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 .
Drawings
The drawings filed on January 26, 2026 are accepted.
Response to Amendment
The action is responsive to the Amendment filed on January 26, 2026. No claims were amended or cancelled. Thus, claims 1-27 are pending.
Claim Rejections - 35 USC § 101 Non-Statutory
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 1-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Specifically, Claim 1 recites:
A system for predicting a spectrum of a target molecule, the system comprising: one or more processors and a memory communicably coupled to the one or more processors and storing: a first module comprising instructions that when executed by the one or more processors cause the one or more processors to receive or generate a descriptor of the target molecule; and a second module including instructions that when executed by the one or more processors cause the one or more processors to apply a trained machine learning model to the descriptor of the target molecule to predict a spectrum of the target molecule, and further wherein the second module includes instructions to provide the predicted spectrum as an electronic output. The claim limitations in the abstract idea have been highlighted in bold; the remaining limitations are “additional elements.” Similar limitations comprise the abstract ideas of claims 10, 23-24, and 27.
Under Step 1 of the analysis, claim 1 does belong to a statutory category, namely it is an apparatus claim. Likewise, claim 10 is a process claim, claim 23 is a computer program product claim, claim 24 is a process claim, and claim 27 is a process claim.
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim., Under Step 2A, Prong One, the broadest reasonable interpretation of the steps recited in Claim 1 include at least one judicial exception, that being a mathematical process. This can be seen in the claimed process steps of “generate a descriptor of the target molecule…” (See, for example, FIG. 12; pg. 16, ln 22-32; and FIG. 13; pg. 20, ln 32, to pg. 21, ln 18, of the instant specification), and “apply a trained machine learning model to the descriptor of the target molecule to predict a spectrum of the target molecule…” (See, for example, FIG. 12; pg. 16, ln 22-32; and FIG. 13; pg. 20, ln 35, to pg. 21, ln 21, of the instant specification), each of which encompasses mathematical concepts requiring specific mathematical calculations (“the trained machine learning model is a trained model for time series data prediction and/or a trained long-short term memory (LSTM) model or machine learning model similar thereto. Other suitable learning models for use according to the presently disclosed subject matter include, but are not limited to, Random Forest, k-Nearest Neighbors, Support Vector Classification, Naïve Bayesian, AdaBoosted Decision Trees, Deep Learning, XGboost, and the like,” described in pg. 19, ln 7-12 of the instant specification.) to perform the prediction a spectrum of a target molecule, and therefore encompasses mathematical concepts. For example, when given the broadest reasonable interpretation in light of the specification, the steps of “generate” and “apply” are performed using one are more training algorithms (model(s)). Claims 10, 23-24, and 27 recite analogous judicial exceptions.
In claim 1, the steps of: “generate” and “apply” each fall within the mathematical concepts grouping of abstract ideas. The recited process steps are considered together as a single abstract idea for further analysis. Claims 10, 23-24, and 27 recite similar abstract ideas. (Step 2A, Prong One: YES).
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Each of the process steps “generate” and “apply” and each fall within the mathematical concepts grouping of abstract ideas and are recited as being performed by a computer (“Figure 12 is a diagram illustrating an exemplary system 100 that can be used to predict a spectrum of a target molecule. System 100 can be any suitable entity (e.g., a mobile device or a server) configurable for receiving and/or generating a descriptor (e.g., a SMILES sequence or ECFP) of the target molecule and for analyzing the molecule descriptor using a trained machine learning model to predict a spectrum (e.g., a UV-Vis spectrum) of the target molecule. System 100 can thus comprise processor(s) 102. Processor(s) 102 can represent any suitable entity or entities (e.g., hardware-based processor) for processing information and executing entity instructions or operations. Processor(s) 102 can be any type of processor, such as a central entity processor unit (CPU), a microprocessor, a multi-core processor, and the like. System 100 can entity further include memory 106 for storing information and instructions to be executed by entity processor(s) 102. In some embodiments, memory 106 can comprise one or more of random access entity memory (RAM), read only memory (ROM), static storage such as a magnetic or optical disk, entity or any other type of machine or non-transitory computer readable medium.” FIG. 12; pg. 16, ln 22-35, of the instant specification). The computer is recited at a high level of generality (“processor”). The computer is used as a tool to perform the generic computer functions of collecting data and performing the recited process steps. The computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). The recited process steps comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Claim 1 recites the additional element(s) of using generic Artificial Intelligence/Machine-Learning (AI/ML) technology, i.e. “a trained machine learning model,” to perform data evaluations or calculations, as identified under Prong 1 above. The claims do not recite any details regarding how the AI/ML algorithm or model functions or is trained. Instead, the claims are found to utilize the AI/ML algorithm as a tool that provides nothing more than mere instructions to implement the abstract idea on a general purpose computer. See MPEP 2106.05(f). Additionally, the use of the “a trained machine learning model” merely indicates a field of use or technological environment in which the judicial exception is performed. See MPEP 2106.05(h). Therefore, the use of “a trained machine learning model” to perform steps that are otherwise abstract does not integrate the abstract idea into a practical application. See the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence; and Example 47, ineligible claim 2. Each of Claims 10, 23-24, and 27 recite analogous additional element(s) of using generic Artificial Intelligence/Machine-Learning (AI/ML) technology.
Claim 1 also recites the additional elements (equipment) of “one or more processors,” and “a memory system” (See, for example, FIG. 12; pg. 16, ln 22-35, of the instant specification); data comprising “a first module comprising instructions,” and “a second module including instructions,” (See, for example, FIG. 12; pg. 16, ln 22, to pg. 17, ln 5, of the instant specification). In the alternative, when given the broadest reasonable interpretation in light of the specification, the step of “receive a descriptor of the target molecule” comprises a data gathering step comprising data (See, for example, FIG. 12; pg. 16, ln 22-35, of the instant specification). Claims 10, 23-24, and 27 recite analogous judicial exceptions. Additionally, claim 27 recites the additional elements (equipment) of “a microarray” or “microwell plate comprising a plurality of wells,” and “a sample” (See, for example, pg. 24, ln 14-32, of the instant specification). However, these additional elements merely comprise generic conventional non-specific equipment, and computer hardware and software elements, and data/information, and is/are set forth at a highly generic level and each of which comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). Claims 10, 23-24, and 27 recite analogous additional elements.
The recited additional elements can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, Prong Two of the analysis, even when viewed in combination, these additional elements recited in claim 1, as well as claims 10, 23-24, and 27, do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed method. For instance, nothing is done with the predicted spectrum.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong Two, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use, and/or merely insignificant extra-solution activity (Claims 1, 10, 23-24, 27). Such insignificant extra-solution activity, e.g. data gathering and output, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional as evidenced by MPEP 2106.05(d)(II) (describing conventional activities that include transmitting and receiving data over a network, electronic recordkeeping, storing and retrieving information from memory, and electronically scanning or extracting data from a physical document).
Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1, as well as claims 10, 23-24, and 27, amount to significantly more than the abstract idea. Therefore, claim 1, as well as claims 10, 23-24, and 27, is not patent eligible under 101.
With regards to the dependent claims, claims 2-9, 11-22, and 25-26, provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
Response to Arguments
Applicant’s arguments filed on January 26, 2026 have been fully considered. Applicant’s arguments have overcome the previous prior art rejections. Additionally, Applicant is thanked for their arguments which were presented in an effort to overcome the outstanding rejections under 35 U.S.C. 101. However, the rejection of claims 1-27 under 35 U.S.C. 101 persists.
In regard claims 1-27 rejected under 35 U.S.C. 101, Examiner’s position and supporting remarks are presented in the rejection above.
Additionally, Applicant argues (Remarks pp. 11-12) that each of claims 1, 10, 23, 24, and 27 is directed to statutory subject matter.
As noted above, under Step 2A, Prong Two of the eligibility analysis, each of the process steps “generate” and “apply” and each fall within the mathematical concepts grouping of abstract ideas and are recited as being performed by a computer (See FIG. 12; pg. 16, ln 22-35, of the instant specification). The computer is recited at a high level of generality (“processor”). The computer is used as a tool to perform the generic computer functions of collecting data and performing the recited process steps. The computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). The recited process steps comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Claim 1 recites the additional element(s) of using generic Artificial Intelligence/Machine-Learning (AI/ML) technology, i.e. “a trained machine learning model,” to perform data evaluations or calculations, as identified under Prong 1 above. The claims do not recite any details regarding how the AI/ML algorithm or model functions or is trained. Instead, the claims are found to utilize the AI/ML algorithm as a tool that provides nothing more than mere instructions to implement the abstract idea on a general purpose computer. See MPEP 2106.05(f). Additionally, the use of the “a trained machine learning model” merely indicates a field of use or technological environment in which the judicial exception is performed. See MPEP 2106.05(h). Therefore, the use of “a trained machine learning model” to perform steps that are otherwise abstract does not integrate the abstract idea into a practical application. See the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence; and Example 47, ineligible claim 2. Each of Claims 10, 23-24, and 27 recite analogous additional element(s) of using generic Artificial Intelligence/Machine-Learning (AI/ML) technology.
Claim 1 also recites the additional elements (equipment) of “one or more processors,” and “a memory system” (See, for example, FIG. 12; pg. 16, ln 22-35, of the instant specification); data comprising “a first module comprising instructions,” and “a second module including instructions,” (See, for example, FIG. 12; pg. 16, ln 22, to pg. 17, ln 5, of the instant specification). In the alternative, when given the broadest reasonable interpretation in light of the specification, the step of “receive a descriptor of the target molecule” comprises a data gathering step comprising data (See, for example, FIG. 12; pg. 16, ln 22-35, of the instant specification). Claims 10, 23-24, and 27 recite analogous judicial exceptions. Additionally, claim 27 recites the additional elements (equipment) of “a microarray” or “microwell plate comprising a plurality of wells,” and “a sample” (See, for example, pg. 24, ln 14-32, of the instant specification). However, these additional elements merely comprise generic conventional non-specific equipment, and computer hardware and software elements, and data/information, and is/are set forth at a highly generic level and each of which comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). Claims 10, 23-24, and 27 recite analogous additional elements.
The recited additional elements are viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, Prong Two of the analysis, even when viewed in combination, these additional elements recited in claim 1, as well as claims 10, 23-24, and 27, do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed method. For instance, nothing is done with the predicted spectrum.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong Two, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use, and/or merely insignificant extra-solution activity (Claims 1, 10, 23-24, 27). Such insignificant extra-solution activity, e.g. data gathering and output, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional as evidenced by MPEP 2106.05(d)(II) (describing conventional activities that include transmitting and receiving data over a network, electronic recordkeeping, storing and retrieving information from memory, and electronically scanning or extracting data from a physical document).
Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1, as well as claims 10, 23-24, and 27, amount to significantly more than the abstract idea. Therefore, claim 1, as well as claims 10, 23-24, and 27, is not patent eligible under 101.
With regards to the dependent claims, claims 2-9, 11-22, and 25-26, provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
Therefore, the rejection of the independent claims, claim 1, as well as claims 10, 23-24, and 27, under 35 USC § 101 is maintained.
Similarly, the rejection of the dependent claims, claims 2-9, 11-22, and 25-26, under 35 USC § 101 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
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/JEFFREY P AIELLO/Primary Examiner, Art Unit 2857