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 .
Response to Arguments
112 Rejection
Based on applicant amendments and filed arguments, see page 5, the previously set forth 112 rejections have been overcome.
101 Rejection
Initially, applicant argues “since no prior art rejections are raised in the outstanding Office Action, a remarkable technical contribution made by the claimed invention is acknowledged. Therefore, it is asserted that the above-mentioned remarkable technical contribution corresponds to an inventive concept, which renders the amended claims, as a whole, as amounting to significantly more than the judicial exception”.
In Contour, the court found eligibility because the claims were directed towards a specific improvement and solved a technical problem in the prior art using generic elements. However, applicant’s instant claims recite the abstract ideas as being implemented using conventional computer components, as described in applicant’s filed specification, see para. [0042-0045], sans any improved to those elements. Thus, applicant’s reliance on Contour does support applicant assertions.
Further, applicant does not identify any claim limitations that improves the functions of a processor, or the other generically recited computer elements acting as tools for performing the identified abstract ideas. Applicant also fails to argue how the abstract ideas are carried out in a non-conventional manner or impose any meaningful limits beyond routine implementation, even stating the performed mathematical operation is a well-known arithmetic to perform a degree of reliability computation; see page 8 of applicant’s filed remarks.
Lastly, courts have repeatedly held that novelty or non-obviousness is irrelevant to the Step 2 analysis. Therefore, the lack of an art rejection does not acknowledge a “remarkable technical contribution”, especially when applicant does not state what that “remarkable technical contribution” is in terms of claim limitations.
Applicant further argues “the amount of possible chemical structures to be searched is so large that a person could not “practically” perform the claimed functions in their mind with accuracy and completeness. However, the claim does not provide any limits or ranges of an amount of chemical structures being searched, the complexity of those structures, or scale. Applicant appears to be arguing a more limited interpretation of the claim. Under the broadest and most reasonable interpretation, the claim encompasses embodiments involving small or manageable chemical structures that could be searched and evaluated by the human mind. Therefore, because the claim covers embodiments that can be performed in the human mind, the claim remains directed towards the abstract ideas.
Applicant argues the claimed mathematical operation is not being patented and does not preempt all uses. While preemption may signal patent ineligibility, the absence of complete preemption does not make the claim patent eligible. The claim recites a mathematical operation applied to data and does not integrate the operation into a practical application or provide significantly more.
The claims remain rejected under 35 USC § 101.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites performs a first search for searching structure data indicating a structure of a chemical substance, which is a processing target, for a partial structure included in partial structure data in which the partial structure of the chemical substance and an index value indicating a property or a structure of the partial structure are associated with each other, performs a second search for searching past data in which the structure of the chemical substance and an index value indicating the property or the structure of the chemical substance obtained by an experiment are associated with each other for a chemical substance including the partial structure extracted by the first search, derives a reliability degree indicating reliability of the index value of the partial structure extracted by the first search based on a total number of the chemical substances extracted by the second search and an index value corresponding to the chemical substance, and performs control of displaying the partial structure extracted by the first search and the reliability degree of the partial structure on a display device which falls into the abstract idea groupings of mental processes and mathematical concepts. The claimed performing a first search, performing a second search for past data and an index value, and deriving a reliability degree to present the extracted partial structure encompasses a mental process because the limitations merely involve the mental process of searching datasets and making judgements using comparative analysis capable of being performed in the human mind, with the aid of pen and paper. Further, the claim derivation utilizes a mathematical expression seen in [0028], thereby supporting the conclusion the abstract idea falls into the abstract idea grouping of mathematical concepts.
This judicial exception is not integrated into a practical application because although the claim recites a processor connected to a bus, an input device and a display device, these generically claimed computer elements are merely acting as tools for performing the abstract idea; as neither the performance or result of the abstract idea improves or better their respective operations. MPEP 2106.05(a)
The claim recites additional elements of a structure of a chemical substance, partial structure and an experiment read as elements that generically link the abstract idea to a field of use without integrating the abstract idea into a practical application. MPEP 2106.05(h)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements directed to generic computer components are merely acting as tools for performing the abstract idea, as the neither result or performance has any impact on these elements. Further, neither alone or in combination, the chemical substances, partial structure and the experiment merely link the abstract idea to the field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible simply by having the applicant acquiesce to limiting the reach of the claim directed towards the abstract idea a particular technological use. MPEP 2106.05(h) Note: the method steps of claim 5 are rejected similarly.
Claims 2 and 3 further define the display and processor as performing control of the display such that reliability degree is displayed. However, the additional elements here are merely performing an instruction to apply the exception without providing significantly more or integrating the abstract idea into a practical application; as the displaying of the abstract idea result does not improve or better the display itself, therefore, the claim fails to amount to significantly more or integrate the abstract idea into a practical application. MPEP 2106.05(f)
Claim 4 further defines a mathematical concept, thereby falling into the abstract idea grouping of mathematical concepts, as applying a weight to each data point is mathematical concept capable of being performed in the human mind, with the aid of pen and paper. Therefore, the claim fails to provide significantly more or integrating the abstract idea into a practical application.
Claim 6 recites performing a first search for searching structure data indicating a structure of a chemical substance, which is a processing target, for a partial structure included in partial structure data in which the partial structure of the chemical substance and an index value indicating a property or a structure of the partial structure are associated with each other, performing a second search for searching past data in which the structure of the chemical substance and an index value indicating the property or the structure of the chemical substance obtained by an experiment are associated with each other for a chemical substance including the partial structure extracted by the first search, deriving a reliability degree indicating reliability of the index value of the partial structure extracted by the first search based on a total number of the chemical substances extracted by the second search and an index value corresponding to the chemical substance, and performing control of displaying the partial structure extracted by the first search and the reliability degree of the partial structure on a display device which falls into the abstract idea groupings of mental processes and mathematical concepts. The claimed performing a first search, performing a second search for past data and an index value, and deriving a reliability degree to present the extracted partial structure encompasses a mental process because the limitations merely involve the mental process of searching datasets and making judgements using comparative analysis capable of being performed in the human mind, with the aid of pen and paper. Further, the claim derivation utilizes a mathematical expression seen in [0028], thereby supporting the conclusion the abstract idea falls into the abstract idea grouping of mathematical concepts.
This judicial exception is not integrated into a practical application because although the claim recites a non-transitory computer read-able storage medium, program, processor, bus, input device and a display device, these generically claimed computer elements are merely acting as tools for performing the abstract idea; as neither the performance or result of the abstract idea improves or better the operation of the processor, medium, program or display. MPEP 2106.05(a)
The claim recites additional elements of a structure of a chemical substance, partial structure and an experiment read as elements that generically link the abstract idea to a field of use without integrating the abstract idea into a practical application. MPEP 2106.05(h)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements directed to generic computer components are merely acting as tools for performing the abstract idea, as the neither result or performance has any impact on these elements. Further, neither alone or in combination, the chemical substances, partial structure and the experiment merely link the abstract idea to the field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible simply by having the applicant acquiesce to limiting the reach of the claim directed towards the abstract idea a particular technological use. MPEP 2106.05(h)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kozawa (2013/0282304) which teaches creating candidates of partial structures, comparing them to deduce the substance and ranking them in descending order of probability of accuracy.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW G MARINI whose telephone number is (571)272-2676. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MATTHEW G MARINI/ Primary Examiner, Art Unit 2853