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 .
DETAILED ACTION
This office action is in response to the claims filed on 05/23/2024.
Claims 1-22 are presented for examination.
Response to Argument
In reference to applicant’s argument regrading rejections under 35 U.S.C. § 101:
Applicant’s Argument:
Applicant respectfully notes that claim 1 has been amended to recite "[a] method for searching a material having a targeted physical property using a high-throughput screening, the method comprising: performing a machine learning on a material model which is modeled based on a known material; determining a candidate material by inputting the targeted physical property to a result of the machine learning; and determining the material having the targeted physical property from the candidate material, wherein the performing the machine learning on the material model comprises: generating sample materials using the material model based upon an energy function havingfirst structure information, which is information on a structure of the known material, first physical property information, which is information on a physical property of the known material, information on a potential factor, and learning parameters; and updating the learning parameters of the energy function using the sample materials corresponding to the first structure information and first physical property information, wherein the learning parameter comprises at least one of a default value parameter on the structure of the known material, a default value parameter on the physical property of the known material, a default value parameter of the potential factor, a relationship parameter between the structure of the known material and the potential factor, and a relationship parameter between the physical property of the known material and the potential factor."
Applicant respectfully notes that under MPEP 2106.04(a)(1)(II), some claims reciting an abstract idea are not directed to the abstract idea because they also recite additional elements (such as an improvement) demonstrating that the claims as a whole clearly do not seek to tie up the abstract idea. In such claims, the improvement, or other additional elements, shifts the focus of the claimed invention from the abstract idea that is incidentally recited.
…
Under Memorandum dated August 4, 2025
(btts.:/wwwus;tO.ov/saes/cefault/tilshwocunnts/merno-7012025Q804..df), a claim does not recite a mental process when it contains limitations that cannot practically be performed in the human mind, for instance when the human mind is not equipped to performed the claim limitations. Claim limitations that encompass Al in a way that cannot be practically performed in the human mind do not fall within this grouping. Applicant respectfully notes that the claimed processes using a machine learning on a material model, and learning parameters of the energy function in a method for searching a material having a targeted physical property using a high-throughput screening (HTS) inherently require machine-executed learning algorithms and model updates, they cannot be practically performed by a human.
In response to the Examiner statement on pages 6-9 regarding Step 2A prong one Analysis, Applicant respectfully notes that the Examiner should consider the claim as a whole when performing the Step 2A analysis under MPEP 2106.04 (II). Applicant respectfully notes that claim 1 as a whole integrates the recited judicial exception into a practical application of the exception. That is, Applicant respectfully notes that high throughput screening (HTS) uses specific technical means (e.g., automated data acquisition, material libraries, statistical feature extraction) to improve the field of materials discovery, which is a recognized technological field.
Examiner’s Response:
Examiner respectfully disagrees to applicant’s argument since the claim is identified as the whole, such as, all of the claim limitation are identified under the step 2A prong 1: if the claim recites abstract idea, then the claim will be further identified under the step 2A prong 2 : if additional claim limitation is integrated into the practical application and step 2B: if the claim recite addition elements that amount to significant more than the judicial exception. Therefore, all of the claim limitations are identified as whole that does not recite an improvement of the machine learning model or an improvement of the functionality of the computer in the technology field.
As the analysis under the Step 2A prong 1:
The claim recites:
determining a candidate material by inputting the targeted physical property to a result of the machine learning” this a mental process, the human mind can determine the candidate material based on the result of the machine learning learn on the target physical property, for example, the builder can design to built the wall of the house based on the concrete material or the installation at the location has the tropical weather, wherein, particular location that has the tropical weather is classified as the result of the machine learning ,
-“and determining the material having the targeted physical property from the candidate material” this is a mental process, the human mind can determine material having the targeted physical property from the candidate material, for example, the builder can determine the concrete material based on the location has a tropical weather.
Additional claim limitations are further analyzed under Step 2A prong 2 and Step 2B:
“A method for searching a material having a targeted physical property using a high-throughput screening,” , “performing a machine learning on a material model which is modeled based on a known material”, “wherein the performing the learning on the material model comprises: generating sample materials using the material model based upon an energy function” “and updating the learning parameter of the energy function using the sample materials corresponding to the first structure information and first physical property information” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (high-throughput screening, machine learning model, energy function) to implement the abstract idea (See MPEP 2106.05(f)).
an energy function having first structure information, which is information on a structure of the known material, first physical property information, which is information on a physical property of the known material, information on a potential factor, and a learning parameter;, “wherein the learning parameter comprises at least one of a default value parameter on the structure of the known material, a default value parameter on the physical property of the known material, a default value parameter of the potential factor, a relationship parameter between the structure of the known material and the potential factor, and a relationship parameter between the physical property of the known material and the potential factor.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
Therefore, the claim recites the abstract idea (mental process) and the additional claim limitations are not integrated into the practical application and does not recite the amount that significant more than the judicial exception. Therefore, the claim is identified as the whole that does not recite the improvement of the machine learning model or the improvement of the functionality of the computer in the technology field.
Therefore, the applicant’s argument is not persuasive, the rejection is still maintained.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 analysis:
In the instant case, the claims are directed to a method (claims 1-11), device (claim 12-22). Thus, each of the claims falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
Step 2A analysis:
Based on the claims being determined to be within of the four categories (Step 1), it must be determined if the claims are directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), in this case the claims fall within the judicial exception of an abstract idea. Specifically the abstract idea of “Mental Processes/Concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”.
The claim 1 recites:
Step 2A: prong 1 analysis:
-“determining a candidate material by inputting the targeted physical property to a result of the machine learning” this a mental process, the human mind can determine the candidate material based on the result of the machine learning learn on the target physical property, for example, the builder can design to built the wall of the house based on the concrete material or the installation at the location has the tropical weather, wherein, particular location that has the tropical weather is classified as the result of the machine learning (observation/Evaluation).
-“and determining the material having the targeted physical property from the candidate material” this is a mental process, the human mind can determine material having the targeted physical property from the candidate material, for example, the builder can determine the concrete material based on the location has a tropical weather (observation/Evaluation)..
a) Step 2A: Prong 2 analysis:
“A method for searching a material having a targeted physical property using a high-throughput screening,” , “performing a machine learning on a material model which is modeled based on a known material”, “wherein the performing the learning on the material model comprises: generating sample materials using the material model based upon an energy function first structure information” “and updating the learning parameter of the energy function using the sample materials corresponding to the first structure information and first physical property information” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
- “an energy function having first structure information, which is information on a structure of the known material, first physical property information, which is information on a physical property of the known material, information on a potential factor, and a learning parameter”, “wherein the learning parameter comprises at least one of a default value parameter on the structure of the known material, a default value parameter on the physical property of the known material, a default value parameter of the potential factor, a relationship parameter between the structure of the known material and the potential factor, and a relationship parameter between the physical property of the known material and the potential factor.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
b) Step 2B analysis:
- A method for searching a material having a targeted physical property using a high-throughput screening,” , “performing a machine learning on a material model which is modeled based on a known material”, “wherein the performing the learning on the material model comprises: generating sample materials using the material model based upon an energy function first structure information” “and updating the learning parameter of the energy function using the sample materials corresponding to the first structure information and first physical property information” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
“an energy function having first structure information, which is information on a structure of the known material, first physical property information, which is information on a physical property of the known material, information on a potential factor, and a learning parameter”, “wherein the learning parameter comprises at least one of a default value parameter on the structure of the known material, a default value parameter on the physical property of the known material, a default value parameter of the potential factor, a relationship parameter between the structure of the known material and the potential factor, and a relationship parameter between the physical property of the known material and the potential factor.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself.
The claim 2 recites:
Step 2A: prong 1 analysis:
-“and determining whether to finish the learning based on an update result of the learning parameter." This is a mental process, the human mind can determine when to finish the learning based on the result of updated parameter, (Observation/Evaluation).
a) Step 2A: Prong 2 analysis:
- “wherein the performing the learning on the material model comprises:” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
b) Step 2B analysis:
- “wherein the performing the learning on the material model comprises:” This/these limitations is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
The claim 3 recites:
a) Step 2A: Prong 2 analysis:
-“wherein the first structure information comprises information on a partial structure in a molecular structure of the known material” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
b) Step 2B analysis:
-“wherein the first structure information comprises information on a partial structure in a molecular structure of the known material” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself.
The claim 4 recites:
a) Step 2A: Prong 2 analysis:
-“ wherein the first structure information comprises information on atoms in the molecular structure of the known material and information on a combination of the atoms.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
b) Step 2B analysis:
-“ wherein the first structure information comprises information on atoms in the molecular structure of the known material and information on a combination of the atoms.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself.
The claim 5 recites:
a) Step 2A: Prong 2 analysis:
-“ wherein the first structure information comprises two-dimensional image information on the molecular structure of the known material.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
b) Step 2B analysis:
-“ wherein the first structure information comprises two-dimensional image information on the molecular structure of the known material.” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself.
The claim 6 recites:
Step 2A: prong 1 analysis:
-“ resetting the learning parameter with a random value before the machine learning.” This is a mental process; the human mind can reset the learning material with a random value before the learning (Observation/Evaluation).
a) Step 2A: Prong 2 analysis:
- “wherein the performing the machine learning on the material model further includes” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
b) Step 2B analysis:
- “wherein the performing the machine learning on the material model further includes” This/these limitation is/are recited at high level of generality and amounts to no more than mere instructions to apply the judicial exception using a generic computer component (See MPEP 2106.05(f)).
The claim 7 recites:
Step 2A: prong 1 analysis:
-“ generating sample materials using the material model” this is a mental process, the human mind can generate the sample material, (Observation/Evaluation)
-“ determining a probability function of the material model from an energy function based on the first structure information, the first physical property information, and the learning parameter;” this is a mental process involves a math function, as the human mind can determine the probability function of a particular model based on another function (energy function ) and the learning parameter, (Observation/Evaluation) and (mathematical concept).
-“ and generating second structure information… and second physical property information,…based on the probability function of the material model.” this is a mental process involves a math function, the human mind can generate the second structure information and the second property information based on the probability function, (Observation/Evaluation).
a) Step 2A: Prong 2 analysis:
-“ second structure information, which is information on a structure of the material having the targeted physical property, and second physical property information, which is information on a physical property of the material having the targeted physical property” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception and that it does not integrate the judicial exception into a practical application.
b) Step 2B analysis:
-“ second structure information, which is information on a structure of the material having the targeted physical property, and second physical property information, which is information on a physical property of the material having the targeted physical property” This/these limitation(s) is/are amount to no more than generally linking the use of a judicial exception to a particular technological environment or 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 patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself.
The claim 8 recites:
Step 2A: prong 1 analysis:
-“wherein the updating the learning parameter comprises: updating the learning parameter based on a free energy function of the material model deduced based on the probability function and the energy function.” This is a mental process involve a math function, the human mind can update the parameter based on the energy function and the probability function, (Observation/Evaluation) and (mathematical concept).
Step 2A: Prong 2 analysis and Step 2B analysis
No additional element that provides a practical application or amount to significantly more than the abstract idea.
The claim 9 recites:
Step 2A: prong 1 analysis:
-“ wherein the updating the learning parameter based on the probability function and the free energy function comprises: updating the learning parameter by using a difference between the learning parameter and an objective function expressed as the free energy function.” This is a mental process involves a math function, the human mind can update the parameter based on the difference between the learning parameter and objective function, (Evaluation) and (mathematical concept).
Step 2A: Prong 2 analysis and Step 2B analysis
No additional element that provides a practical application or amount to significantly more than the abstract idea.
The claim 10 recites:
Step 2A: prong 1 analysis:
-“ wherein the objective function represents a function deduced from a differential expression of the probability function” this relates to a math function (mathematical concept).
Step 2A: Prong 2 analysis and Step 2B analysis
No additional element that provides a practical application or amount to significantly more than the abstract idea.
The claim 11 recites:
Step 2A: prong 1 analysis:
-“ wherein the determining the material having the targeted physical property among the candidate material comprises: verifying at least one of physical validity, and chemical stability the candidate material;” this is a mental process, the human mind can determine the material having the target physical property among the candidate material, and verify the physical validity and chemical stability (Observation/Evaluation)
“ and determining the verified candidate material from the candidate material to be the material having the targeted physical property.” This is a mental process, the human mind can determine the verified candidate material to the advanced material having the targeted physical property, (Observation/Evaluation)
Step 2A: Prong 2 analysis and Step 2B analysis
No additional element that provides a practical application or amount to significantly more than the abstract idea.
The claim 12 is rejected for the same reason as the claim 1, since these claims recite the same limitations.
The claim 13 is rejected for the same reason as the claim 2, since these claims recite the same limitations.
The claim 14 is rejected for the same reason as the claim 3, since these claims recite the same limitations.
The claim 15 is rejected for the same reason as the claim 4, since these claims recite the same limitations.
The claim 16 is rejected for the same reason as the claim 5, since these claims recite the same limitations.
The claim 17 is rejected for the same reason as the claim 6, since these claims recite the same limitations.
The claim 18 is rejected for the same reason as the claim 7, since these claims recite the same limitations.
The claim 19 is rejected for the same reason as the claim 8, since these claims recite the same limitations.
The claim 20 is rejected for the same reason as the claim 9, since these claims recite the same limitations.
The claim 21 is rejected for the same reason as the claim 10, since these claims recite the same limitations.
The claim 22 is rejected for the same reason as the claim 11, since these claims recite the same limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/E.T./Examiner, Art Unit 2128
/OMAR F FERNANDEZ RIVAS/Supervisory Patent Examiner, Art Unit 2128