DETAILED ACTION
This application is being examined under AIA first-to-file provisions.
Status of claims
Canceled:
none
Pending:
1-11
Withdrawn:
none
Examined:
1-11
Independent:
1, 6 and 11
Allowable:
none
Rejections applied
Abbreviations
x
112/b Indefiniteness
PHOSITA
"a Person Having Ordinary Skill In The Art before the effective filing date of the claimed invention"
112/b "Means for"
BRI
Broadest Reasonable Interpretation
x
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
x
102, 103
JE
Judicial Exception
x
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
x
101 Other
N:N
page:line
Double Patenting
MM/DD/YYYY
date format
Priority
As detailed on the 5/31/2023 filing receipt, this application claims priority to no earlier than 7/18/2022. All claims have been provisionally interpreted as being accorded this priority date.
However, a certified copy of the priority document has not been received.
Objection to the specification: title
The title should be amended to more specifically reflect the claims, particularly the independent claims and referencing steps/elements: setting the context of the invention, particular to all claims, and distinguishing the instant application from any related applications (e.g. US application 18/164,689). In particular, the title reads "...cleaning small molecule compound..." However, the actual claims relate to processing (e.g. "cleaning") data, not an actual, physical compound. The title should be amended to more accurately reflect the actual claim (e.g. cleaning data or some equivalent expression). The title should be "descriptive" and "as... specific as possible" (MPEP 606, 1st para. and 37 CFR 1.72; also MPEP 606.01 pertains).
Also, "molecule" and "compound" are redundant.
Objections to the specification: main text
The specification is objected to for the same reason as the title. For example, [2] of the specification discloses "...for cleaning a small molecule compound...," which appears to refer to cleaning an actual compound, but the rest of the disclosure relates only to data processing. This paragraph [2] and the entire specification should be amended to correct this issue. Support for any such amendment should be identified, and no new matter may be introduced into the disclosure.
Additionally, the specification is objected to regarding the term "SMILES" (e.g. [4], [5], etc.), which term is not defined in the specification. If this term was well-known as of the instant priority date, then a reference may be placed in the record to this affect, and the definition may be amended into the disclosure.
Claim objections
Claims 1, 3-4, 6 and 9 are objected to because of the following informalities. Appropriate correction is required. In each objection the claims are definite with respect to the issues cited here because interpretation would have been sufficiently clear to PHOSITA, but nonetheless the claims are objected to for consistency among the claims or as otherwise indicated. With regard to any suggested amendment below to overcome an objection, in the subsequent examination it is assumed that each amendment is made. However, equivalent amendments also would be acceptable. Any amendments in response to the following objections should be applied throughout the claims, as appropriate.
The following issues are objected to:
Claim
Recitation
Comment
1, 6
...characterized in that the data preprocessing method comprising:...
Grammatically incorrect and should read "...comprises:..."
3-4, 9
...rules comprises...
Improper subject-verb agreement
Claim rejections - 112/b
The following is a quotation of 35 USC 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.
Claims 1-11 are rejected under 112/b, as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted, and any amendments in response to the following rejections should be applied throughout the claims, as appropriate. With regard to any suggested amendment below, for claim interpretation during the present examination it is assumed that each amendment suggested here is made. However equivalent amendments also would be acceptable.
The following issues cause the respective claims to be rejected under 112/b as indefinite:
Claim
Recitation
Comment (suggestions in bold)
1, 6, 11
for cleaning a small molecule compound
First, "molecule" and "compound" are redundant.
Second, the recited "cleaning" and "compound" are inconsistent with ordinary usage, and the intended usage is not clear. The term "cleaning" ordinarily refers to a physical process applied to a physical element or to an abstract process applied to an abstract element (e.g. data). (MPEP 2111.01.IV pertains.) It is not clear what meaning applies to the instant claims.
1, 6, 11
SMILES
Corresponding to the above objection to the specification, the recited term "SMILES" should be defined in the claims with written description support for any amendment specifically identified. A corresponding 112/a written description rejection is applied below.
1, 6, 11
...S1... original
The recited "original" is a term of relative or vague degree or form of association, neither defined in the specification ([8]) nor having a well-known and sufficiently particular definition in the art and in the instant context. (MPEP 2173.05(b) pertains.) Possibly, the term is not necessary.
1, 6, 11
standardized
The recited "standardized" is a term of relative or vague degree or form of association, neither defined in the specification ([6]) nor having a well-known and sufficiently particular definition in the art and in the instant context. (MPEP 2173.05(b) pertains.)
1, 6, 9, 11
each text element
of the standardized SMILES text of the small molecule compound
The recited "each..." requires but lacks antecedent.
3
step Sl-2, respondent to the original SMILES text comprises heavy metal components...
Not interpretable due at least to a grammatical error. Possibly: "...comprising..."
The same issue recurs in S1-3 and S1-4.
3, 8
S1-5... special
The recited "special" is a term of relative or vague degree or form of association, neither defined in the specification ([6]) nor having a well-known and sufficiently particular definition in the art and in the instant context. (MPEP 2173.05(b) pertains.)
Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification (e.g. [43]). (MPEP 2145.VI pertains.)
The same issue renders claim 8 indefinite.
3, 8
S1-6... the normalized SMILES text
Requires but lacks antecedent.
The same issue renders claim 8 indefinite.
4, 9
respondent to each text element of the standardized SMILES text
The recited "each..." requires but lacks antecedent.
4
respondent to each text element... is split...
Not interpretable due at least to a grammatical error.
4, 9
S2-1... each core
Requires but lacks antecedent
4, 9
S2-2... the properties...
Requires but lacks antecedent
4, 9
S2-2... simplified chemical information
The recited "simplified" is a term of relative or vague degree or form of association, neither defined in the specification ([6]) nor having a well-known and sufficiently particular definition in the art and in the instant context. (MPEP 2173.05(b) pertains.)
4, 9
S2-2... a chemical information graph
In claim 4, the relationship is unclear between the claim 1 "digitized graph structure of chemical information of the small molecule compound" and this "chemical information graph of the small molecule compound."
Claim 9 is rejected similarly relative to claim 6.
4
step S2-4, according to the digital coordinate system..., and adding element attributes
Not interpretable at least due to what appears to be a superfluous "and." Contrast claim 9.
4, 9
step S2-4... a digitized graph structure of the chemical information of the small molecule compound
The relationships are unclear between (a) the claim 1 instantiated "digitized graph structure of chemical information of the small molecule compound," (b) the same element again instantiated here and (c) the "S2-2... chemical information graph."
Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification (e.g. [43]). (MPEP 2145.VI pertains.)
The claim itself recites these three elements but does not clearly distinguish them.
5, 10
S2-5... the hydrogen atom information of the digitized graph structure of the chemical information
Requires but lacks clear antecedent
5, 10
if necessary
Unclear optionality or conditionality. MPEP 2111.04 and 2173.05(h).II pertain. It is unclear when the condition is true or required.
Although claims are interpreted in light of the specification, examples from the specification are not imported into the claims as limitations absent a clearly limiting definition in the specification (e.g. [43]). (MPEP 2145.VI pertains.)
6-10
the data preprocessing method comprising:
a step S1...; and
a step S2...;
wherein the system comprises:
an S1 text processing unit configured to...
an S2 chemical graph formatting unit configured to...
It is unclear what is the relationship between the "system" and the "method" including "S1" and "S2." It is unclear, structurally, what is the relationship.
Claim 6 is to a 101 machine or manufacture, i.e. a "system" in this instance, interpreted by statute according to its claimed physical structure, but it is not clear what is the structure associated with the recited process steps "S1..." and "S2..." Therefore, it is not clear whether the claim is limited according to these steps. It also is not cleat what structure is associated with the recited instances of "unit configured to..."
MPEP 2106.03, 5th-6th paras. pertain. The recited "system" is interpreted as not clearly requiring structure linking the "system" to the recited steps in a structural sense appropriate to a claim to a machine or manufacture. The recited process steps are not properly claimed without corresponding structure. This rejection might be overcome by, for example, reciting a data storage device, comprised by the "system," and instructions stored therein and configured according to the recited elements and steps. MPEP 2173.05(p).II pertains regarding a claim directed to both product and process.
Also, the relationships are unclear between "step S1..." and "S1... unit..." as well as between "step S2..." and "S2... unit..."
Claims 7-10 are rejected similarly.
11
a processor, wherein the memory is configured to store one or more computer instructions which, when executed by the processor, implements...
It is unclear what preceding step or element is modified by the recited "which," and it is therefore also unclear whether "implements" should be conjugated for a singular or a plural subject. It is not clear that the subject-verb agreement is correct.
Claim rejections - 112/a
The following is a quotation of 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.
Regarding issues of written description support stemming even from the original claims and original disclosure, MPEP 2161.01.I (e.g. 6th para.), 2163.I and 2163.I.A pertain: "[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed" (MPEP 2161.01.I,6th para.).
Written description
Claims 1-11 are rejected under 112/a as failing to comply with the written description requirement. The claims read on subject matter which is not described in the specification in such a way as to reasonably convey to PHOSITA that the inventors, at the time the application was filed, had possession of the claimed invention. Claims depending from rejected claims are rejected similarly, unless otherwise noted. With regard to any suggested amendment(s) below to overcome a rejection, equivalent amendments also would be acceptable.
Claim 1 recites "...SMILES..." The specification discloses "SMILES," e.g. [4], but the specification does not define the term, let alone any rules or standards associated with the term. The written description provided is not clearly commensurate with the recited terminology, methods and technology.
MPEP 2161.01.I "Determining Whether There Is Adequate Written Description For A Computer-Implemented Functional Claim Limitation" also pertains.
Claims 6 and 11 similarly lack support.
As appropriate, these rejections may be overcome, for example, (i) by narrowing to clearly supported embodiments and/or (ii) by clarifying on the record where support can be found and how that support relates to the recitations.
In general, it is requested that any claim amendment in this regard be accompanied by citations to support in the original disclosure.
MPEP 2163 generally pertains.
Claim rejections - 102
In the event the determination of the status of the application as subject to AIA 35 USC 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 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.
Claims 1-2, 6-7 and 11
Claims 1-2, 6-7 and 11 are rejected under 35 USC 102(a)(1) as anticipated by Dong (as cited on the attached "Notice of References Cited" form 892).
Regarding claim 1, the recited preprocessing reads on "preprocessing and standardizing" and "simplified molecular input line entry specification (SMILES)" (Dong: p. 5, 2nd col.; p. 4, 2nd col.; and entire document).
The recited digitized graph structure of chemical information of a small molecule reads on "graphical representation" (Dong: p. 5, 2nd col.; and entire document).
The art is applied similarly to claims 6 and 11.
Regarding claim 2, the recited construction of an artificial intelligence model reads on "machine learning models" (Dong: p. 8, 2nd col.; and entire document).
The art is applied similarly to claim 7.
Claim rejections - 101
35 USC 101 reads:
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.
For each rejection below, dependent claims are rejected similarly as not remedying the rejection, unless otherwise noted.
Matter belonging to no statutory category -- claims 6-10
Claims 6-10 are rejected under 35 USC 101 because the claimed invention is directed to non-statutory subject matter.
Claim 6 is to "a... system...," which is not, in all embodiments within a BRI, interpreted as belonging to any category listed in 101. In a BRI, the claim reads on data and/or software comprising no structure other than data and/or software. The claim is not recited as a process, and the claim is not limited to any particular structure as a 101 machine or manufacture. The claim reads on transitory propagating signals which are not proper patentable subject matter because it does not fit within any of the four statutory categories of invention (In re Nuijten, Federal. Circuit, 2006).
In a BRI, the recited instances of "unit" read on data or software in at least some embodiments.
None of the dependent claims remedy this rejection.
As appropriate, this rejection can be overcome by, for example, amending to recite structure such as non-transitory computer-readable storage medium comprising computer instructions, which instructions are recited as structurally configured to accomplish the recited steps and/or functions. The claim must comprise at least one clearly physical and non-transitory element. Support should be identified for any such amendment.
Judicial exceptions (JE) to 101 patentability
Claims 1-11 are rejected under 35 USC 101 because the claimed inventions are not directed to patent eligible subject matter. After consideration of relevant factors with respect to each claim as a whole, each claim is directed to one or more JEs (i.e. an abstract idea, a natural phenomenon, a law of nature and/or a product of nature), as identified below. Any elements or combination of elements beyond the JE(s) (i.e. "additional elements") are conventional and do not constitute significantly more than the JE(s). Thus, no claim includes additional elements amounting to significantly more than the JE(s), as explained below.
In Alice, citing Mayo and Bilski, two Mayo/Alice questions determine eligibility under 101: First, is a claim directed to a JE? And second, if so, does the claim recite significantly more than the JE?
MPEP 2106 organizes JE analysis into Steps 1, 2A (1st & 2nd prongs) and 2B as follows below.
MPEP 2106 and the following USPTO website provide further explanation and case law citations: www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter? -- MPEP 2106.I and 2106.03
[Step 1: claims 1-5 and 11: YES; claims 6-10: NO as rejected above]
Step 2A, 1st prong: Do the claims recite a judicially recognized exception, i.e. a law of nature, a natural phenomenon, or an abstract idea? -- abstract idea -- MPEP 2106.I and 2106.04
Preliminarily, in a 1st prong of Step 2A, elements of independent claim 1 are interpreted as directed to the abstract idea of processing data associated with a molecule including the JE elements of "...S1... preprocessing..." and "...S2... formatting...," each of which, including all recitation within each listed element, in at least some embodiments within a BRI, involves only manipulation of data. While manipulation of data is not per se directed to an abstract idea, in this instance the above-identified elements are directed to the abstract ideas identified below.
Claim 11 is analyzed similarly to claim 1.
BRIs of the claims are analogous to an abstract idea in the form of at least a mental process, at least equivalent to a computer-implemented process, including obtaining and comparing intangible data (e.g. Cybersource, Synopsys and Electric Power Group). In a BRI, it is not clear that the claim embodiments are limited so as to require complexity precluding analogy to a mental process.
BRIs of the claims also are analogous to an abstract idea in the form of a mathematical concept, including mathematical relationships and calculations, as found in the following case law, as cited and discussed above: collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group) and/or obtaining and comparing intangible data (e.g. Cybersource, Ambry and Myriad CAFC) and/or execution of an algorithm to implement mathematical relationships and/or formulas, including image processing (e.g. TLI, Digitech, Benson, Flook, Diehr, FuzzySharp, In re Grams and In re Abele all as cited in MPEP 2106).
Instant examples of math concepts include formatting a chemical graph, noting the disclosed "mathematical graphs" (specification: [5; also [48-60]) and "mathematical figure standardization" (specification: [34]).
As in Alice (at 306, as cited in the MPEP above) and Bilski (as cited in Alice, id), an abstract idea may comprise multiple abstract elements or steps (i.e. from Alice: "a series of steps" at 306) and need not be a single equation, relationship or principle.
It is not clear that the identified elements must represent other than an abstract idea according to any relevant analysis or case law.
[Step 2A, 1st prong, abstract idea: claims 1 and 11: YES]
Step 2A, 2nd prong: If the claims recite a judicial exception under the 1st prong, then is the judicial exception integrated into a practical application? -- MPEP 2106.I and 2106.04(d)
MPEP 2106.04(d).I lists the following example considerations for evaluating whether a judicial exception is integrated into a practical application:
An improvement in the functioning of a computer or an improvement to other technology or another technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using 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, as discussed in MPEP § 2106.05(e).
In Step 2A, 1st prong above, claim steps and/or elements were identified as part of one or more judicial exceptions (JEs).
In Step 2B below, any remaining steps and/or elements are therefore in addition to the identified JE(s). Any such additional steps and additional elements are further discussed in Step 2B.
Here in Step 2A, 2nd prong, no additional step or element clearly demonstrates integration of the JE(s) into a practical application.
At this point in examination it is not yet the case that any of the Step 2A, 2nd prong considerations enumerated above clearly demonstrates integration of the identified JE(s) into a practical application. Referring to the considerations above, none of 1. an improvement, 2. treatment, 3. a particular machine or 4. a transformation is clear in the record.
For example, regarding the first consideration at MPEP 2106.04(d)(1), the record, including for example the specification, does not yet clearly disclose an explanation of improvement over the previous state of the technology field. The claims do not yet clearly result in such an improvement (e.g. specification: [5]).
[Step 2A, 2nd prong: claims 1 and 11: NO]
Step 2B: Do the claims recite a non-conventional arrangement of additional elements in addition to the identified JEs? -- MPEP 2106.I and 2106.05
Addressing the second Mayo/Alice question, all elements of claims 1 and 11 are part of one or more identified JEs (as described above), except for elements identified here as conventional elements in addition to the above judicial exceptions:
The recited "memory" and "processor" of claim 11 are conventional elements of a laboratory and/or computing environment and/or conventional data gathering/input/output elements, as exemplified in MPEP 2106.05(d).II and 2106.05(f-g).
Data gathering does not impose any meaningful limitation on the judicial exceptions or on how the judicial exceptions are performed. Data gathering is insufficient to integrate judicial exceptions into a practical application (MPEP 2106.05(g)).
It is emphasized that, outside of an improvement argument, analysis of what is conventional generally pertains to the above-identified additional elements and not to elements identified as part of a JE.
[Step 2B: claims 1 and 11: NO]
Summary and conclusion regarding claims 1 and 11
Summing up the above analysis of claims 1 and 11, each viewed as a whole and considering all elements individually and in combination, no claim recites limitations that transform the claim, finally interpreted as directed to the identified JE(s), into patent eligible subject matter, and it is not clear that any claim is sufficiently analogous to controlling case law identifying an example of an eligible claim.
Remaining claims
Claims 2-5 add elements which also are part of the identified JEs for the same reasons described above regarding the independent claims and therefore do not provide the something significantly more necessary to satisfy 101.
None of the dependent claim elements provides the something significantly more than the identified JE(s) necessary to satisfy 101.
Citations to art
In the above citations to documents in the art, rejections refer to the portions of each document cited as example portions as well as to the entirety of each document, unless otherwise noted in the situation of lengthy, multi-subject documents. Other passages not specifically cited within a document may apply as well.
Conclusion
No claim is allowed.
A shortened statutory period for reply is set to expire THREE MONTHS from the mailing date of this communication.
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The examiner for this Office action, G. Steven Vanni, may be contacted at:
(571) 272-3855 Tu-F 8-7 (ET).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Larry D. Riggs, II, may be reached at (571) 270-3062.
/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686
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