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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/17/2025 is being considered by the examiner.
Claim Objections
Claim1 is objected to because of the following informalities: claim 1 recites “performing a chemical synthesis via a computer…” and then “a software-based platform being hosted by a computer connected to a network.”. These appear to be the same computer as “the computer” is recited throughout the rest of the claim. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “a software-based platform” and “the platform”. Examiner is interpreting “the platform” to be “the software-based platform”. Appropriate correction is required. Claims 7-9 are objected to for reciting similar informalities.
Claim 1 is objected to because of the following informalities: “a desired organic target molecule” and “the target molecule”. Examiner is interpreting “the target molecule” to be “the desired organic target molecule”. Appropriate correction is required. Claims 2 and 6-9 recite and/or inherit the same deficiency of claim 1.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, Claim 1 recites the limitation "the chemical production plant" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claims 2-6 and 8-9 are also rejected for reciting similar limitations/inheriting the deficiencies of claim 1.
Regarding Claim 3, Claim 1 recites the limitation “the platform inventory”. There is insufficient antecedent basis for this limitation. For purposes of further prosecution, Examiner is interpreting “the platform inventory” to be an inventory of the inventories that the platform holds. Appropriate correction is required.
Regarding Claim 8, Claim 8 recites the limitation "the involved computers" in liens 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
(Non-Statutory Subject Matter)
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 8-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding Claims 8-9, claims 8-9 do not fall within at least one of the four categories of patent eligible subject matter because claim 8 recites “a computer program comprising…”. Claim 9 further recites “a computer-readable storage medium and/or data carrier signal having stored thereon the computer program of claim 8…”.
Claims 8-9 are directed to a “computer readable storage media” (CRSM). Under the broadest reasonable interpretation (BRI) in view of the state of the art, CRSM will cover an ineligible signal per se unless defined otherwise in the application as filed. The specification as filed does not define the “computer program” OR “computer-readable storage medium and/or data carrier signal” as excluding transitory signals or signals per se. Further, paragraph [0017] of Applicant’s Specification recites:
Only requirement for this computer program to perform the whole method as described is, that the used program and its respective hardware components are able to perform the method completely and automatically. Such a program can be stored on a Computer-readable storage medium and/or data carrier signal which cause the involved computers to carry out the previously disclosed method steps. The storage medium can be stored on any suitable digital memory like an usb drive, a harddisk, a flashdrive and so on. From that memory it can also be provided via remote communication means using respective data carrier signals, like Ethernet, wired or wireless, or any other suitable network transmission means, for transmitting the software to its target hardware.
This description, at best, leaves open ended the BRI of the computer program and computer readable storage device and fails to limit the BRI to only statutory subject matter.
Claims 8-9 are rejected because the BRI of claims 8-9 encompasses a signal per se, which is not one of the four statutory classes of invention. MPEP 2106.03(I) states that “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.” In accordance with MPEP 2111.01 under broadest reasonable interpretation and in view of the ordinary and customary meaning, the claimed computer program and computer-readable storage medium includes signals per se. Thus, the computer program and computer-readable storage medium is considered to be non- statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101, Aug 24, 2009, p. 2 The Examiner recommends that Applicant amend claims 8-9 to recite "A non-transitory computer-readable storage medium..." See MPEP 2106.03(I).
Claim Rejections - 35 USC § 101
(Subject Matter Eligibility)
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the eligibility analysis the claims are directed to statutory categories. MPEP 2106.03. Specifically, the method, as claimed in claims 1-6, is directed to the process. Additionally, the system, as claimed in claim 7 is directed to an apparatus. Finally, the computer program and computer-readable storage medium, as claimed in claims 8-9 is directed to a manufacture.
While the claims fall within statutory categories, under Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites the abstract idea of authorizing a redemption request. Specifically, representative claim 1 recites the abstract idea of:
Defining a desired organic target molecule to be produced;
Providing information describing the desired organic target molecule, holding inventories of chemical suppliers and the inventories comprises of information about synthetic reagents, like by-products and/or waste, needed for the chemical synthesis;
Routing the chemical synthesis, check the inventories for the necessary synthetic reagents to perform the chemical synthesis to produce the target molecule by comparing the information describing the desired organic target molecule and the information in the inventories and connects those chemical suppliers to the chemical production plant which provide the most suitable synthetic reagents according to the compared information.
Under Step 2A, Prong 1 of the eligibility analysis, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings enumerated in MPEP 2106.04(a). The abstract idea identified above is considered to be a certain method of organizing human activity. Certain methods of organizing human activity include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).”” MPEP 2106.04(a)(2)(II). In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because defining a desired product, providing information regarding the desired product, holding inventory information, and checking the inventory for necessary items to produce the product is a commercial or legal interaction because it is a sales activity and/or relates to business relations. Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2 of the eligibility analysis, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. MPEP 2106.04(d). The courts have identified limitations that did not integrate a judicial exception into a practical application include limitations merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). MPEP 2106.04(d). In this case, representative claim 1 includes additional elements such as a computer, software-based platform, computer connected to a network. Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant's specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., checking inventory) being applied on a general-purpose computer. See MPEP 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Under Step 2B of the eligibility analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). MPEP 2106.05. In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they are considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components...‘ad[d] nothing. ..that is not already present when the steps are considered separately’... [and] [v]iewed as a whole...[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Dependent Claims 2-6 do not aid in the eligibility of independent claim 1. For example, claims 2-6 merely further define the abstract limitations of claim 1.
Furthermore, it is noted that certain dependent claims include additional elements supplemental to those recited in independent claim 1: online marketplace platform (claim 4). However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using machinery that is operating in its ordinary capacity. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to no more than an instruction to apply the abstract idea using machinery as a tool to perform an existing process.
Claims 2-3 and 5-6, further define the same abstract idea noted in Claim 1 and do not recite any additional elements other than what is disclosed in Claim 1. Therefore, they are considered patent ineligible for the same reasons given above.
Thus, dependent claims 2-6 are also ineligible.
Claims 7-9 recites the same abstract idea represented in representative claim 1. Supplemental to Claim 1, Claim 7 recites the additional elements of a system, a service computer, and control computer, Claim 8 recites the additional elements of a computer program, and Claim 9 recites a computer-readable storage medium and/or data carrier signal. Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant's specification without any meaningful detail about their structure or configuration. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Under Step 2B of the eligibility analysis, the additional elements recited in claims 7-9 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. Even when considered as an ordered combination, the additional elements of claims 7-9 do not add anything that is not already present when they are considered individually. When viewed as a whole, claims 7-9 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 7-9 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Banatao et al. (US 2022/0101277).
Regarding Claims 1 and 7-9, Banatao discloses a method for performing a chemical synthesis via a computer comprising the following steps: (See at least paragraph [0003] disclosing method, system, and mediums, [0015] disclosing products may be identified that can be synthesized, [0020] disclosing computer, [0072] disclosing computer program product embodied in machine-readable storage medium)
Defining a desired organic target molecule of the chemical synthesis to be produced in the chemical production plant (See at least paragraph [0015] disclosing products identified that can be synthesized from intermediary chemicals and convert waste materials into one or more target products – end-to-end platform may direct waste feedstock to a chemical recycling facility for chemical conversion into a target product, [0034]-[0035] disclosing synthesis of target products, [0061], Fig. 4)
Providing information describing the desired organic target molecule to a software-based platform being hosted by a computer connected to a network, wherein the platform holds inventories of chemical suppliers and the inventories comprises of information about synthetic reagents, like by-products and/or waste, needed for the chemical synthesis (See at least Fig 4, paragraph [0023] disclosing computer systems communicating over network, [0027] disclosing execute material identification application to access chemical reaction inventory information describing products that may be generated by a chemical recycling process taking in the waste material as feedstock to then identify target products, [0029] chemical reaction modeling system, [0030] disclosing inputs including input molecules, output molecules, catalysts, reagents, solvents, etc., [0034]-[0036] disclosing inventory information and identifying receiver and sender facility and generating logistical information as well as disclosing supply/demands of products etc., [0038], [0051], [0059] disclosing additional inputs provided by exchange software which may provide a platform for interaction with a network of entities);
Routing the chemical synthesis via the computer, wherein the computer checks the inventories of the platform for the necessary synthetic reagents to perform the chemical synthesis to produce the target molecule by comparing the information describing the desired organic target molecule and the information in the inventories and connects those chemical suppliers to the chemical production plant which provide the most suitable synthetic reagents according to the compared information (See at least paragraphs [0006], [0034]-[0035], and [0059]-[0060] disclosing inventory information that may be stored and updated progressively that details material supply chains/supply and demand management, [0035] & [0059] disclosing producers of recyclable materials and produce chemical recycling intermediate materials, [0034] disclosing modification or selection of the chemical reaction schemas based on inputs…, [0035] disclosing the optimization engine may modify the target or desired products that serve as inputs to the chemical reaction modelling application using the inventory information, Fig 4);
Producing the desired organic target molecule in the chemical production plant with the provided synthetic reagents from the chemical suppliers chosen by the computer of the software based platform (See at least paragraph [0015] disclosing products identified that can be synthesized from intermediary chemicals and convert waste materials into one or more target products – end-to-end platform may direct waste feedstock to a chemical recycling facility for chemical conversion into a target product, [0034] disclosing modifying or selection of the chemical reaction schemas based on inputs…, [0035] disclosing the optimization engine may modify the target or desired products that serve as inputs to the chemical reaction modelling application using the inventory information).
Regarding Claim 2, Banatao discloses all of the limitations of claim 1. Additionally, Banatao discloses wherein the defining of the target molecule providing its information and organizing the production with the provided most suitable synthetic reagents form the chosen chemical suppliers is done either by at least one assigned user and/or by an automated system of the chemical production plant (See at least paragraph [0034] disclosing modification or selection of the chemical reaction schemas based on inputs, [0035] disclosing producers of recyclable materials and the optimization engine may modify the target or desired products that serve as inputs to the chemical reaction modelling application using the inventory information, [0059] disclosing produce chemical recycling intermediate materials).
Regarding Claim 3, Banatao discloses all of the limitations of claim 1. Additionally, Banatao discloses wherein the routing the chemical synthesis via the computer is done by providing additional information about specific required synthetic reagents needed for the chemical synthesis which are then searched for in the platform inventory by the computer of the platform or by creating new synthetic routes to the target molecule that prioritize specified synthetic reagents as starting materials, that are available in the platform inventory (See at least paragraph [0027] disclosing identification of the target products may be facilitated by accessing chemical recycling process data such as in a searchable table, [0028] disclosing user interface permits user to review the data and conduct search of potential chemical recycling products and indicate one or more desired products, [0029] disclosing chemical reaction data can be included in machine-searchable catalogue, [0030] disclosing inputs to the chemical reaction modeling application may include inputs such as reagents/parameters, [0042] disclosing searchable database label with unique identifier, [0043] disclosing search for specific materials, additives, or contaminant chemicals, [0051]).
Regarding Claim 4, Banatao discloses all of the limitations of claim 1. Additionally, Banatao discloses wherein as the software-based platform an online marketplace platform is used where industry customers can register as chemical suppliers or operators of chemical production plants and upload the inventories listing their by-products and/or waste which can be used as synthetic reagents for the chemical synthesis (See at least paragraph [0035] disclosing real-time exchange may connect recyclers, chemical companies, and other consumers or products or recyclable materials and real time exchange may implement inventory planning, supply and demand management, a recycled products marketplace, and logistics management – for example computer system may direct the waste material to a material recycling facility or other processing operation where the waste material may be converted to a target product and directing waste material may include identifying receiver and sender facilities and generating logistical information that may be provided to the receiver facility or the sender facility).
Regarding Claim 6, Banatao discloses all of the limitations of claim 1. Additionally, Banatao discloses wherein the information describing the target molecule and the information in the inventories comprise of chemical features of the synthetic reagents like chemical structures, CAS-numbers, chemical classes, amount and volumes of the synthetic reagents available and the type of presentation which can be either characterized, purified or blended (See at least paragraph [0005] disclosing characterization data of feedstock, [0015] disclosing chemical structure information, [0020] disclosing CAS number, [0021] disclosing types of characterization data, [0026] disclosing blended material information, [0030] disclosing phases, structures, and quantity information as well as residence time, reaction temperature, reaction pressure, or mixing rates/patterns, [0039], [0042]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banatao et al. (US 2022/0101277) in view of Gosko (US 2005/0283410).
Regarding Claim 5, Banatao discloses all of the limitations of claim 4. Additionally, Banatao discloses required synthetic reagents and chemical suppliers/chemical product plants (See at least paragraphs [0035], [0051]). Banatao does not expressly provide for wherein operators can set reminders for required products which are not available yet by the registered suppliers and the computer of the software-based platform informs the operators if the required products become available.
However, Gosko discloses wherein operators can set reminders for required products which are not available yet by the registered suppliers and the computer of the software-based platform informs the operators if the required products become available (See at least paragraph [0259] disclosing computer user may add and delete email addresses for recipients of notices related to stocking orders, inventory notifications, etc.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included reminders as taught by Gosko in the inventory system of Banatao because it would help better synchronize customer interaction with businesses specifically in configuring non-commodity items such as configuration options with their own systems. See Gosko paragraph [0010]-[0013].
Conclusion
The references cited in the form PTO-892 were not applied under relevant section §103 in the above Office Action, however, they are considered relevant to both claimed and unclaimed features of the instant invention. Applicant is herein advised to review the cited prior art references prior to responding to the instant Office Action in order to expedite prosecution of the instant application. For example:
NPL “Developing a chemical and hazardous waste inventory system” (Santos, J.E.R., Alfonso, F.N.N., Mendizabal Jr, F.C. and Dayrit, F.M., Developing a chemical and hazardous waste inventory system, 2011, Journal of Chemical Health and Safety, 18(6), pp.15-18.) disclosing a chemical inventory system that can be easily accessed and used to help facilitate the inventory, purchase, storage, and waste management and disposal of chemicals.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY E BARGEON whose telephone number is (571)272-2861. The examiner can normally be reached Monday-Friday 9:00am to 6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.E.B/Examiner, Art Unit 3688
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689
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