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 .
Information Disclosure Statement
The IDS filed 11/19/2025, 3/30/2023, 3/20/2023 have been considered by the Examiner.
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) to JP 2022067155 filed 4/14/2022.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Process, Machine, Manufacture or Composition
Claims 1-12 are drawn to a method, so a process.
Claims 13-14 are drawn to a device, so a machine.
Claims 15-16 are drawn to program per se. The claims therefore read on a transitory signal such as a carrier wave, which is not a statutory category of invention, as set forth in In re Nuijten. A review of the specification does not show a definition of computer readable media that excludes an embodiment that is information in a signal. As such, an embodiment of the claims read on non-statutory subject matter (In re Nuijten 84 USPQ2d 1495 (2007)). The applicants may overcome the rejection by 1) amendment of the claims to be limited to physical forms of computer readable storage media described in the specification or 2) by amending the claimed subject matter to be limited to “non-transitory”, see the notice regarding Computer Readable Media (1351 OG 212 (23 February 2010)).
Step 2A Prong One: Identification of an Abstract Idea
The claim(s) recite(s):
1. inputting information A, information B and information C into a model to output sensitivity information D of a receptor constituted by using a polymer (see 112(b) rejection below), as in claims 1, 13 and 15.
This step reads on math or a process wherein the model is a mathematical construct representing an interaction between an analyte and a receptor. The step is therefore an abstract idea.
2. producing a candidate for a molecule structure of the polymer, as in claim 8.
This step reads on a mental process or math of determining a molecule based on sensitivity calculations.
3. calculating a solubility parameter H1 of the polymer based on molecule structure produced, as in claim 8.
This step reads on math or a mental process of calculating a solubility parameter based on molecular characteristics. The step is therefore an abstract idea.
4. specifying the sensitivity information that satisfies a predetermined condition , as in claims 10 and 12.
This step reads on a metal process of comparing sensitivity information to other predetermined values or information. The step is therefore an abstract idea.
5. producing a candidate for a solubility parameter H1 of the polymer based on information B, as in claim 11.
This step reads on determining a solubility parameter of a polymer which reads on analyzing solubility based information or calculating an equation. The step is therefore an abstract idea.
6. estimating the molecule structure of the polymer based on the solubility parameter, as in claim 12.
This step can be performed by the human mind by analyzing a molecular structure. The step is therefore an abstract idea.
Dependent claims 2-7, 9, 14, and 16 further recite limitations that characterize the information input and output from the process that is an abstract idea. The claims are therefore also an abstract idea and judicial exceptions.
Step 2A Prong Two: Consideration of Practical Application
The claims are drawn to inputting information into a model to output sensitivity of a receptor. The claims do not recite any additional elements that integrate the abstract idea into a practical application.
This judicial exception is not integrated into a practical application because the claims do not meet any of the following criteria:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception.
Step 2B: Consideration of Additional Elements and Significantly More
The claimed method also recites "additional elements" that are not limitations drawn to an abstract idea. The recited additional elements are drawn to:
Outputting sensitivity information D, as in claims 10 and 12.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because outputting the results of a calculation is deemed to be extra solution activity as described in MPEP 2106.05(g).
Other elements of the method include a generic “device” (claims 1 and 13) which is interpreted as a recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea recited in the instantly presented claims into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112-2nd paragraph
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 1-16 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 pre-AIA the applicant regards as the invention.
Claims 1 and 16 recite sensitivity information D “of a receptor constituted by using a polymer for an analyte.” This limitation is unclear because claim 5 and the specification (par. 16) state that the interaction is between the polymer and the analyte. The specification (par. 15) describes a membrane surface stress sensor for which a receptor detects a change when the receptor absorbs and diffuses an analyte (sample molecule) into the film. The specification (par. 63) describes the film as constituting the receptor which would control the volume of the film and also constitute the sensor body. The specification also teaches (par. 65) solubility parameter H1 of the polymer constituting the receptor, and (par. 12) that information E is of the molecule structure of the polymer related to the molecule structure of the polymer constituting the receptor.
Therefore, it is unclear how the polymer in claims 1, 13 and 15 can be the analyte (i.e. “of a receptor constituted by using a polymer for an analyte”) if it is the polymer that constitutes the receptor that binds to the analyte. The specification (page 32, par. 70) describes that the film constitutes the receptor which his produced by using a monomer unit of the polymer. Furthermore, one of ordinary skill would recognize that in a polymer sensor (specification par. 3) and olfactory sensor (par. 4) the film of the sensor would include the polymer with the receptor and not an analyte. Clarification of both the claims and specification are required.
Perhaps the claims and specification should recite “output sensitivity information D of a receptor constituted by using a polymer [or] and an analyte.”
Claims 10 and 12, second paragraph, recite “the plurality of pieces of output sensitivity information D.” There is lack of antecedent basis for this limitation in the claims. The claims (first paragraph) recite “a plurality of pieces of the candidate information A.” However, it is unclear what “the plurality of pieces of output sensitivity information D” is referring to because the claims do not set forth pieces of output sensitivity information for parameter D.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Stamatin et al. (The Solid Films, vol. 495 (2006) pgs. 312-315 ) in view of Belmares et al. (J. Comput. Chem, vol. 25 (2004) pgs. 1814-1826; IDS filed 3/20/2023)
Stamatin et al. et al. teach computer modeling of analyte-receptor interactions in a sensor (Title) which is applicable to biosensors and electronic noses (page 312, col. 2, par. 2).
Stamatin et al. teach (page 313, col. 1, par. 3 and Figure 1) their biosensor model as including a set of polymeric chains (i.e. candidate information A related to the polymer) with active sites representing the receptor (i.e. candidate information C related to a film constitution of the polymer). Stamatin et al. teach that the biosensor is thin film deposited on a substrate which is modeled by polymer chain inserted into a cubic box and which constitutes the polymeric file (page 313, col. 2)(i.e. inputting candidate information A and C), as in claims 1, 13 and 15.
Stamatin et al. teach (page 314, col. 1, par. 2) an analyte generated at every Monte Carlo time interval wherein the analyte falls into the box filled with the polymer, wherein the analyte dimension is the same as the receptor (i.e. information B being related to the polymer), as in claims 1, 13 and 15.
Stamatin et al. teach (page 314, col. 1, par. 2) calculating interaction of the analyte and receptor wherein the active site goes into a neutral state (i.e. output sensitivity information D of a receptor), as in claims 1, 13 and 15.
Stamatin et al. teach (page 314, col. 1, par. 2) calculating interaction of the analyte and receptor wherein the active site goes into a neutral state (i.e. information F related to the mutual interaction between the polymer and the analyte, and the information comprises X parameter); wherein the specification (par. 0068) describes the X parameter as a mutual interaction parameter, as in claims 5, 6, 14 and 16.
Stamatin et al. teach modeling four different polymer architectures (Figure 2) and conclude that PS architecture has the best response time (page 315, col. 1, par. 2)(i.e. outputting recommendation information C’ related to the film constitution of the receptor), as in claim 7.
Stamatin et al. teach model polymers with side functional groups (page 315, col. 1, par. 2)(i.e. molecule structure comprises a functional group included in the polymer), as in claim 9.
Stamitin et al. teach that for each polymer type, saturation is calculated and ranked (page 315, col. 1, par. 2)(i.e. sensitivity information for each of a plurality of pieces of the candidate information A, specifying sensitivity information D for each pieces), as in claims 10 and 12.
Stamatin et al. teach (page 314, Figure 2) outputting the structures of the various types of polymer architectures for which the binding of the analyte response with time and saturation was calculated; (i.e. outputting information E related to the molecule structure of the polymer constituting the receptor, the molecule structure of the polymer of candidate information A corresponding to the specific sensitivity information D), as in claims 10 and 12.
Stamatin et al. do not teach the solubility parameters H1, H2-1, H2-2, and H2-3 recited in claims 2-4, 8 and 11-12.
However Belmares et al. teach (Abstract) molecular dynamics to model an electronic nose with an array of 20 polymer sensors (i.e. producing a candidate for a molecule structure of the polymer, as in claim 8) that bind and swell to an odorant molecule. Belmares et al. teach (page 1823, col. 2, section “Electronic Nose Model”) calculating the Hansen solubility components (i.e. one dimensional solubility parameter) when solvent vapors/odorants interact with polymer sensors, as in claims 2, 4 and 8.
Belmares et al. teach (page 1824, Table 7) that each odorant molecule (i.e. analyte) includes an electrostatic (i.e. dipole moment term), dispersion (i.e. London dispersion) and H-bonding (i.e. hydrogen bond term) parameter, as in claim 3.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have combined the analyte and polymer film receptor interaction modeling of Stamatin et al. with the molecular dynamics modeling and subsequent calculation of solubility taught by Belmares et al. Belmares et al. provide motivation by teaching (Abstract) that the calculated solubility parameters were useful for studying the properties of a modeled electric nose sensor. One of skill in the art would have had a reasonable expectation of success at combining the model of Stamatin et al. with Belmares et al. because Monte Carlo simulations of particles representing molecules is interchangeable with molecular dynamics.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Skibinsky whose telephone number is (571) 272-4373. The examiner can normally be reached on 12 pm - 8:30 pm.
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/Anna Skibinsky/
Primary Examiner, AU 1635
Prosecution Insights