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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/05/2026 has been entered.
101 Rejection
Applicants’ arguments have been fully considered but are not persuasive. The specification describes the analysis as helping a user assess whether the predicted chemical substructures are reliable by referencing past experimental data. That is a benefit to the user’s decision making and not an improvement to computer components functionality; see paragraphs [0004-0006] and [0033-0035]. Although applicant asserts a technical improvement in material informatics, the claim is directed to receiving chemical structure information, searching stored data, comparing theoretical and experimental information, deriving a reliability value and displaying the results, which are information analysis steps. The additional elements, including the processor, storage unit, input and display perform their ordinary functions and do not integrate the abstract ideas into a practical application.
Unlike Enfish, the instant claims do not improve computer or database functionality but use generic computer components as tools. Further, the additional elements, individually and as an ordered combination, implement the analysis on generic computer components and do not amount to significantly more.
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 the 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.
Applicants 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 perform a first search for searching structure data indicating the overall structure of the chemical substance for a partial structure included in partial structure data by refereeing to the 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 and which is a combination of the partial structure and the index value, perform a second search for searching past data that is stored, in which the overall structure of the chemical substance and an actual measurement value of an index value indicating the property or the structure of the chemical substance obtained by an experiment are associated with each other, and which is a combination of the overall structure of the chemical substance and the actual measurement value of the index value, for a chemical substance that includes the partial structure extracted by the first search in an overall structure thereof, derive 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 a number of matches, among the total number of the chemical substances in which an index value and a type of the index value corresponding to the chemical substance match the index value and a type of index value of the partial structure extracted by the first search, and perform 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. Further, the claim derivation utilizes a mathematical expression seen in [0028], thereby supporting the conclusion that 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, a storage unit 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 additional element step of receiving structure data indicating an overall structure of a chemical substance that is a processing target and that is input by a user via the user input device amounts to no more than a mere data gathering step needed to perform the identified abstract idea; as neither the performance or results of the abstract idea improves the data gathering step. Therefore, the identified additional element fails to integrate the abstract ideas into a practical application. MPEP 2106.05(g)
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 of the abstract idea 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 perform a first search for searching structure data indicating the overall structure of the chemical substance for a partial structure included in partial structure data by refereeing to the 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 and which is a combination of the partial structure and the index value, perform a second search for searching past data that is stored, in which the overall structure of the chemical substance and an actual measurement value of an index value indicating the property or the structure of the chemical substance obtained by an experiment are associated with each other, and which is a combination of the overall structure of the chemical substance and the actual measurement value of the index value, for a chemical substance that includes the partial structure extracted by the first search in an overall structure thereof, derive 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 a number of matches, among the total number of the chemical substances in which an index value and a type of the index value corresponding to the chemical substance match the index value and a type of index value of the partial structure extracted by the first search, and perform 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. Further, the claim derivation utilizes a mathematical expression seen in [0028], thereby supporting the conclusion that 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, storage unit 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 additional element step of receiving structure data indicating an overall structure of a chemical substance that is a processing target and that is input by a user via the user input device amounts to no more than a mere data gathering step needed to perform the identified abstract idea; as neither the performance or results of the abstract idea improves the data gathering step. Therefore, the identified additional element fails to integrate the abstract ideas into a practical application. MPEP 2106.05(g)
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 neither the result or performance has any impact on these elements. Further, neither alone nor 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.
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
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