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 .
Response to Arguments
Applicant's arguments received 04/23/2026 with respect to the claim eligibility have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 3-4 below in this Office Action.
Applicant’s arguments regarding the rejection under 35 USC 103 in reference to the amended claims are deemed persuasive. The corresponding rejection is therefore withdrawn.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-2 and 4-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a process (claim 6), machine (claim 1), or manufacture, which are statutory categories.
However, evaluating representative claim 1, under at Step 2A, Prong One, the claim is directed to the judicial exception of an abstract idea using the groupings of a mathematical relationship and mental processes. The claim limitations include:
an optical interference measuring unit including
a light source configured to irradiate a measurement target and a reference surface with electromagnetic beams, and
a detector configured to detect an interference signal between a reflected wave from a reflecting surface of the measurement target and a reflected wave from the reference surface, and configured to acquire an interferogram of an interference wave based on the interference signal; and
an electrical circuit configured to:
provide an intensity profile in a depth direction by performing a Fourier transform of the interferogram, wherein the electrical circuit is configured to perform filtering by setting a pass region as a predetermined region based on optical distance in the depth direction of the measurement target with respect to a measurement target installation position that is a surface position of the measurement target, and deleting data in regions other than the pass region from the intensity profile, and to
reconfigure an interferogram by performing an inverse Fourier transform of an intensity profile after the filtering, to remove periodic noise from the resulting interferogram and intensity profile.
The limitations in the abstract idea have been highlighted in bold above, the remaining limitations are “additional elements”. The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Specifically, under its broadest reasonable interpretation (BRI), the limitations in the bolded portion as listed above, including the newly added feature “to remove periodic noise from the resulting interferogram and intensity profile”, encompasses mathematical concepts (and also mental processes, i.e. data manipulation/evaluation that can be performed in the human mind, or by a human using a pen and paper), namely a series of calculations leading to one or more numerical results or answers. The claim does not spell out any particular equation or formula being used. The lack of specific equations for individual steps merely points out that the claim would monopolize all possible calculations in performing the steps. That is, other than reciting “an electrical circuit (e.g., a general-purpose microprocessor, see Applicant’s Spec. para. [0027]) configured”, nothing in the claim precludes the highlighted limitations in the bolded portion from practically being performed in the mind and/or using a pen and paper. According to the MPEP 2106.04(a)(2), if a claim limitation, under its broadest reasonable interpretation, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
Furthermore, under the BRI, the imitation “to perform filtering by setting a pass region (e.g., a window function, see Spec. para. [0087]-[0089]) as a predetermined region based on optical distance in the depth direction of the measurement target with respect to a measurement target installation position that is a surface position of the measurement target” encompasses mathematical concepts (e.g., bandpass filtering) which can be performed in the mind and/or using a pen and paper. The data characteristics of the pass region are nothing more than an attempt to generally link the use of the judicial exception to the relevant technological environment or field of use.
Step 2A, Prong Two evaluates whether additional elements of the claim “integrate the abstract idea into a practical application” in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In the instant case, the claim does not recite any additional elements that integrate the judicial exception into a practical application. The claim recites: “an optical interference measuring unit including a light source configured to irradiate a measurement target and a reference surface with electromagnetic beams, and a detector configured to detect an interference signal between a reflected wave from a reflecting surface of the measurement target and a reflected wave from the reference surface, and configured to acquire an interferogram of an interference wave based on the interference signal”. None of these elements is considered to be qualified for a significant or meaningful limitation because, at most, they only generally link the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, acquiring data based on existing known technologies (see the prior art teaching of an optical interference measuring unit including a light source configured to irradiate a measurement target and a reference surface with electromagnetic beams, and a detector configured to detect an interference signal between a reflected wave from a reflecting surface of the measurement target and a reflected wave from the reference surface, and configured to acquire an interferogram of an interference wave based on the interference signal, as set forth in the previous Office action) reads on merely a process of gathering the data/information necessary for performing the abstract idea. According to MPEP 2106.05(g)(3): … that were described as mere data gathering in conjunction with a law of nature or abstract idea. See also Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 13863, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). As such, it represents an extra-solution activity to the judicial exception.
At Step 2B, consideration is given to additional elements that may make the abstract idea significantly more.
In the instant case, as discussed above in Step 2A, there are no additional elements that make the claim significantly more than the abstract idea. The additional element of “irradiating a measurement target and a reference surface with electromagnetic waves and causing a reflected wave from a reflecting surface of the measurement target to interfere with a reflected wave from the reference surface” describes a conventional interferometer. Under the BRI, they are all well-understood, routine, conventional in the art (see discussion of the Seelamantula reference in sections 6-7 below and other prior art references cited in the previous Office Action), they do not provide any inventive concepts or reflect a qualified improvement. See MPEP 2106.05. Therefore, claim 1 is found to be ineligible under 35 U.S.C. 101.
Dependent claims 2 and 4-5 when analyzed individually and as a whole are held to be patent ineligible because the additional recited limitation(s) fail(s) to establish that the claim(s) amount to significantly more than the judicial exception. These claims inherit attributes of the independent claim 1, but do not add anything which would render the claimed invention a patent eligible application of the abstract idea. They merely extend (or narrow) the abstract idea which do not amount for "significant more" because they merely add details to the algorithm which forms the abstract idea as discussed above.
Claim 6 is rejected under 35 U.S.C. 101 for the same reason as for claim 1 discussed above.
Examiner’s Note
5. While there are related references that discuss optical interference measuring, the prior art of record does not specifically provide teachings for the claimed limitations including: wherein the electrical circuit is configured to perform filtering by setting a pass region as a predetermined region based on optical distance in the depth direction of the measurement target with respect to a measurement target installation position that is a surface position of the measurement target, and deleting data in regions other than the pass region from the intensity profile and to reconfigure an interferogram by performing an inverse Fourier transform of an intensity profile after the filtering, to remove periodic noise from the resulting interferogram and intensity profile, or performing filtering by the electrical circuit by setting a pass region as a predetermined region based on optical distance in the depth direction of the measurement target with respect to a measurement target installation position that is a surface position of the measurement target, and deleting data in regions other than the pass region target from the intensity profile; and reconfiguring an interferogram by performing an inverse Fourier transform of an intensity profile after the filtering, to remove periodic noise from the resulting interferogram and intensity profile. It is these limitations found in each of the claims 1-2, 4-5 or 6, as they are claimed in the combination recited in independent claim 1 or 6, that would make the pending claims 1-2, and 4-6 distinguish over the prior art of record. The claims would be allowable if they are rewritten to overcome the rejection under 35 USC 101 as set forth in sections 3-4 above in this Office action.
Conclusion
6. 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 extension fee 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 date of this final action.
Contact Information
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUQIN SUN whose telephone number is (571)272-2280. The examiner can normally be reached 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A. Turner can be reached on (571) 272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/X.S/Examiner, Art Unit 2857
/SHELBY A TURNER/Supervisory Patent Examiner, Art Unit 2857
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