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
This application filed 7/3/2023 claims benefit to US Provisional 63/359570 filed 7/8/2022
Claim Status
Original claims 1-20 filed 7/3/2023 are pending.
Information Disclosure Statement
The two information disclosure statements (IDS) submitted on 7/202023 and 7/26/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Examiner Note: a duplicate but more legible copy of Tian et al., Ordered three-dimensional nanomaterials using DNA-prescribed and valence-controlled material voxels, Nature Materials, VOL 19, JULY 2020, pages 789–796 is being provided.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See for example in [0046]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
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 limitations are presented in the system claims for structures with designated functions:
-‘a non-transitory storage medium’ and ‘data processing apparatus’ which are configured with instructions to implement the instructions a)-d). In view of the specification and art of record, there are not unique structures providing this structure function relationship, and it appears to directed to a general purpose computer;
-‘an additive experimental device’ which can be configured to run instructions, and appears to be a computer which can compare data processing and possible real world 3D structures; and
-wherein the experimental device is capable of ‘small X-ray scattering’ and in view of the specification and art of record appears to a device that can perform X-ray diffraction analysis.
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 § 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim analysis
Claim 7 is generally directed to a method for creating hierarchical structures with nanoparticles by, identifying a final structure, determining a voxel within the structure where the chromatic bonds of each form a mesovoxel and using the symmetry of assembly create a structure. While not specifically required of or recited in the claim, given the guidance of the specification the voxels and mesovoxels provide the target structure and represent the nanoparticle architecture. Claim 7 can comprise any type of chromatic bond, and dependent claims set forth that the material is DNA (claim 10). Claims 14 and 17 provides a similar method for designing where ‘photonic regimes’ are first established and then chromatic bonds of voxels and mesovoxels are encoded to provide the design and architecture structure of the photonic regime desired. As for the method of claim 7, dependent claims of 14 and 17 provide for particular structures and numbers of voxels that would be designed, such as a spiral (claim 20) based on a design that produces a screw architecture. Claim 1 provides for a processor and memory as a system that is used to do the analysis and implement the method of claims 7, 14 and 17, and claim 2 provides that the system also can provide instructions for analysis of X-ray diffraction data from experimental analysis (claims 2-3).
For step 1 of the 101 analysis, the claims are found to be directed to a statutory category of methods and a product.
For step 2A of the 101 analysis, the judicial exception of the claims are the instructional steps of identifying, determining, encoding and generating 3D structures with voxels which assemble to mesovoxels and final structures. There are no specific rules or requirements on how the steps are performed and broadly provide for any target structure in the broadest claims and general specific spiral structures of certain sizes in dependent claims. As acknowledged in the specification and the art of record, the more narrow limitation of the claims for DNA blocks that can be used to assemble quasi-crystals Assembling 3D hierarchical structure were known. The instructions required of the method claims are high level instructions to piece together these blocks or voxels into larger mesovoxel blocks to provide a final structure. When using DNA, the structures can be assembled based on vertex hybridization frames, and so providing DNA structures with known sequences one can piece together these building block voxels into larger three dimensional structures. The judicial exception is a set of instructions for analysis of DNA structure interactions to create 3D structures and appear to fall into the category of Mental Processes, that is concepts performed in the human mind (including an observation, evaluation, judgment, opinion) since once DNA shapes and structures are provided, one can visually assemble the DNA/voxels into higher level structures like a puzzle. Similarly, given a starting structure, pieces/voxels can be puzzled together to form a final structure. For a given structure, each would provide a predicted diffraction pattern and comparing a predicted pattern with one provided experimentally could be performed by overlaying and observing the similarities and differences of the two. The breadth of “identifying”, “determining”, “encoding” and “generating” encompasses non-transformative visual assessment of shapes into higher order shapes. For DNA structures, the assembly can be based on hybridization and is the simple observation of homology and piecing together shapes based on the homology or base pairing to form a lattice. Although the claims recite “generating”, this does not appear to be a physical step but rather the in silico assembly of voxels and/or mesovoxel shapes into final desired 3D architectures. For the system, which can be a computer, the courts have also identified limitations that did not integrate a judicial exception into a practical application; for example, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f). As the steps of “identifying”, “determining”, “encoding” and “generating” encompasses non-transformative visual assessment of shapes into higher order shapes and are very generally recited, the combination together reasonably interpreted as mere instructions. Computing, constructing datasets and using statistical models was well understood, conventional, and routinely performed in the art at the time the application was filed. See also MPEP § 2106.05(h) for a discussion on generally linking the use of a judicial exception to a particular technological environment or field of use. The claims appear to fall into the category of mental processes, as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) because there is no apparent complexity to or amount of data that is collected and analyzed as presently claimed.
Recent guidance from the office requires that the judicial exception be evaluated under a second prong to determine whether the judicial exception is practically applied. In the instant case, the claims do not have an additional element beyond providing information about DNA voxels shapes and instructions to use them to create 3D structures as broadly claimed.. This judicial exception requires steps recited at high level of generality, and for the system claims are only instructions stored on a non-transitory memory and implemented using a processor, and is not found to be a practical application of the judicial exception as broadly set forth.
For step 2B of the 101 analysis, each of the independent claims recites additional elements and are found to be the steps of obtaining voxel data into a system for further analysis and assembly based on a desired design. As such, the claims do not provide for any additional element to consider under step 2B. Methods and computers used to assemble DNA voxel shapes into higher order designs appear to have been known and conventional as evidence by Tian et al. who provides ordered three-dimensional nanomaterials using DNA-prescribed and valence-controlled material voxels. It is noted that in explaining the Alice framework, the Court wrote that "[i]n cases involving software innovations, [the step one] inquiry often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool." The Court further noted that "[s]ince Alice, we have found software inventions to be patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology." Moreover, these improvements must be specific -- "[a]n improved result, without more stated in the claim, is not enough to confer eligibility to an otherwise abstract idea . . . [t]o be patent-eligible, the claims must recite a specific means or method that solves a problem in an existing technological process." As indicated in the summary of the judicial exception above and in view of the teachings of the specification, the steps are drawn to analysis of DNA structure data and use of homology for hybridization into higher order structures. While the instruction are stored on a medium and could be implemented on a computer, together the steps do not appear to result in significantly more than a means to compare sequences. The judicial exception of the method as claimed can be performed by hand and in light of the teaching of the specification on a computer. In review of the instant specification the methods do not appear to require a special type of processor and can be performed on a general-purpose computer. Dependent claims set forth additional steps which are more specifically define the considerations and steps of calculating, and comparing, and do not add additional elements which result in significantly more to the claimed method for the analysis. No additional steps are recited in the instantly claimed invention that would amount to significantly more than the judicial exception. Without additional limitations, patenting abstract idea (designing probes to a target sequence) cannot be circumvented by attempting to limit the use to a particular technological environment or purpose and desired result.
One way to overcome a rejection for non-patent-eligible subject matter is to persuasively argue that the claimed subject matter is not directed to a judicial exception. Another way for the applicants to overcome the rejection is to persuasively argue that the claims contain elements in addition to the judicial exception that either individually or as an ordered combination are not well understood, routine, or conventional. Another way for the applicants to overcome the rejection is to persuasively argue that the claims as a whole result in an improvement to a technology. Persuasive evidence for an improvement to a technology could be a comparison of results of the claimed subject matter with results of the prior art, or arguments based on scientific reasoning that the claimed subject matter inherently results an improvement over the prior art. The applicants should show why the claims require the improvement in all embodiments.
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tian et al. (Ordered three-dimensional nanomaterials using DNA-prescribed and valence-controlled material voxels, 2020-of record).
In determining the metes and bounds of the claims, the method of claim 7 sets forth a method for creating hierarchical structures with nanoparticles by, 1 identifying a final structure, 2 determining a voxel within the structure where the chromatic bonds of each form a mesovoxel and 3 using the symmetry of assembly create a structure. While not specifically required of or recited in the claim, given the guidance of the specification the voxels and mesovoxels provide the target structure and represent the final nanoparticle architecture when the voxels are finally assembled. The method of claim 7 can comprise any type of ‘chromatic’ bond, and dependent claims set forth that the material is DNA (claim 10). The methods of claims 14 and 17 provides a similar method to claim 7 limitations for designing where ‘photonic regimes’ are first established and then chromatic bonds of voxels and mesovoxels are encoded to provide the design and architecture structure of the photonic regime desired. As for the method of claim 7, dependent claims of 14 and 17 provide for particular structures and numbers of voxels that would be designed, such as a spiral (claim 20) based on a design that produces a screw architecture. Claim 1 provides for a processor and memory as a system that is used to do the analysis and implement the method of claims 7, 14 and 17, and claim 2 provides that the system also can provide instructions for analysis of X-ray diffraction data from experimental analysis (claims 2-3).
The use of DNA folded DNA structures which could be assembled into larger hierarchical structures were known as evidenced by the teaching of Tian et al. More specifically Tian et al. teach how to organize nanoscale objects into well-defined three-dimensional (3D) arrays can translate advances in nanoscale synthesis into targeted material fabrication. Tian et al. provide guidance and a platform for creating distinct 3D ordered arrays from different nanomaterials using DNA-prescribed and valence-controlled material they call voxels. These material voxels consist of 3D DNA frames that integrate nano-objects within their scaffold, thus enabling the object’s valence and coordination to be determined by the frame’s vertices, which can bind to each other through hybridization. Such DNA material voxels define the lattice symmetry through the spatially prescribed valence decoupling the 3D assembly process from the nature of the nanocomponents, such as their intrinsic properties and shapes. Similar to the guidance of the instant specification and drawings, Tian et al. provide considerations in providing DNA voxels and using them to create specific structures. Further, Tian et al. create structures and analyze the structures through imaging, but do not provide for x-ray diffraction. However, x-ray diffraction techniques and data analysis were well known and used for analyzing repeating structures like that provided by DNA. Therefore, it would have been prima facie obvious to one having ordinary skill in the art at the time the invention was made to substitute visual inspection to also include x-ray diffraction for a more fine analysis of the structures. A variety of structures are provided by Tian et al., and given the guidance it appears that any structure could be designed and would be obvious to assemble given the correct DNA voxel components. Given the uses of such DNA structures by Tian et al., one having ordinary skill in the art would have been motivated to provide design of any desired structure for any desired testing or application. Given the detailed guidance and examples of Tian et al., there would have been a reasonable expectation of success to provide DNA voxels which assemble into mesovoxels and which can form or can be used to form any desired 3D architecture a user would identify.
Thus, the claimed invention as a whole was clearly prima facie obvious.
Conclusion
No claim is allowed.
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/Joseph Woitach/Primary Examiner, Art Unit 1687
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