DETAILED ACTION
This Office Action is sent in response to Applicant’s Communication received 10/30/2025 for application number 17/707,053.
Claims 1-20 are pending.
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 .
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claims 1, 15, and 18 recite(s):
Claim 1: A machine learning (ML) system for material discovery, the ML system comprising: a processor; and a memory communicably coupled to the processor and storing machine-readable instructions that, when executed by the processor, cause the processor to: select a dataset representing at least a portion of a material space; train a machine learning model to learn a convex function approximating the dataset in a primal space; duality transform hyperplanes of the learned convex function from the primal space to a dual space; learn a convex hull of the duality transformed convex function hyperplanes in the dual space; duality transform at least one hyperplane of the learned convex hull back to the primal space; and predict, based on the at least one duality transformed hyperplane of the learned convex hull, at least one optimized material composition within the material space.
Claim 15: A machine learning (ML) system for reducing computation time needed for material discovery, the ML system comprising: a processor; and a memory communicably coupled to the processor and storing machine-readable instructions that, when executed by the processor, cause the processor to: select a dataset representing at least a portion of a material space; train a machine learning model to learn a convex function approximating the dataset in a first space; learn a first minimum of learned convex function in the first space; transform a subspace of the learned convex function from the first space to a second space, the first learned minimum in the first space being an endpoint in the second space; learn a second minimum of the subspace of the learned convex function in the second space; and predict, based at least in part on the first learned minimum and the second learned minimum a first optimized material composition and a second optimized material composition different than the first optimized material composition within the material space.
Claim 18: A method for material discovery comprising: selecting a dataset from a candidate dataset, the dataset representing at least a portion of a material space; training a machine learning model to learn a convex function approximating the dataset in a primal space; duality transforming hyperplanes of the learned convex function from the primal space to a dual space; learning a convex hull of the duality transformed convex function hyperplanes in the dual space; duality transforming at least one hyperplane of the learned convex hull back to the primal space; and predicting, based on the at least one duality transformed hyperplane of the learned convex hull, at least one stable material composition within the material space.
(2A, prong 1) The underlined portions of the claims recite an abstract idea, specifically mathematical calculations. The underlined portions of the claims recite a series of mathematical operations / calculations. “It is important to note that a mathematical concept need not be expressed in mathematical symbols, because ‘[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula.’ In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989),” See MPEP 2106.04(a)(2)(I).
(2A, prong 2) This judicial exception is not integrated into a practical application. The independent claims recite the additional elements of (1) generic computer components like a processor and memory, (2) selecting a dataset representing at least a portion of a material space, and (3) the claim preamble stating the invention is intended for material discovery. Additional element (1) is a mere instruction to apply the exception on a generic computer. Specifically, the recited memory and processor are merely generic computer components added after the fact to the abstract idea. See MPEP 2106.05(f). Additional element (2) insignificant extra-solution activity because it merely amounts to necessary data gathering for implementation of the abstract idea. Selecting a type of information for analysis is insignificant extra-solution activity. See MPEP 2106.05(g), citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). Additional element (3) is a field of use limitation because it merely indicates a field of use, material discovery, in which to apply the mathematical calculations. Even when all of the additional elements are considered together with the abstract idea, the claim as a whole is not integrated into a practical application because additional elements (1), (2), and (3) merely add instructions to apply the exception, insignificant extra-solution activity, and a field of use limitations to the mathematical calculations.
(2B) The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Additional element (1) is a mere instruction to apply the exception on a generic computer by adding generic computer components after the fact to the abstract idea. See MPEP 2106.05(f). Additional element (2) is well-understood, routine, and conventional activity analogous to “Receiving or transmitting data over a network,” Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321; 120 USPQ2d 1353, 1362 (Fed. Cir. 2016) and, “Storing and retrieving information in memory,” Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015). See MPEP 2106.05(d). Additional element (3) is a field of use limitation that indicates that the material discovery field of use is intended for the mathematical calculations. Even when all of the additional elements are considered together with the abstract idea, the claim as a whole does not amount to significantly more than the judicial exception because additional elements (1), (2), and (3) merely add instructions to apply the exception, insignificant extra-solution activity that is well-understood, routine and conventional, and a field of use limitation to the mathematical calculations. Overall, the additional elements merely specify the mathematical calculations are executed on generic computer hardware that receives data for the calculations, and are intended for material discovery, which does not add up to significantly more than the abstract idea itself.
With respect to dependent claims 2-5, 7-14, 16, and 19, (2A, prong 1) these claims recite additional mathematical calculations, and therefore they merely add to the recited abstract idea in the parent claims.
With respect to dependent claims 6, 15, and 20, these claims recite the additional limitation of, (3) “the dataset comprises formation energy versus composition data and the at least one optimized material composition is a stable single- phase material composition.”
(2A, prong 2). This additional limitation does not integrate the abstract idea into a practical application because it is a field of use limitation. Limiting the analyzed data to, “formation energy versus composition data,” and the prediction to, “a stable single-phase material composition,” only limits the use of the mathematical calculations to a type of material composition data. For example, limiting a mathematical formula to, “a process comprising the catalytic chemical conversion of hydrocarbons,” does not make a concept patentable. See Parker v. Flook, 437 U.S. 584, 586 198 USPQ 193, 196 (1978) and MPEP 2106.05(h). Even when all of the additional elements are considered together with the abstract idea, the claim as a whole is not integrated into a practical application because additional elements (1), (2), and (3) merely add instructions to apply the exception, insignificant extra-solution activity, and field of use limitations to the mathematical calculations.
(2B) This additional limitation does not amount to significantly more than the abstract idea itself because it is a field of use limitation that merely confines the use of the mathematical calculations to a particular type of data and field-of-use. See MPEP 2106.05(h). Even when all of the additional elements are considered together with the abstract idea, the claim as a whole does not amount to significantly more than the judicial exception because additional elements (1), (2), and (3) merely add instructions to apply the exception, insignificant extra-solution activity that is well-understood, routine and conventional, and field-of-use limitations to the mathematical calculations.
Response to Arguments
Applicant's arguments filed 10/30/2025 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues that the claimed invention provides an improvement to the technical field of materials discovery and provides an improvement by reducing computation time. The Examiner does not dispute that the claimed mathematical calculations would have the argued technical effect. However, “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception.” See MPEP 2106.05(a). In other words, an improved set of mathematical calculations alone cannot provide an improvement to technology; the improvement must come from additional elements in combination with the improved mathematical calculations. Here, however, the additional elements merely specify in the preamble that the invention is intended for materials discovery, and the specify the mathematical calculations are run on a generic computer that gathers data used for the mathematical calculations. These additional limitations, even when considered in ordered combination with the mathematical calculations, do not amount to significantly more than the abstract idea itself.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew T. Chiusano whose telephone number is (571)272-5231. The examiner can normally be reached M-F, 10am-6pm.
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/ANDREW T CHIUSANO/Primary Examiner, Art Unit 2144