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 .
Claim Objection
Claim 13 recites the limitation “to realize the functions of” in line 3. There is insufficient antecedent basis for this limitation in the claim. The claim use a definite article “the”, however, the claim 13 does not recite the claim limitation of “to realize functions of ”.
Appropriate correction is required.
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 1-15 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.
As to claim 1, the claim recites “A sample analyzing apparatus comprising:
a measurement unit that has a mass spectrometer, and that performs mass spectrometry on a plurality of compounds generated due to pyrolysis of a polymer sample;
a generator that generates a measured mass spectrum set, formed from a plurality of measured mass spectra corresponding to the plurality of compounds, based on data which is output from the measurement unit; and
an analyzer that analyzes the polymer sample by comparing the measured mass spectrum set with all or a part of a plurality of groups of predicted mass spectra corresponding to a plurality of polymer candidates, wherein
the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products which may be generated from the polymer candidate.”
Under the Step 1 of the eligibility analysis, we determine whether the claim is directed to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (apparatus for claim 1).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the bold type portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and mental processes (concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions).
In claim 1, the step of “generates a measured mass spectrum set, formed from a plurality of measured mass spectra corresponding to the plurality of compounds, based on data which is output from the measurement unit” is a mathematical concept, therefore, it is considered to be an abstract idea.
The step of “analyzes the polymer sample by comparing the measured mass spectrum set with all or a part of a plurality of groups of predicted mass spectra corresponding to a plurality of polymer candidates” is a combination of a mathematical concept and a mental process, therefore, it is considered to be an abstract idea.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claim comprises the following additional elements:
a measurement unit that has a mass spectrometer, and that performs mass spectrometry on a plurality of compounds generated due to pyrolysis of a polymer sample; a generator; an analyzer; and the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products which may be generated from the polymer candidate.
The additional elements “a measurement unit that has a mass spectrometer, and that performs mass spectrometry on a plurality of compounds generated due to pyrolysis of a polymer sample”, and “the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products which may be generated from the polymer candidate” are not sufficient to integrate the abstract idea into a practical application because it only adds an insignificant extra-solution activity to the judicial exception.
The additional elements “a generator”, and “an analyzer” are not sufficient to integrate the abstract idea into a practical application because they are considered a generic computer element. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
In conclusion, the above additional elements, considered individually and in combination with the other claims elements do not reflect an improvement to other technology or technical field, do not reflect improvements to the functioning of the computer itself, do not recite a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claim is directed to a judicial exception and require further analysis under the Step 2B.
The above claim, does not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are generically recited and are well-understood/conventional in a relevant art as evidenced by the prior art of record (Step 2B analysis).
For example, a mass spectrometer performs mass spectrometry on a plurality of compounds generated due to pyrolysis of a polymer sample is disclosed by “Watanabe JP 3615480B2”, FIGs. 1 and 2, [0005], [0018]; and “Watanabe JP 3801355B2”, Abstract, [0003], [0009], [0015], [0034], [0035], [0072].
For example, the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products is disclosed by “Jegal US 20210080433”, Abstract, [0028], [0029]; and “Komatsu JP 2019174431A”, [0005], [0006], [0020], [0034].
The claim, therefore, is not patent eligible.
Independent claims 13 and 14 recite subject matter that are similar or analogous to that of claim 1, and therefore, the claims are also patent ineligible.
With regards to the dependent claims, claims 2-12, and 15 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application.
The dependent claims are, therefore, also not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP 3615480B2, hereinafter Watanabe) in view of Makarov et al. (GB 2531336A, hereinafter Makarov, and further in view of Jegal et al. (US 20210080433), hereinafter Jegal).
As to claims 1, and 13-14, Watanabe teaches a measurement unit that has a mass spectrometer (FIGs. 1 and 2, and [0018] discloses a measurement unit with a mass spectrometer 5), and that performs mass spectrometry on a plurality of compounds generated due to pyrolysis of a polymer sample ([0005] discloses the polymer sample is introduced into a pyrolysis furnace and pyrolyzed by instantaneous or heating, and the mixture of pyrolysis products obtained is separated into individual pyrolysis products using a capillary column, and the separated pyrolysis products are detected by a mass spectrometer);
a generator (FIGs. 1 and 2 shows mass spectrometer 5) that generates a measured mass spectrum set, formed from a plurality of measured mass spectra corresponding to the plurality of compounds, based on data which is output from the measurement unit ([0012] and [0029] disclose creating a first aggregate mass spectrum for each sample in which the aggregate data is used as first aggregate data of the intensity of the molecular ions and fragment ions, and the aggregate data is arranged in order of the mass of the molecular ions and fragment ions. Creating a second aggregate mass spectrum for each sample in which the aggregate data is arranged in order of the mass of the molecular ions and fragment ions); and
an analyzer (FIGs. 1 and 2 shows a personal computer PC 13) that analyzes the polymer sample by comparing the measured mass spectrum set with all or a part of a plurality of groups of mass spectra corresponding to a plurality of polymer candidates ([0016] discloses the second aggregated mass spectrum of the sample may be further compared with a database constructed by aggregating aggregated mass spectra of multiple known samples prepared).
Watanabe does not explicitly teach analyzes the polymer sample by comparing the measured mass spectrum set with all or a part of a plurality of groups of predicted mass spectra corresponding to a plurality of polymer candidates.
Makarov teaches analyzes the polymer sample by comparing the measured mass spectrum set with all or a part of a plurality of groups of predicted mass spectra corresponding to a plurality of polymer candidates (Claim 30 discloses the determining comprises comparing the extracted one or more absorption spectra (i.e., the measured mass spectrum set - emphasis added by Examiner) and/or fragmentation mass spectra to one or more calculated spectra (i.e., all or a part of a plurality of groups of calculated or predicted mass spectra corresponding to a plurality of polymer candidates - emphasis added by Examiner), that have been calculated for one or more candidate molecular structures, in order to find the most likely structure of the respective molecular entity).
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate Makarov into Watanabe for the purpose of analyzing molecules and their mixtures using mass spectrometry and optical spectroscopy in order to identify large biomolecules and their clusters, and their isomers, as well as their interactions. This combination would improve in acquiring mass spectrum over a broad mass range and with high resolution and mass accuracy.
Watanabe does not explicitly teach wherein the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products which may be generated from the polymer candidate.
Jegal teaches wherein the group of predicted mass spectra corresponding to each of the polymer candidates comprises a plurality of predicted mass spectra corresponding to a plurality of pyrolysis products which may be generated from the polymer candidate (Abstract discloses separating a fraction of a polymer resin, and pyrolyzing the fraction in a pyrolysis-gas chromatography/mass spectrometer (Py-GC/MS) to obtain a mass spectrum of the pyrolyzed fraction; [0028] and [0029] disclose piperidine and morpholine in a polymer resin sample is introduced into SEC; and the characteristic fragment peaks identified in the mass spectrum are derived from a moiety, and the sum of the areas of the fragment peaks in the mass spectrum is calculated (i.e., the groups of calculated or predicted mass spectra corresponding to a plurality of polymer candidates - emphasis added by Examiner)).
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate Jegal into Watanabe in view of Makarov for the purpose of analyzing polymer resins including high molecular weight additives by obtaining qualitative and quantitative information of high molecular weight additives in polymer resins by using continuously connected size exclusion chromatography (SEC). This combination would improve in obtaining composition information, and the accuracy of quantitative information is improved in the case of small amounts of additives or mixtures.
Examiner' s Note
Regarding Claims 2-12, and 15, the most pertinent prior arts are “Watanabe JP 3615480B2”; “Makarov GB 2531336A”; “Jegal US 20210080433”; “Watanabe JP 3801355B2”; “Komatsu JP 2019174431A”; "Takahashi US 20210166928"; "Kudo US 20230366862"; "Watanabe US 6444979B1"; “Ubukata et al. (Integrated qualitative analysis of polymer sample by pyrolysis-gas chromatography combined with high-resolution mass spectrometry: Using accurate mass measurement results from both electron ionization and soft ionization, Rapid Communications in Mass Spectrometry, DOI: 10.1002/rcm.8820, published April 25, 2020)”; “Kubo et al. (Construction of a Mass Spectrum Library Containing Predicted Electron Ionization Mass Spectra Prepared Using a Machine Learning Model and the Development of an Efficient Search Method; Mass Spectrometry, Vol. 12 (2023), A0120, published March 21, 2023))”; and “Zhang et al. (Prediction of electron ionization mass spectra based on graph convolutional networks, ScienceDirect, International Journal of Mass Spectrometry, published February 20, 2022)”. However, the present application and ”Kubo et al. (Construction of a Mass Spectrum Library Containing Predicted Electron Ionization Mass Spectra Prepared Using a Machine Learning Model and the Development of an Efficient Search Method)” shares the same assignee, and the published dates for Kubo et al. is only three days earlier than the application priority date of 3/24/2023.
As to claim 2, , the prior arts of record, alone or in combination, do not fairly teach or suggest “wherein each of the predicted mass spectra is a mass spectrum generated by supplying a structural formula representing each of the pyrolysis products to a trained prediction model” including all limitations as claimed.
As to claim 3, the prior arts of record, alone or in combination, do not fairly teach or suggest “wherein the analyzer: calculates a score for each of the polymer candidates by performing mass spectrum matching between the measured mass spectrum set and all or a part of the plurality of groups of predicted mass spectra; and
judges one or a plurality of polymers contained in the polymer sample based on the score for each of the polymer candidates” including all limitations as claimed.
As to claim 6, the prior arts of record, alone or in combination, do not fairly teach or suggest “wherein the analyzer extracts a selected predicted mass spectrum array to be compared with each of the measured mass spectra, from among the plurality of groups of predicted mass spectra, based on molecular mass information of each of the compounds.” including all limitations as claimed.
As to claim 9, the prior arts of record, alone or in combination, do not fairly teach or suggest “a pyrolysis product library having the plurality of groups of predicted mass spectra; and
a compound library having a mass spectrum set corresponding to a known compound set, wherein
the analyzer: searches through the pyrolysis product library and the compound library based on the measured mass spectrum set; and
judges, for each of the measured mass spectra, an attribute of a compound corresponding to the measured mass spectrum, based on a result of search of the pyrolysis product library and the compound library” including all limitations as claimed.
As to claim 15, the prior arts of record, alone or in combination, do not fairly teach or suggest “wherein the step of generating the plurality of structural formulae comprises: a step of generating an original structural formula of an original pyrolysis product serving as a monomer connecting structure; and
a step of generating a plurality of derived structural formulae from the original structural formula, and
the plurality of structural formulae comprise the original structural formula and the plurality of derived structural formulae” including all limitations as claimed.
Dependent claims 4-5, 7-8, and 10-12 are also distinguished over the prior art for at least the same reason as claims 3, 6, and 9, respectively.
Examiner notes, however, that claims 1-15 are rejected under 35 U.S.C. 101, and therefore, not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Luttinger US 3174956A” teaches “The invention relates to acquisition methods for fragment ion spectra of biopolymer molecules in tandem mass spectrometers which are coupled to separation devices. The invention provides a real-time method for calculating a quality coefficient for each fragment ion spectrum. The quality coefficient indicates whether the fragment ion spectrum can be used successfully for identifying the biopolymer molecule or whether it should be acquired once more, possibly with other acquisition parameters.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAL CE MANG whose telephone number is (571)272-0370. The examiner can normally be reached Monday to Friday- 8:30-12:00, 1:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine T Rastovski can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAL CE MANG/Primary Examiner, Art Unit 2857
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