DETAILED ACTION
Non-Final Rejection
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 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.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to ineligible signals per se. The claim 12 recites a “A computer-readable storage medium, the computer-readable storage medium storing a database that is to be used for causing a computer” and the original disclosure does not provide a clear, deliberate and sufficient definition to exclude signals per se. Instead, the disclosure describes “computer program comprising a routine of set instructions stored in a machine-readable storage medium as described herein. These instructions may be provided to one or more processors of a general purpose computer, special purpose computer, or other programmable data processing apparatus (or a combination of devices and circuits) to produce a machine, such that the instructions of the machine, when executed by the processor, implement the functions specified in the block or blocks, or in the acts, steps, methods and processes described herein” and therefore, under the broadest reasonable interpretation, " A computer readable storage medium " as recited in the claim covers transitory signals (see MPEP 2106.03(I): “Non-limiting examples of claims that are not directed to any of the statutory categories include: Transitory forms of signal transmission (often referred to as "signals per se"), such as a propagating electrical or electromagnetic signal or carrier wave”).
Use the below language for Step 1 of the SME analysis when claims do NOT recite a statutory category but are still being analyzed under the two-part framework for compact prosecution:
Claims 1-7 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Each of claims1-6 falls within one of the four statutory categories. See MPEP § 2106.03. For example, each of claims 1-6 fall within category of process; For example, each of claim 7 is not directed to a statutory category, see signal per se rejection above, however for the purpose of compact prosecution the claims are also considered under the abstract idea analysis below.
Regarding Claims 1-6
Step 2A – Prong 1
Exemplary claim 1 is directed to an abstract idea of estimating a structure of a target compound.
The abstract idea is set forth or described by the following italicized limitations:
1. A method of estimating a structure of a target compound containing a linear acyl group, the method comprising:
analyzing a sample containing the target compound on a chromatograph to determine a retention time; and
estimating a combination of a total number of carbon atoms and a total number of carbon-carbon double bond(s) in the acyl group in the target compound from the retention time, based on the following equations 1 and 2:
N=f(T) ... (Equation 1)
T=t/Dm ... (Equation 2)
in the equation 1, N represents the total number of carbon atoms in the acyl group, and f(T) represents a function that is derived from a homologue of a saturated compound corresponding to the target compound and that expresses a correlation between the total number of carbon atoms and the retention time; and in the equation 2, t represents the retention time, D represents a coefficient based on carbon-carbon double bond(s), and m represents the total number of carbon-carbon double bond(s).
The bold limitations above represent a combination of mathematical concepts (i.e., a process that can be performed by mathematical relationships or rules or idea). Therefore, the italicized limitations fall within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.
For example, the limitations “ A method of estimating a structure of a target compound containing a linear acyl group, the method comprising: analyzing a sample containing the target compound to determine a retention time; and estimating a combination of a total number of carbon atoms and a total number of carbon-carbon double bond(s) in the acyl group in the target compound from the retention time, based on the following equations 1 and 2: N=f(T) ... (Equation 1) T=t/Dm ... (Equation 2) in the equation 1, N represents the total number of carbon atoms in the acyl group, and f(T) represents a function that is derived from a homologue of a saturated compound corresponding to the target compound and that expresses a correlation between the total number of carbon atoms and the retention time; and in the equation 2, t represents the retention time, D represents a coefficient based on carbon-carbon double bond(s), and m represents the total number of carbon-carbon double bond(s) ” is a mathematical concepts (i.e., a process that can be performed by mathematical relationships or rules or idea), see 2106.04(a)(2). Limitations are considered together as a single abstract idea for further analysis. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)).
Step 2A – Prong 2
Claims 1 does not include additional elements (when considered individually, as an ordered combination, and/or within the claim as a whole) that are sufficient to integrate the abstract idea into a practical application.
The only additional element is “a chromatograph ”. This element amounts to mere use of a generic computer components with a generic analysis system, which is well understood routine and conventional (see background of current discloser and IDS and PTO 892) and this element individually does not provide a practical application. In view of the above, the “additional element” individually or combine does not provide a practical application of the abstract idea. see MPEP 2106.05(d).
In view of the above, the “additional elements” individually do not provide a practical application of the abstract idea. Furthermore, the “additional elements” in combination amount to a generic computer components with computer software, where such computers and software amount to mere instructions to implement the abstract idea on a computer(s) and/or mere use of a generic computer component(s) as a tool to perform the abstract idea. Therefore, these elements in combination do not provide a practical application. The combination of additional elements does no more than generally link the use of the abstract idea to a particular technological environment, and for this additional reason, the combination of additional elements does not provide a practical application of the abstract idea..
Step 2B
Claims1 does not include additional elements, when considered individually and as an ordered combination, that are sufficient to amount to significantly more than the abstract idea. For example, the limitation of Claims “chromatograph ”, generic device, which are well understood, routine and convention (see background of current discloser, IDS and the Examiner cited prior arts) and MPEP 2106.05(d)).
The reasons for reaching this conclusion are substantially the same as the reasons given above in § Step 2A – Prong 2. For brevity only, those reasons are not repeated in this section. See MPEP §§ 2106.05(g) and MPEP §§2106.05(II).
.
.
Dependent Claims 2-6
Dependent claims 2-6 fail to cure this deficiency of independent claim 1 (set forth above) and are rejected accordingly. Particularly, claims 2-9 recite limitations that represent (in addition to the limitations already noted above) either the abstract idea of mathematical concepts (bold) or an additional element that is merely extra-solution activity(data gathering)(italicized), mere use of instructions and/or generic components and/computer component(s) as a tool to implement the abstract idea, and/or merely limits the abstract idea to a particular technological environment(under line).
For examples:
2. estimating a structure according to claim 1, wherein the target compound is a triacylglycerol.
3. wherein f(T) in the equation 1 is a function that is derived from two or more types of the homologue.
4. the chromatograph is a liquid chromatograph or a supercritical fluid chromatograph.
5. analyzing the target compound on a mass spectrometer.
6. the mass spectrometer is a triple quadrupole mass spectrometer..
Regarding Claims 7
Claim 7 contains language similar to claim 1 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claim 7 are also rejected under 35 U.S.C. § 101(abstract idea).
Allowable Subject Matter
There is no prior art rejection over claim 1 and 7, however there is 101 rejection. The closets prior arts fail to teach the limitations of claims 1 and 7, e.g. “estimating a combination of a total number of carbon atoms and a total number of carbon-carbon double bond(s) in the acyl group in the target compound from the retention time, based on the following equations 1 and 2: N=f(T), T=t/Dm , in the equation 1, N represents the total number of carbon atoms in the acyl group, and f(T) represents a function that is derived from a homologue of a saturated compound corresponding to the target compound and that expresses a correlation between the total number of carbon atoms and the retention time; and in the equation 2, t represents the retention time, D represents a coefficient based on carbon-carbon double bond(s), and m represents the total number of carbon-carbon double bond(s)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
a) US 2025/0305999: disclose This movement of the packing material causes changes in the flow characteristics of the gas chromatograph 100 over time. These changes in flow characteristics cause changes in the flow rate of gas through the gas chromatograph, which in turn cause changes in the retention times of the individual gas components. Once a retention time of any individual component gas shifts out of its predefined range, the controller 108 is unable to accurately identify the gas and an alarm is provided. Service is required to recalibrate the timing of the valves and/or carrier gas pressure.
b) US 2025/0226061: disclose building the library of retention time trajectories by measuring a set of retention times for the group of known analytes under different conditions using a chromatograph and thereby forming measured sets of retention time trajectories; creating new sets of retention time trajectories by linearly combining retention time trajectories from the measured sets of retention time trajectories, and adding the new sets of retention time trajectories to the library of retention time trajectories.
c) US 10, 254,254: disclose separation liquid chromatograph system according to claim 3, wherein: the standard sample database section holds a computing equation for determining the preparative separation condition corresponding to the elution beginning time, from a retention time of each component and the elution beginning time, the retention time determined from the chromatogram data obtained by the liquid chromatograph analysis in the preparative separation condition searching mode performed for various standard samples; and the preparative separation condition determining section determines the retention time of each component in the target sample from the chromatogram data obtained by the liquid chromatograph analysis in the preparative separation condition searching mode performed for the target sample, and determines the preparative separation condition for the target sample from the retention time and the index, using the computing equation.
Contact information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD K ISLAM whose telephone number is (571)270-0328. The examiner can normally be reached M-F 9:00 a.m. - 5:00 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A Turner can be reached at 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOHAMMAD K ISLAM/ Primary Examiner, Art Unit 2857
Prosecution Insights