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 .
Formal Matters
Applicant's response, filed 14 August 2026, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Status of Claims
Claim 1 and 4-6 are currently pending and have been examined.
Claims 1, 5,and 6 have been amended.
Claims 2-3 have been canceled.
Claims 1 and 4-6 have been rejected.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed for Application No. JP2021-001610 on 09 August 2023.
The instant application therefore claims the benefit of priority under 35 U.S.C 119(a)-(d). Accordingly, the effective filing date for the instant application is 07 January 2021 claiming benefit to JP2021-001610.
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 and 4-6 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.
Step 1 – Statutory Categories of Invention:
Claims 1 and 4-6 are drawn to an apparatus or a method, which are statutory categories of invention.
Step 2A – Judicial Exception Analysis, Prong 1:
Independent claim 1 recites an information processing apparatus. Independent claim 5 recites an information processing method. Independent claim 6 recites a non-transitory computer-readable storage medium.
These independent claims recite the following steps best characterized as a mental process under MPEP § 2106.04(a)(2)(III) citing the abstract idea grouping for mental processes in general:
[receive] partial structure data indicating a partial structure of a chemical substance and a condition regarding an index value indicating performance of the chemical substance, the partial structure data being represented in graph format in which atoms constituting the chemical substance are represented by nodes, and bonds between the atoms are represented by edges
extract, for each of a plurality of known chemical substances, a known chemical substance including an input partial structure which is a partial structure indicated by the partial structure data and satisfying the condition from a database in which structure data indicating a structure of the chemical substance is recorded
extract a partial structure other than the input partial structure, which is included in a structure of the extracted known chemical substance as a co-occurrence partial structure
calculate a co-occurrence probability which is a probability that the extracted co-occurrence partial structure appears together with the input partial structure
Under the broadest reasonable interpretation of the limitations, these limitations are best characterized as applying a mental process to a generic computing environment - see MPEP § 2106.04(a)(2)(III)(c)(2).
Step 2A – Judicial Exception Analysis, Prong 2:
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to instructions to implement the judicial exception using a computer [MPEP 2106.05(f)].
Claim 1 recites a processing apparatus comprising: at least one processor connected to a bus; an input unit connected to the bus; and a display unit connected to the bus. Claims 5 and 6 recite a user via an input unit connected to a bus that is also connected to the processor and a display unit. Claim 6 recites a non-transitory computer-readable storage medium storing an information processing program. The specification describes the computer and corresponding hardware with generic language amounting to a general purpose computer (see the instant specification in ¶ 0012-13). The use of the computer components to perform the method of the abstract idea is only recited as a tool to apply data to an algorithm and report the results (MPEP § 2106.05(f)(2) see case involving a commonplace business method or mathematical algorithm being applied on a general purpose computer within the “Other examples.. i.”) amounting to instruction to implement the abstract idea using a general purpose computer. Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357 (2014).
Claims 1, 5, and 6 recite receive input of partial structure data indicating a partial structure of a chemical substance and a condition regarding an index value indicating performance of the chemical substance. The limitations are only recited as a tool which only serves to input data for use by the abstract idea (MPEP § 2106.05(g) - insignificant pre-solution activity that amounts to mere data gathering to obtain input) and is therefore not a practical application of the recited judicial exception.
Claims 1, 5, and 6 recite display the extracted co-occurrence partial structure in the graph format on the display unit while showing a connection relationship with the input partial structure; display a node constituting the co-occurrence partial structure and a node constituting the input partial structure in different colors; in a case in which the co-occurrence partial structure and the input partial structure are directly connected, display a connection location as an edge; and in a case in which a plurality of co-occurrence partial structures having different structures are extracted, display the extracted plurality of co-occurrence partial structures in order of co-occurrence probability. Claim 4 recites display the extracted co-occurrence partial structure together with the co-occurrence probability calculated for the co-occurrence partial structure. The limitations are only recited as a tool which only serves as display/output of the data determined from the abstract idea (MPEP § 2106.05(g) - insignificant post-solution activity that amounts to post-solution output on a well-known display device) and is therefore not a practical application of the recited judicial exception.
The above claims, as a whole, are therefore directed to an abstract idea.
Step 2B – Additional Elements that Amount to Significantly More:
The present claims do not include additional elements that are sufficient to amount to more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of instructions to implement the abstract idea on a computer.
Claim 1 recites a processing apparatus comprising: at least one processor connected to a bus; an input unit connected to the bus; and a display unit connected to the bus. Claims 5 and 6 recite a user via an input unit connected to a bus that is also connected to the processor and a display unit. Claim 6 recites a non-transitory computer-readable storage medium storing an information processing program. Each of these elements is only recited as a tool for performing steps of the abstract idea, such as the use of the storage mediums to store data, the computer and data processing devices to apply the algorithm, and the display device to display selected results of the algorithm. These additional elements therefore only amount to mere instructions to perform the abstract idea using a computer and are not sufficient to amount to significantly more than the abstract idea (MPEP 2016.05(f) see for additional guidance on the “mere instructions to apply an exception”).
Each additional element under Step 2A, Prong 2 is analyzed in light of the specification’s explanation of the additional element’s structure. The claimed invention’s additional elements do not have sufficient structure in the specification to be considered a not well-understood, routine, and conventional use of generic computer components. Note that the specification can support the conventionality of generic computer components if “the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” (MPEP § 2106.07(a)(III)(A) integrating the evidentiary requirements in making a § 101 rejection as established in Berkheimer in III. Impact on Examination Procedure, A. Formulating Rejections, 1. on p. 3).
Claims 1, 5, and 6 recite receive input of partial structure data indicating a partial structure of a chemical substance and a condition regarding an index value indicating performance of the chemical substance. The courts have decided that receiving or transmitting data over a network as well-understood, routine, conventional activity when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (MPEP § 2106.05(d)(II) other types of activities example i. receiving or transmitting data over a network, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network).
Claims 1, 5, and 6 recite display the extracted co-occurrence partial structure in the graph format on the display unit while showing a connection relationship with the input partial structure; display a node constituting the co-occurrence partial structure and a node constituting the input partial structure in different colors; in a case in which the co-occurrence partial structure and the input partial structure are directly connected, display a connection location as an edge; and in a case in which a plurality of co-occurrence partial structures having different structures are extracted, display the extracted plurality of co-occurrence partial structures in order of co-occurrence probability. Claim 4 recites display the extracted co-occurrence partial structure together with the co-occurrence probability calculated for the co-occurrence partial structure. The courts have decided that presenting generated data as well-understood, routine, conventional activity when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (MPEP § 2106.05(d)(II) other types of activities example iv. presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93).
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Their collective functions merely provide conventional computer implementation.
Claims 1 and 4-6 are therefore rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed with respect to 35 USC § 101 have been fully considered but they are not persuasive. Applicant first asserts that the partial structure data represented as a node edge graph is a computer specific process. Examiner disagrees. One of ordinary skill in the art would recognize that a graphic model with node and weighted relationship edges are performable utilizing pen and paper and thus are reasonably a part of the judicial exception as a mental process (or mathematical concept)
Next, Applicant asserts that the different conditional display based on different output conditions amount to an improvement in a specific GUI and display control technology that “enables a user to visually identify and manipulate the connection relationships of complex chemical structures, rather than merely presenting information”. Examiner is not persuaded. The conditional control of the user interface to show different outputs based on the determination made by the abstract idea – that is, showing one graph is co- occurrence is determined or showing two if no co-occurrence exists – is not an improvement to computer display technology. An improvement to the abstract ideas of communicating information regarding an identified candidate partial structure/s does not amount to an improvement to technology or a technical field (see MPEP § 2106.05(a)(III) stating “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”). There is no indication in the instant disclosure that the involvement of a computer display assists in improving the technology for the outlined problem statement. Here, the improvement is to identification process and not to display technology. The instant application and claim language fail to detail how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer displays to perform the method is not sufficient.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Zaslavsky et al., Discovering and Summarizing Relationships Between Chemicals, Genes, Proteins, and Diseases in PubChem, 6 Frontiers in Research Metrics and Analytics (July 2021) teaching on scoring chemical co-occurrences between two compounds in the § Scoring the Co-occurrences on p. 7
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 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 JORDAN LYNN JACKSON whose telephone number is (571)272-5389. The examiner can normally be reached Monday-Friday 8:30AM-4:30PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen M Vazquez can be reached at 571-272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORDAN L JACKSON/Primary Examiner, Art Unit 2857
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