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 .
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 disapproved for the following reason(s). The person who signed the terminal disclaimer is not the applicant, patentee or an attorney or an agent on record. 37 CFR 1.321 (a) and (b). (See FP 14.26.08).
Explanation of Rejection
Response to Amendment
Applicant's arguments, see amendment filed on November 7, 2025 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 but they are not persuasive for the following reason below. The Examiner acknowledges the cancellation of claims 4, and 14-16. Claims 1-3 and 5-13 are pending in the application.
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.
Wherein 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.
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 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.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4 of U.S. Patent No.12,044,672. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With regard to claim 1: the instant claim 1 and claim 1 of U.S. Patent No. 12,044,672 are reproduced below to highlight the differences and similarities for the purposes of discussion. The similarities are in bold fonts and the differences are underlined.
Claim 1 of the instant application
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.
Claim 1 of U.S. Patent No. 12,044,672
A physical quantity estimating system configured to estimate a value of physical quantity for a composite material containing two or more materials belonging to 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 synthesized characteristic value of a first composite material whose value of physical quantity is unknown and first blending information including material names and a first blending ratio of the constituent materials contained in the first composite material are input, an approximate function for outputting the value of physical quantity for the first composite material;
a synthesized characteristic value calculating unit configured to calculate the first synthesized characteristic value of the first composite material based on the first blending ratio of the constituent materials contained in the first composite material and on first characteristic values corresponding to the constituent materials contained in the first composite material; and
a physical quantity estimating unit configured to estimate the value of physical quantity for the first composite material based on the first synthesized characteristic value, the first blending information, and the approximate function.
The representative of the two respective claim 1 are noted above. The similarities are highlighted with bold fonts and the differences are underlined for reference.
In the preamble of claim 1 of the instant application the use of the word “included” and claim 1 of U.S. Patent No. 12,044,672 uses the word “belong” in which both mean the same in the context of the claimed invention.
In the step of an approximate function generating unit, the instant claim 1 includes inputting “a first synthesis characteristic value of a first composite material whose value of physical quantity is unknown” whereas in claim 1 of U.S. Patent No. 12,044,672 this is also recited as being input and also “first blending information including material names and a first blending ratio of the constituent materials contained in the first composite material” are input, so the present limitation is met by the patented limitation.
In the step of a synthesized characteristic value calculating unit, the instant claim 1 includes “first related data corresponding to each of the constituent materials contained in the first composite material”, whereas claim 1 of U.S. Patent No. 12,044,672 recites “first characteristic values corresponding to the constituent materials contained in the first composite materials” which constitutes ‘related data’, so the present limitation is met by the patented limitation.
In the step of a physical quantity estimating unit, claim 1 of the instant application includes the limitation “on a basis of the first synthesis characteristic value and the approximate function” whereas claim 1 of U.S. Patent No. 12,044,672 estimates the value based on three factors which include “the first synthesized characteristic value, the first blending information, and the approximate function”, which meets the present limitation since the present limitation does not exclude other information (such as the first blending information) from being used, and the synthesized characteristic value is calculated based in part on the first blending information/ratio as well.
Claim 1 of the instant application is therefore not patentably distinct from claim 1 of U.S. Patent No. 12,044,672.
With regard to claim 3: the instant claim 3 is analogous to claim 1 of the instant application, and it is considered a narrower version of claim 1 of U.S. Patent No.12,044,672 in that it includes a related data storage unit configured to store a plurality data and a blending ratio input unit; however, these features would have been obvious generic computer components used to carry out the functions noted in claim 1 of U.S. Patent No.12,044,672 in order to have a processing system carry out the calculations in an efficient and accurate manner. Claim 3 of the instant application is therefore not patentably distinct from claim 1 of U.S. Patent No.12,044,672.
With regard to claim 4: the instant claim 4 is directed to a configuration of the approximate function generating unit which is met by the limitations of claim 2 of U.S. Patent No.12,044,672. Claim 4 of the instant application is therefore not patentably distinct from claim 2 of U.S. Patent No.12,044,672.
With regard to claim 5: the instant claim 5 is directed to having the constituent material having a resin and claim 4 of U.S. Patent No.12,044,672 recites a cross-linking process of resin. Claim 5 of the instant application is therefore not patentably distinct from claim 4 of U.S. Patent No.12,044,672.
Response to Argument
Applicant's arguments, see amendment filed on November 7, 2025 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 but they are not persuasive for the following reasons:
Double Patenting
The terminal disclaimer filed on November 7, 2025 is disapproved because the person who signed the terminal disclaimer is not the applicant, patentee or an attorney or an agent on record. 37 CFR 1.321 (a) and (b). (See FP 14.26.08).
Claim rejection under 35 U.S.C. §101
Applicant argued that “even if the part ‘generate an approximate function outputting the value of the physical quantity for the first composite material’ falls under the category of an ‘abstract idea’ the ‘approximation function generation unit’ itself is considered to be additional element that integrates the judicial exception (abstract idea) into a practical application ….Applicant respectfully submits that the claims of the present application do not fall under the alleged judicial exception” (see Argument, page 8/13, fourth paragraph ).
However, as noted above, such learning or machine learning process is considered generic because it simply applies known machine learning technique without a specific technical improvement to the machine learning process itself. Further, the basic or generic machine learning or learning process is fundamentally both a mathematical process and a mathematical model, relaying on statistics, linear algebra and calculus to analyze data. So, the instant application, having “an approximation function generator” itself is considered a generic element that would not integrate the judicial exception (i.e., abstract idea) into a practical application.
Applicants further argued that “the fundamental thought according to the present embodiment is an idea to estimate a value of a physical quantity for composite material by using an approximate function generated on basis of characteristic values (numerical values) of constituent materials constituting the composite material and blending ratio of the constituent materials” (see argument, page 10/13, 3rd paragraph).
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, the features mentioned in section A, starting on page 8, towards the end, and section B, staring page 9, second paragraph amounts to a computational analysis method using a mathematical model for the purposes of implementing an abstract concept through a generic learning model or mathematical abstract, often using some kind of statical analysis. The variable association simply not using “material names” but substituting using “a physical quantity” on the basis of “numerical values” of constituent materials …and blending ratio of the constituent material” does not change about the features noted in section A and B because the illustration proves that “using the approximate function according to the fundamental thought ….” the method extrapolates the characteristic value of the new constituent material based on “numerical values” of the constituent material and “the blending ratio” of the constituent material which is a mathematical model or analysis of some kind and or/ human thought process. Accordingly, the rejection of claims 1-3 and 5-13 under 35 U.S.C. §101 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/ELIAS DESTA/
Primary Examiner, Art Unit 2857