”. Accordingly, dependent claim 6 fails to specify a further limitation of the subject matter claimed. See MPEP 608.01(n)(III). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-8 and 10-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 is directed toward a method. Claim 10 is directed toward an apparatus. Claim 13 is directed toward a method.
Step 2A, Prong One: Identify the law of nature/natural phenomenon/abstract ideas.
Claim 1 recites the abstract ideas “determining the at least two characteristic material properties of the candid material based on the data driven model and the digital representation”, “comparing the determined at least two characteristic material properties with a provisional pareto front, wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front”.
Claim 10 recites the abstract ideas “a pareto unit configured to provide a provisional pareto front associated with the at least two characteristic material properties for the previously presented materials”, “a property determination unit configured to determine the at least two characteristic material properties of the candidate material based on the data driven model and the digital representation”, “a validation unit configured to compare the determined at least two characteristic material properties with the provisional pareto front to determine if the determined characteristic material properties overlap with the provisional pareto front”.
Claim 13 recites the abstract ideas “wherein the data driven model is configured to predict characteristic properties of polymers based on their digital representation”, “predicting with the processing device the at least two characteristic material properties of remaining polymers from the set of polymers based on the data driven model”, “determining with the processing device from the set of polymers a predicted pareto optimum for the at least two of the characteristic material properties”.
These abstract ideas are mental processes and/or mathematical concepts that could be performed by a human person or by pen and paper or by a generic computer. The computer in claim 1, the pareto unit, property determination unit, and validation unit in claim 10, and processing device in claim 13, are merely a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III).
Step 2A, Prong Two: Has the abstract idea been integrated into a particular practical application?
No. After the comparison no action is taken if no overlap is determined, and therefore is not a particular practical application.
Claim 1 additionally recites providing a digital representation of a candidate polymer material, providing a data driven model based on previously presented materials, the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, and providing a control file for controlling synthesis if an overlap is determined.
Claim 10 additionally recites an obtaining unit to receive a digital representation of a candidate polymer material, a modeling unit to provide a data driven model based on previously presented materials, the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, and a providing unit to provide a control file if an overlap is determined.
Claim 13 additionally recites providing a digital representation of a set of polymer and material properties via a communication interface, providing at least two characteristic properties chosen from dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, providing a data driven model based on digital representation of a subset of polymers, providing a provisional pareto front via the communication interface.
However, data gathering and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception do not integrate the judicial exception into a particular practical application because data gathering is merely insignificant extra-solution activity. See MPEP § 2106.05(g), Insignificant Extra-Solution Activity and § 2106.05(f), Mere Instructions To Apply an Exception. Furthermore, receiving, transmitting, or providing data over a network has been recognized as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity to apply an exception. See MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity.
Step 2B: Does the claim recite any elements which are significantly more than the abstract idea?
Claim 1 recites providing a digital representation of a candidate polymer material, providing a data driven model based on previously presented materials, the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, and providing a control file for controlling synthesis if an overlap is determined.
Claim 10 recites an obtaining unit to receive a digital representation of a candidate polymer material, a modeling unit to provide a data driven model based on previously presented materials, the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, and a providing unit to provide a control file if an overlap is determined.
Claim 13 recites providing a digital representation of a set of polymer and material properties via a communication interface, providing at least two characteristic properties chosen from dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, providing a data driven model based on digital representation of a subset of polymers, providing a provisional pareto front via the communication interface.
These additional elements do not effectively transform or reduce the system to a different state or thing beyond such that the claims recite significantly more than well-understood, routine, and conventional activities previously known to the industry (See MPEP § 2106.05(c), Particular Transformation and MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity) as evidenced by Simakova et al. (US 2020/0093930 – hereinafter “Simakova”) and Takeda et al. (US 2019/0286791 – hereinafter “Takeda”). Simakova and Takeda disclose a method for synthesizing polymer conjugates using a high-throughput system programmed with self-learning algorithms for a particular application; (Simakova [0005, 0008, 0047, 0096, 0100, 0106] and Takeda [0019-0020, 0025, 0040]). The self-learning algorithm analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; (Simakova; [0096, 0100, 0106] and Takeda [0019-0020, 0040, 0052-0054, 0068]). The system generates synthesis conditions and libraries of polymer conjugates under controlled conditions; (Simakova; [0004, 0008, 0012, 0096, 0100, 0106] and Takeda; [0019-0020, 0060-0068]).
Claim 2 further limits the synthesis specification of the candidate material as comprising a list of ingredients and machine-readable instructions for synthesizing material. However, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception. Accordingly, these elements do not integrate a judicial exception or provide significantly more and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment). Simakova additionally disclose selecting candidate materials from a list of ingredients and performing the synthesis according to an algorithm with an automated device; [0009-0011, 0014, 0047, 0053-0081].
Claims 3 further limits the digital representation as being provided by a client device and the control file as being received by a client device. However, these additional elements do not effectively transform or reduce the system to a different state or thing beyond such that the claims recite significantly more than well-understood, routine, and conventional activities previously known to the industry (See MPEP § 2106.05(c), Particular Transformation and MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity). Furthermore, receiving, transmitting, or providing data over a network has been recognized as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity to apply an exception. See MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity. Simakova disclose the self-learning algorithm is implemented on a high-throughput device using automated equipment programmed with the algorithm and thus comprise a client device; [0096, 0100, 0106].
Claim 4 further limits the abstract idea of the pareto front as comprising a measure for uncertainty. However, the pareto front implemented on a computer is merely a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception. Accordingly, these elements do not integrate a judicial exception or provide significantly more and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment). Simakova disclose the numerical ranges and parameters setting forth the broad scope of the invention are approximations which inherently contains error necessarily resulting from the standard deviation found in its underlying respective testing measurements; [0130].
Claim 5 further limits the abstract idea of the characteristic properties as comprising a measure for uncertainty. However, determining properties based on the data model implemented on a computer is merely a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception. Accordingly, these elements do not integrate a judicial exception or provide significantly more and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment). Simakova disclose determining, for example, a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and the numerical ranges and parameters setting forth the broad scope of the invention are approximations which inherently contains error necessarily resulting from the standard deviation found in its underlying respective testing measurements; [0106, 0130].
Claim 6 recites the abstract idea of “the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front” (step 2A prong 1), but does not integrate the exception under 2A prong 2 because these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception. Accordingly, these elements do not integrate a judicial exception or provide significantly more and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment). Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106].
Claim 7 further limits the abstract idea of the comparing step as determining an overlap, and providing the control file if an overlap is determined. However, comparing values using the pareto front implemented on a computer is merely a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception. Accordingly, these elements do not integrate a judicial exception or provide significantly more and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment). Simakova disclose a self-learning algorithm programmed into a high-throughput device for generating synthesis conditions and generating libraries of biomolecule-polymer conjugates under controlled conditions until an optimal biomolecule-polymer conjugate for a particular application is obtained; [0004, 0008, 0012, 0047, 0096, 0100, 0106].
Claim 8 further limits the method by controlling flow rates of ingredients and reaction temperatures. However, these additional elements do not effectively transform or reduce the system to a different state or thing beyond such that the claims recite significantly more than well-understood, routine, and conventional activities previously known to the industry (See MPEP § 2106.05(c), Particular Transformation and MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity). Simakova disclose controlling flow rates and temperatures; [0011, 0014].
Claim 11 further limits the apparatus as comprising a control unit for controlling the synthesis. However, these additional elements do not effectively transform or reduce the system to a different state or thing beyond such that the claims recite significantly more than well-understood, routine, and conventional activities previously known to the industry (See MPEP § 2106.05(c), Particular Transformation and MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity). Simakova disclose an automated device configured to deliver one or more of a reactant, solve or catalyst to each reaction chamber; [0011, 0014].
Claim 12 recites a non-transitory computer readable medium comprising instructions for controlling the synthesis of the polymer on computing devices according to claim 1. However, a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception.
Claim 14 further limits the method of claim 13 as comprising a processor and a memory. However, these additional elements do not effectively transform or reduce the system to a different state or thing beyond such that the claims recite significantly more than well-understood, routine, and conventional activities previously known to the industry (See MPEP § 2106.05(c), Particular Transformation and MPEP § 2106.05(d), Well-Understood, Routine, Conventional Activity). Simakova disclose the method is performed on a high-throughput device programmed with the self-learning algorithm; [0100, 0106].
Claim 15 recites a non-transitory computer readable medium comprising instructions for a computer to perform the method of claim 13. However, a general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Simakova et al. (US 2020/0093930; already of record – hereinafter “Simakova”) in view of Takeda et al. (US 2019/0286791 – hereinafter “Takeda”).
Regarding claim 1, Simakova disclose a computer implemented method for controlling synthesis of a material (Simakova disclose a method for synthesizing biomolecule-polymer conjugates using a high-throughput system programmed with self-learning algorithms; [0005, 0008, 0047, 0096, 0100, 0106]), the method comprising:
- providing a digital representation associated with a synthesis specification of a candidate material, wherein the candidate material is a polymer (Simakova disclose synthesizing a biomolecule-polymer conjugate for a particular application; [0096, 0100, 0106])
- providing a data driven model trained based on digital representations of previously presented materials and at least two of their respective characteristic properties (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]),
- determining the at least two characteristic material properties of the candidate material based on the data driven model and the digital representation, and wherein the data driven model is configured to predict characteristic properties of candidate polymers based on their digital representation (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]. After multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]; [0106]),
- comparing the determined at least two characteristic material properties with a provisional pareto front wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]),
- based on the comparison providing a control file suitable for controlling the synthesis of the candidate material if the comparing step determines an overlap, and prevents synthesis of the material that would not improve the provisional pareto front (Simakova disclose generating synthesis conditions and generating libraries of biomolecule-polymer conjugates under controlled conditions to act as a feedback loop in an effort to Pareto optimize conjugate synthesis for a given application until a conjugate that cannot be further improved is selected; [0004, 0008, 0012, 0096, 0100, 0106]).
Simakova does not teach wherein the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability.
However, Takeda teach the analogous art of a method for controlling synthesis of a polymer material using data driven models of known materials to synthesis a new chemical compound (Takeda; [0019-0020, 0025, 0040-000078]), wherein at least two properties comprising at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability of the new chemical compound are determined (Takeda; [0052-0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the at least two characteristic properties of Simakova with the at least two properties comprising at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability, as taught by Takeda, because Takeda teach the at least two properties can be selected by a user as a reference for identifying a new chemical structure (Takeda; [0052]).
Regarding claim 2, modified Simakova disclose the method according to claim 1 above, wherein the synthesis specification of the candidate material comprises a list of ingredients and machine-readable instructions for synthesizing material (Simakova disclose selecting candidate materials from a list of ingredients and performing the synthesis according to an algorithm with an automated device [0009-0011, 0014, 0047, 0053-0081]).
Regarding claim 3, modified Simakova disclose the method according to claim 1 above, wherein the digital representation is provided by a client device and the control file is received by the client device (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions. The self-learning algorithm is implemented on a high-throughput device programmed with the algorithm and thus comprise a client device; [0096, 0100, 0106]).
Regarding claim 4, modified Simakova disclose the method according to claim 1 above, wherein the provisional pareto front comprises a measure for uncertainty (Simakova disclose the numerical ranges and parameters setting forth the broad scope of the invention are approximations which inherently contains error necessarily resulting from the standard deviation found in its underlying respective testing measurements; [0130]).
Regarding claim 5, modified Simakova disclose the method according to claim 1 above, wherein the at least two determined characteristic properties comprise a measure for uncertainty (Simakova disclose determining, for example, a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and the numerical ranges and parameters setting forth the broad scope of the invention are approximations which inherently contains error necessarily resulting from the standard deviation found in its underlying respective testing measurements; [0106, 0130]).
Regarding claim 6, modified Simakova disclose the method according to claim 1 above, wherein the comparing comprises determining if the determined characteristic material properties overlap with the provisional pareto front (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]).
Regarding claim 7, Simakova disclose the method of claim 6 above, wherein the control file is provided if the comparing step determines an overlap (Simakova disclose a self-learning algorithm programmed into a high-throughput device for generating synthesis conditions and generating libraries of biomolecule-polymer conjugates under controlled conditions until an optimal biomolecule-polymer conjugate for a particular application is obtained; [0004, 0008, 0012, 0047, 0096, 0100, 0106]).
Regarding claim 8, Simakova disclose the method of claim 1 above, wherein the method further comprises controlling the synthesis by controlling flow rates of ingredients and reaction temperatures (Simakova; [0011, 0014]).
Regarding claim 10, Simakova disclose an apparatus for controlling synthesis of a material (Simakova disclose a method for synthesizing biomolecule-polymer conjugates using a high-throughput device programmed with self-learning algorithms; [0005, 0008, 0047, 0096, 0100, 0106]), the apparatus comprising at least:
- an obtaining unit configured to receive a digital representation of a candidate material, wherein the candidate material is a polymer (Simakova disclose the high-throughput device programmed with the algorithm for synthesizing a biomolecule-polymer conjugate for a particular application; [0096, 0100, 0106]),
- a model unit configured to provide a data driven model trained based on digital representations of previously presented materials and at least two of their respective characteristic properties, and wherein the data driven model is configured to predict characteristic properties of candidate polymers based on their digital representation (Simakova disclose the self-learning algorithm analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]. After multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]; [0106]),
- a pareto unit configured to provide a provisional pareto front associated with the at least two characteristic material properties for the previously presented materials (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]),
- a property determination unit configured to determine the at least two characteristic material properties of the candidate material based on the data driven model and the digital representation (Simakova disclose determining, for example, a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics; [0106]),
- a validation unit configured to compare the determined at least two characteristic material properties with the provisional pareto front to determine if the determined characteristic material properties overlap with the provisional pareto front (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]),
- a providing unit configured to, based on the comparison providing a control file, control the synthesis of the candidate material if the validation unit determines an overlap and prevents synthesis of the materials that would not improve the provisional pareto front (Simakova disclose generating synthesis conditions and generating libraries of biomolecule-polymer conjugates under controlled conditions to act as a feedback loop in an effort to Pareto optimize conjugate synthesis for a given application until a conjugate that cannot be further improved is selected; [0004, 0008, 0012, 0096, 0100, 0106]).
Regarding claim 11, Simakova disclose the apparatus of claim 10 above, communicatively coupled to a control unit for controlling the synthesis (Simakova disclose an automated device configured to deliver one or more of a reactant, solvent or catalyst to each reaction chamber; [0011, 0014]).
Regarding claim 12, Simakova disclose a non-transitory computer readable medium for controlling synthesis of the polymer comprising instructions, which, when executed on computing devices of a computing environment, is configured to carry out the steps of the method of controlling according to claim 1 (Simakova disclose a method for synthesizing biomolecule-polymer conjugates using a high-throughput device programmed with self-learning algorithms; [0005, 0008, 0047, 0096, 0100, 0106]).
Regarding claim 13, Simakova disclose a computer implemented method for determining a provisional pareto front associated with characteristic material properties of polymers in particular for screening comprising providing via a communication interface a set of polymers, wherein each of the polymers of the set of polymers is described by their digital representation providing via the communication interface for each of the polymers of a subset of the set of polymers at least two of their respective characteristic properties (Simakova disclose a method for synthesizing biomolecule-polymer conjugates using a high-throughput system programmed with self-learning algorithms, and pareto optimization for screening and determining polymers for a particular application; [0005, 0008, 0047, 0096, 0100, 0106]. The method uses automated equipment and generates synthesis conditions and generating libraries of biomolecule-polymer conjugates under controlled conditions until an optimal biomolecule-polymer conjugate for a particular application is obtained; [0004, 0008, 0011-0012, 0014, 0047, 0096, 0100, 0106]);
providing a data driven model trained based on the digital representation of each of the polymers of the subset of polymers and at least two of their respective characteristic properties, wherein the data driven model is configured to predict characteristic properties of polymers based on their digital representations (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]. After multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]; [0106]);
predicting with the processing device the at least two characteristic material properties of remaining polymers from the set of polymers based on the data driven model (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]. After multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]);
providing via the communication interface for each of the set of polymers their at least two characteristic properties (Simakova disclose a self-learning algorithm that analyzes results from a first generation of synthesized conjugates, selects for a particular feature or functionality – for example, polymers of a specific length that yield higher conjugate stability or a particular polymer density that yields rapid enzyme kinetics, and then uses this information to generate new parameters to introduce into the second generation of synthetic conditions; [0096, 0100, 0106]. After multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]);
determining with the processing device from the set of polymer a predicted pareto optimum for the at least two of the characteristic properties (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]);
providing via the communication interface a determined provisional pareto front (Simakova disclose after multiple iterations of synthetic refinement and Pareto optimization, an optimal biomolecule-polymer conjugate for a particular application is obtained; [0047, 0096, 0100, 0106]).
Regarding claim 14, Simakova disclose a computing apparatus including a processor and a memory storing instructions that, when executed by the processor, configure the apparatus to perform the method of claim 13 (Simakova disclose the method is performed on a high-throughput device programmed with the self-learning algorithm; [0100, 0106]).
Regarding claim 15, Simakova disclose a non-transitory computer readable medium including instructions that, when processed by a computer, configure the computer to perform the method of claim 13 (Simakova disclose the method is performed on a high-throughput device programmed with the self-learning algorithm; [0100, 0106]).
Response to Arguments
Applicant’s arguments, filed 03/05/2026, have been fully considered.
Applicant’s arguments, see pages 8-9 of their remarks, towards the drawing, specification, and claim objections have been fully considered and were found persuasive. Accordingly, the drawing, specification, and claim objections have been withdrawn.
Applicant’s arguments, see page 9 of their remarks, towards the 112(a) enablement rejection has been fully considered but was not found persuasive by the examiner. Applicant argues that the amended claims now recite the candidate material is a polymer and specifies that the two characteristic properties as being “at least two of adsorption free energy, dimer free energy barrier, or radius of gyration”. The examiner respectfully disagrees. First, the claims have been amended to recite “wherein the at least two characteristic properties comprise at least two of dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility, and emulsification ability”, but does not refer to the two characteristic properties as being “at least two of adsorption free energy, dimer free energy barrier, or radius of gyration”. The amended claims thus contain new 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. Second, given all the claimed properties and all the polymers, the level of one of ordinary skill in the art is high as it would require synthesis of any polymer material solely based on two characteristic properties from dispersibility, viscosity modification, surface tension modification, biodegradability, film forming, adhesion, cohesion, anti-foaming, wetting, corrosion inhibition, hardness, tensile strength, thermal conductivity, solubility and emulsification ability of any previously presented polymer materials. Therefore, it is seen that undue experimentation would be necessary to make and use the invention of claims 1, 10, and 13.
Applicant’s arguments, see pages 9-10 of their remarks, towards the 112(b) rejection(s) have been fully considered and were found persuasive. Accordingly, the 112(b) rejection(s) have been withdrawn.
Applicant argues, see pages 10 of their remarks, towards the 101 rejection over claims 12 and 15, that the amendments “non-transitory computer readable medium” are directed towards patent eligible subject matter. The examiner notes that the amendments have placed the claims in condition for compliance with one of the four statutory categories (Step 1 of the 101 analysis), but the claims have not overcome steps 2A and 2B of the 101 analysis as being directed towards subject matter eligibility because a general-purpose computer for which to apply the abstract ideas does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, these additional elements are interpreted as mere instructions to implement the abstract idea or other exception on a computer, and generally linking the use of a judicial exception to a particular technological environment or field of use in which to apply the judicial exception.
Applicant argues, see page 11 of their remarks, toward the 101 rejection over claims 1, 10 and 13 that controlling actual polymer synthesis operations through a control file and the comparison to prevent synthesis of the polymer if it would not improve the provisional pareto front integrate the abstract idea into a practical application. The examiner respectfully disagrees. A general-purpose computer for which to apply the abstract ideas, but does not preclude the steps from being considered an abstract idea. See MPEP 2106.04(a)(2) subsections (I) and (III). Further, the control file is merely instructions to implement the abstract idea or other exception on a computer to a particular technological environment or field of use in which to apply the judicial exception, but does not integrate a judicial exception or provide significantly more such that the judicial exception is integrated into a practical application (see MPEP 2106.05(f), Mere Instructions To Apply An Exception, and MPEP §2106.05(h), Field of Use and Technological Environment).
Applicant argues, see pages 11-12 of their remarks, towards the 102 rejection over claims 1-8 and 10-15, that Simakove is directed to an iterative process where materials are first synthesized, then evaluated, and then feedback is used to optimize future synthesis conditions which is different than the claimed invention which requires pre-synthesis and gating using predicted properties to determine whether to provide a control file for synthesis based on whether the predicted properties overlap with the provisional pareto front. The examiner respectfully disagrees. First, Simakove disclose “by screening these initial results and identifying hits for a useful property of interest, a smaller area of synthesis space can be explored and conditions that would not produce usable conjugates can be discarded”. See paragraph [0096]. Accordingly, Simakove disclose gating using predicted properties to determine whether the predicted properties overlap with the pareto front. Second, the claims require “digital representations of previously presented materials and at least two of their properties”. Therefore, the claims require a feedback loop that relies on a first synthesized material that has been evaluated and used in a feedback loop.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CURTIS A THOMPSON whose telephone number is (571)272-0648. The examiner can normally be reached on M-F: 7:00 a.m. - 5:00 p.m..
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/C.A.T./Examiner, Art Unit 1798
/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798
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