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 .
RCE
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 17, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on November 7, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No.12,044,672 has been reviewed and it is approved on April 9, 2026.
Response to Amendment
Applicant's arguments, see amendment filed on May 14, 2026 with respect to the rejection of claims 1-13 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., abstract idea) without significantly more, and the rejection of claims 1, 3, 4 and 5 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4 of U.S. Patent No.12,044,672 have been fully considered, the rejection under double patenting has been withdrawn in view of the terminal disclaimer and argument presented by the Applicant(s); however, the rejection under 35 U.S.C. 101 has been maintained for the reasons noted below. The Examiner acknowledges the cancellation of claims 4, and 14-16. Claims 1-3 and 5-13 are pending in the application.
Explanation of Rejection
Claim rejection – 35 U.S.C. §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.
In reference to claims 1-3 and 5-13: the claimed invention is rejected under 35 USC §101 because the claimed invention is directed to a judicial exception (i.e., abstract idea) without significantly more.
The requirement for subject matter eligibility test for products and processes requires first, the claimed invention must be to one of the four statutory categories. 35 U.S.C. §101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed).
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
In the first step, it is to be determined whether the patent claim under examination is directed to an abstract idea. If so, in the second step of analysis, it is to be determined whether the patent adds to the idea “something more” or "significantly more” that embodies an “inventive concept.”
In the instant case, claim 1 is representative and it is reproduced here with the limitations that are part of the abstract idea in bold:
A physical quantity estimating system for estimating a value of physical quantity for a composite material, the composite material containing two or more materials included in a plurality of different materials as constituent materials, the physical quantity estimating system comprising:
an approximate function generating unit configured to generate, when a first synthesis characteristic value of a first composite material whose value of physical quantity is unknown is inputted, an approximate function of outputting the value of the physical quantity for the first composite material;
a synthesis characteristic value calculating unit configured to calculate the first synthesis characteristic value of the first composite material on a basis of a first blending ratio of constituent materials contained in the first composite material and first related data corresponding to each of the constituent materials contained in the first composite material; and
a physical quantity estimating unit configured to estimate the value of the physical quantity for the first composite material on a basis of the first synthesis characteristic value and the approximate function group;
wherein the first related data are data in which a characteristic value of each of the constituent materials contained in the first composite material is associated with a value of physical quantity for each of the constituent materials contained in the first composite material,
wherein the approximate function generating unit is executed by a computer,
wherein the synthesis characteristic value calculating unit is executed by a computer,
wherein the physical quantity estimating unit is executed by a computer,
wherein the composite material is a resin composition including a resin and additives,
wherein the characteristic value includes a heat of fusion value, a melt flow rate value, a viscosity value of the resin, or a specific gravity value of the resin,
wherein the approximate function generating unit is configured to divide the numerical range of the physical quantity values into multiple ranges in synthesis related data where a synthesis characteristic value and the value of the physical quantity corresponding to the synthesis characteristic value are known, and
wherein the approximate function generating unit is configured to generate approximate functions specific to each of the multiple ranges, using the synthesis related data belonging to each of the multiple ranges as teacher data.
Step 2A:
Prong I: The claim recites the steps of “to generate … an approximate function of outputting the value of the physical quantity for the first composite material”, “to calculate the first synthesis characteristic value of the first composite material on a basis of a first blending ratio of constituent materials contained in the first composite material and first related data”, and “to estimate the value of the physical quantity for the first composite material on a basis of the first synthesis characteristic value and the approximate function”. These limitations could be carried out as a purely mental process (at least in a some relatively simple situations) and/or they could amount to a mathematical calculation (for example, “calculate the first synthesis characteristic value...”). Therefore, the recited method falls in the abstract idea grouping of mental processes and/or mathematical concepts at Prong 1 of the §101 analysis.
Prong II: This abstract idea is not integrated into a practical application at Prong 2 of the §101 analysis because the claim does not recite sufficient additional elements to integrate the abstract idea into a practical application. The claim recites the physical quantity estimating system comprising the additional element steps of "an approximate function generating unit”, “synthesis characteristic calculating unit” and “physical quantity estimating unit”. However, these units are nothing more than computational analysis algorithms or programs and they are generic in nature. Further, the amended claim 1(pre RCE) included the limitation “the approximation function generating unit learns approximation function using teacher data that is synthesis related data that associates synthesis characteristic values of the composite material with values of physical quantity for the composite material”; however, such learning or machine learning process is considered generic because it simply apply known machine learning technique without a specific technical improvement to the machine learning process itself.
Post RCE included “approximate function generating units”, “synthesis characteristic value calculating unit”, and “physical quantity estimating unit” as being implemented by a computer; and the characteristic values including a heat of fusion value, a melt flow rate value, a viscosity value of resin, or a specific gravity value of the resin. However, the computer is merely generic computer; and the characteristic values are simply values that are within the abstract idea of a human thought process as they are represented by values.
The courts have found that adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea (such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)) is not enough to integrate the abstract idea into a particular practical application or make the claim qualify as “significantly more” (see MPEP § 2106.05(g)). The recitation of inputting a first synthesis characteristic value of the first composite material whose value of physical quantity is unknown is merely a data gathering step of information necessary to carry out the abstract idea.
The claim recites units that are used to carry out the approximation, calculation, and estimation of the value of the physical quantity of the composite material; however, these units or algorithms are merely invoked as a tool to perform the abstract idea, which does not cause the claim as a whole to integrate the abstract idea into practical application or provide significantly more than the recited abstract idea (see MPEP 2106.05(b)).
The claim does not recite applying the abstract idea with, or by use of, any particular machine, nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing. The claim amounts to manipulating data: estimating the value of the physical quantity for the first composite material on the basis of the first synthesis characteristic value and the approximate value. Therefore, the claimed invention does not appear to be limited to the use of the mental process or math in a particular practical application, but instead the claim appears to monopolize the mental process or the computation itself, in any practical application where it might conceivably be used.
Step 2B:
Finally, at Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea for the same reasons as discussed above with regard to Prong 2. Claim 1 is rejected as ineligible under 35 USC §101.
Claim 3 is analogous to claim 1, except that claim 3 additionally recites having “a related data storage unit”, “a blending ration input unit”, and “output unit configured to output the value of the physical quality estimating by the physical quantity estimating unit”; however, these features do not change the above §101 analysis. Reciting the storage unit and output unit are additional elements separate from the abstract idea that need to be considered at Prong 2 of the §101 analysis. However, these additional elements are merely generic computer processing components that are invoked as a tool to perform the abstract idea, which do not cause the claim as a whole to integrate the abstract idea into a particular practical application or provide significantly more than the recited idea. Claim 3 is therefore rejected as ineligible under 35 USC §101 as well. Dependent claim 2 recites that “the first related data are data in which a characteristic value of each of the constituent materials contained in the first composite material”, which merely adds limitations to the abstract idea without reciting any further additional elements that would integrate the claim into a particular practical application.
Dependent claims 5-9 and 13: the instant claims are directed to general statements about the type of the material and the characteristics being considered. These merely add to the abstract idea without reciting any further additional elements that would integrate the claim into a particular practical application, and/or they merely recite features which are insufficiently specific as additional elements for them to integrate the claim into a particular practical application.
Dependent claim 10-12: the instant claim is directed to reciting broad types of constituent materials, reciting further calculations, and/or specifying details of the synthesis characteristic value. As in the above claims, these merely add to the abstract idea without reciting any further additional elements that would integrate the claim into a particular practical application, and/or they merely recite features which are insufficiently specific as additional elements for them to integrate the claim into a particular practical application.
Response to Argument
Applicant's arguments, see amendment filed on June 17, 2026 with respect to the rejection of claims 1-13 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., abstract idea) without significantly more have been fully considered but they are not persuasive for the following reasons:
Applicant argued that the post RCE “amended independent claims 1 and 3 are not directed to mental process [rather] the claims recite that “approximate function generating unit, synthesis characteristic value calculating unit, and physical quantity estimating unit” are all executed by a computer” (see argument, page 9/11, last paragraph).
However, the computer is merely generic computer; and the characteristic values are simply values that are within the abstract idea of a human thought process as they are represented by values.
Further, Applicant(s) argued also that “the present application recognizes the room for improvement in physical quantity estimation technique…” see argument, page 10/11, first paragraph).
However, implementing what is already abstract concepts, those which read on human thought process and mathematical algorithm, and carried out within the field of use appears to monopolize the mental process or the algorithm itself in any practical application where it might conceivably be used.
The concept of providing “for higher estimation accuracy for physical quantities for composite material” (as noted in the argument, page 10/11, last paragraph) still reside within the human thought process as these algorithms are simply implemented in a computational module. In other words, there is no significantly more than the abstract idea as noted Diamond v. Diehr (1981) in the United States Supreme Court decision that established a process can be patented, even if it incorporates a mathematical formula or computer program, provided it is part of a broader, practical, and physical transformation. In the instant case, the claims as drafted includes abstract idea without significantly more.
Estimating a value of “a physical quantity” on the basis of “numerical values” of constituent materials …and blending ratio of the constituent material” through a mathematical model of generic nature would not integrate the judicial exception (i.e., the abstract idea) into a practical application. Therefore. Accordingly, the rejection of claims 1-3 and 5-13 under 35 U.S.C. §101 is maintained.
Conclusion.
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/ELIAS DESTA/
Primary Examiner, Art Unit 2857
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