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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP15180251.9 filed August 07th 2015.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Europe filed December 16th 2015. It is noted, however, that applicant has not filed a certified copy of the EP15200519.5 application as required by 37 CFR 1.55.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Europe filed July 29th, 2016. It is noted, however, that applicant has not filed a certified copy of the PCT/EP2016/068248 filed July 29th, 2016 application as required by 37 CFR 1.55.
The effective filing date is August 07th 2015.
Status of Claims
Claims 1-15 are currently pending and examined on the merits. The attached interview summary form PTO-413 includes a discussion between Examiner and Attorney Shabbi S. Khan on June 29th, 2026 confirming Claims 1-15 are to be examined.
Claim Objections
Claims 5-14 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, claims 5-15 have not been further treated on the merits.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of mental steps, mathematic concepts, organizing human activity, or a natural law without significantly more.
Step 2A, Prong 1
In accordance with MPEP § 2106, claims found to recite statutory subject matter (claim 1-4 are drawn to a method) (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon (Step 2A, Prong 1). In the instant application, the claims (listed numerically) recite the following limitations that equate to an abstract idea (reasonings in parentheses):
Recited:
a) providing a computer-readable representation of a selected molecule (100) and a drug score (101) associated to the selected molecule (100), (which is a mental step, i.e. can be completed with pen and paper),
b) determining (201) a first moiety (110) of the selected molecule (100) and a second moiety (120) of the selected molecule (100), wherein the selected molecule (100) consists of the first moiety (110) and second moiety (120), (mental step)
c) determining (202) a first moiety pharmacophore (130), wherein the first moiety (110) of the selected molecule (100) fits to the first moiety pharmacophore (130), and wherein the first moiety pharmacophore is determined from a single molecule only, (mental step)
d) providing (203) a graphical user interface (150), (mental step)
e) displaying (204) a graphical representation of a selected part (131) of the first moiety pharmacophore (130) on the graphical user interface (150), (mental step)
f) determining a starting point (160) on the graphical user interface (150) in relation to the graphical representation of the selected part (131) of the first moiety pharmacophore (130), (mental step)
g) from the starting point (160), arranging graphical representations of molecular building blocks (170) on the graphical user interface (150), wherein the graphical representations of the molecular building blocks (170) are interconnected and form a graphical representation of a modified first moiety of a molecule (180), (mental step)
h) assigning (207) the graphical representation of the modified first moiety of the molecule (180) to a modified first moiety (111) of the selected molecule (100), (mental step)
i) determining (208) a modified molecule (190) consisting of the modified first moiety (111) and the second moiety (120) of the selected molecule (100), (mental step)
j) estimating (209) the associated drug score (101) for the modified molecule (190), (mental step)
k) disclosing (210) the associated drug score (101) of the modified molecule (190). (mental step)
Recited: the steps g) to k) are repeated until the drug score of the 30 modified molecule (190) is higher than the drug score (101) of the selected molecule (100)…(which further limits the abstract idea of claim 1)
Recited: wherein step g) is performed by a collective intelligence, particularly by a plurality of users, wherein the method is executed, particularly simultaneously, on a plurality of platforms, particularly computers. (which further limits the abstract idea of claim 1)
Recited: wherein on each platform a modified molecule (190) is determined such that a plurality of modified molecules (190a, 190b, 190c) with increased drug score (101) is determined. (which further limits claim 3)
The claims recite an abstract idea of designing molecules’ (See MPEP 2106.07(a)).
These recitations are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) and comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships. Therefore, these limitations fall under the “Mental process” and “Mathematical concepts” groupings of abstract ideas.
There are no additional limitations that indicate that this claims require anything other than carrying out the recited mental process or mathematical concept in a generic computer environment. Merely reciting that a mental process is being performed in a generic computer environment does not preclude the steps from being performed practically in the human mind or with pen and paper as claimed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then if falls within the “Mental processes” grouping of abstract ideas. As such, claim(s) 1-16 recite(s) an abstract idea/law of nature/natural phenomenon (Step 2A, Prong 1: YES).
Step 2A, Prong 2
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2). This judicial exception is not integrated into a practical application because the claims do not recite an additional element, and instead recite further limitations to the abstract idea of claim 1.
As such, claims 1-4 are directed to an abstract idea (Step 2A, Prong 2: NO).
Step 2B
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite additional elements. Therefore, the claims do not amount to significantly more than the judicial exception itself (Step 2B: NO). As such, claims 1-4 is/are not patent eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeehyung Lee et al. (Proc. Natl. Acad. Sci. U.S.A. 111 (6) 2122-2127. 2014).
Claim references are italicized.
Regarding claim 1, Lee et al. teaches EteRNA, a multiplayer computer game allowing users to manipulate simulated molecules and control a remote experimental pipeline for high-throughput RNA synthesis and structure mapping (Abstract). This reads as a medical application according to the Applicant’s specification which states:
“Another way of optimizing a molecule for medical applications is to make educated guesses that are preferably carried out by a person skilled in the art that particularly has a professional background in optimization processes for molecules.”(re: clm. 1, … Method for designing a molecule for medical applications by optimization of … of the molecule, wherein the method is a computer-implemented method performed by a computerized device comprising a processor, comprising the steps of…)
EteRNA combines an interactive interface for modeling biomolecules with a remote wet laboratory experimental pipeline (Materials and Methods and Fig. 1.). A web-based interface challenges participants to design and rank sequences that will fold into a target structure when synthesized in vitro (SI Appendix, Fig. S1 and Table S1 give all design targets and develop design rules that explain the community’s experimental results (re: clm. 1, … an associated drug score, … comprising the steps of: a) providing a computer-readable representation of a selected molecule (100) and a drug score (101) associated to the selected molecule (100)…).
Lee et al. states that high-throughput synthesis and structure mapping measurements assess nucleotide pairing of eight community-selected designs per week. EteRNA returns these experimental results to participants through visualization of the data at single nucleotide resolution (Fig. 1D) as well as an overall structure mapping score on a scale of 0–100 (Materials and Methods), indicating the percentage of nucleotides giving reactivities consistent with the target structure (experimental error ±5) (SI Appendix, Fig. S2). Lee et al. further states on pg. 2127 that All RNAs contained a shared primer binding site at their 3′end, which was included as a fixed sequence in EteRNA puzzles.
Therefore, providing a user with a fixed sequence reads as a first moiety and a target structure reads as a second structure, and both are determined by the user once bases are swapped out (re: clm. 1, …b) determining (201) a first moiety (110) of the selected molecule (100) and a second moiety (120) of the selected molecule (100), wherein the selected molecule (100) consists of the first moiety (110) and second moiety (120)…).
Additionally, Lee et al.’s teaching of predicting RNA structures teaches on a pharmacophore and additionally teaches on solving structure “puzzles” on a per molecule basis (Fig. 2, re: clm. 1, …c) determining (202) a first moiety pharmacophore (130), wherein the first moiety (110) of the selected molecule (100) fits to the first moiety pharmacophore (130), and wherein the first moiety pharmacophore is determined from a single molecule only…d) providing (203) a graphical user interface (150), e) displaying (204) a graphical representation of a selected part (131) of the first moiety pharmacophore (130) on the graphical user interface (150)…)
Regarding a “drug score”, the Applicant’s specification states that “A key feature of the method is to determine a drug score, e.g. a single number, such that it is readily recognizable whether the drug score is increasing or decreasing as compared to an initial drug score from the unmodified molecule. For example, the drug score may be a number within a specific range, e.g. in the range of [0-100] or [0-1]. “
Lee et al. further teaches a starting point, that being the fixed sequence (pg. 2127) given on the online interface, and further discloses nucleotides to be arranged on the sequence to arrive at the target (pg. 2125), which is estimated and scored with single nucleotide resolution chemical reactivity measurements and also via design rules established with EteRNABot, a Monte Carlo algorithm (pg. 2123, re: clm. 1, …pharmacophore (130) on the graphical user interface (150), f) determining a starting point (160) on the graphical user interface (150) in relation to the graphical representation of the selected part (131) of the first moiety pharmacophore (130), g) from the starting point (160), arranging graphical representations of molecular building blocks (170) on the graphical user interface (150), wherein the graphical representations of the molecular building blocks (170) are interconnected and form a graphical representation of a modified first moiety of a molecule (180), h) assigning (207) the graphical representation of the modified first moiety of the molecule (180) to a modified first moiety (111) of the selected molecule (100), i) determining (208) a modified molecule (190) consisting of the modified first moiety (111) and the second moiety (120) of the selected molecule (100), j) estimating (209) the associated drug score (101) for the modified molecule (190), k) disclosing (210) the associated drug score (101) of the modified molecule (190).) Lee et al. teaches a chemical structure game in anticipation of claim 1.
Regarding claims 2-4, Lee et al. states on page 2123, “As participants intuit features of experimentally successful designs, they can submit heuristics to a design rule collection (Fig. 1E).” and “Beyond this target-specific learning, structure mapping scores from the first round of each new target increased over time, suggesting that the participants were developing generalizable design rules (blue symbols in Fig. 2). Over all six targets, these first round scores increased continuously…” stating that users (who begin with a fixed structure) derived improved, higher scoring designs over time (re: clm. 2, … Method according to claim 1, wherein the steps g) to k) are repeated until the drug score of the 30 modified molecule (190) is higher than the drug score (101) of the selected molecule (100).).
Lee et al. further states in the same paragraph, and by default, that the game is performed collectively (Abstract, Introduction, Methods, re: clm. 3, … Method according to claim 1 or 2, wherein step g) is performed by a collective intelligence, particularly by a plurality of users, wherein the method is executed, particularly simultaneously, on a plurality of platforms, particularly computers.).
Finally, Lee et al. discloses a plurality of modified molecules (Figs. 2 and 4), which have increased scores per the paragraph of Lee et al. on pg. 2123 regarding user submitted structure solutions (re: clm. 4, … Method according to claim 3, wherein on each platform a modified molecule (190) is determined such that a plurality of modified molecules (190a, 190b, 190c) with increased drug score (101) is determined.). Lee et al. teaches an RNA molecule design game in anticipation of claims 2-4.
Conclusion
No claims are allowed.
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/J.T.S./Examiner, Art Unit 1686
/Karlheinz R. Skowronek/Supervisory Patent Examiner, Art Unit 1687
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