DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10/29/25 has been entered.
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, 16- 21 and 27- 28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an without significantly more. The limitations, under their broadest reasonable interpretation, cover mental process (concept performed in a human mind, including as observation, evaluation, judgment, opinion). The claims recite a method for determining a location associated with a gemstone. This judicial exception is not integrated into a practical application because the steps do not add meaningful limitations to be considered specifically applied to a particular technological problem to be solved. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such.
According to the USPTO guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g., an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claims directed to an abstract idea as shown below:
STEP 1: Do the claims fall within one of the statutory categories?
YES. Claim 1 is directed to a method, i.e., process and claim 27 is directed to device i.e., an apparatus.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea?
YES, the claims are directed toward a mental process (i.e., abstract idea).
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The method in claim 1 comprise a mental process that can be practicably performed in the human mind therefore, an abstract idea.
Claim 1 recites:
(the detection to encompass observing a feature of interest as a human mental process as an abstract idea);
providing a plurality of training images of gemstones, each training image pertaining to a gemstone type among a plurality of types of gemstones (insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea);
for a given training image among said plurality, providing a training input including a label for a feature of interest associated with a given region of the gemstone type in the given training image (insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea); and
providing a training output identifying a specific gemstone type that is associated with the feature of interest pertaining to the label (insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea);
providing an input image of a given gemstone to the trained data model (insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea);
the method further comprises, implementing by the trained data model the steps of:
detecting at least one characteristic in the input image that corresponds to a feature of interest in the plurality of training images (a human can detect/ visually observe a characteristic (e.g., clarity, intensity, matt, etc.) in an image/ drawing as a mental process as an abstract idea);
determining that the at least one characteristic in the input image is associated with a label in the training input that corresponds to said feature of interest (a human can determine a region/ location (e.g., a ridge, vertices, etc.) in an image/ drawing based on another labeled/ annotated image/ drawing/ template as a mental process as an abstract idea);
identifying that the given gemstone in the input image is of the specific gemstone type associated with said label (a human can visually identify/ recognize a specific gemstone type (e.g., diamonds, rubies, sapphires, and emeralds, etc.) in an image/ drawing as a mental process as an abstract idea); and
providing an output including a representation of the respective feature of interest of the respective region pertaining to the identified specific gemstone type (insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea); and wherein,
based on the output representation, the method includes the step of determining a location on a corresponding region of the gemstone associated with the input image (a human can determine a region/ location (e.g., a ridge, vertices, etc.) in an image/ drawing as a mental process as an abstract idea).
These limitations, as drafted, is a simple process that, under their broadest reasonable interpretation, covers performance of the limitations in the mind or by a human. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper").
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
Because both product and process claims may recite a "mental process", the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim. The courts have identified numerous product claims as reciting mental process-type abstract ideas, for instance the product claims to computer systems and computer-readable media in Versata Dev. Group. v. SAP Am., Inc., 793 F.3d 1306, 115 USPQ2d 1681 (Fed. Cir. 2015).
As such, a person could determine a location associated with a gemstone mentally as an abstract idea. The mere nominal recitation that the various steps are being executed by one or more processors (e.g. processing unit) does not take the limitations out of the mental process grouping. Thus, the claims recite a mental process.
If a claim limitation, under its broadest reasonable interpretation, covers performance as a mental process, then it falls within the “mental steps” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
NO, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claims 1, 16- 21 and 27- 28 do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application.
Claim 1 recites:
“providing a plurality of training images of gemstones, each training image pertaining to a gemstone type among a plurality of types of gemstones” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“for a given training image among said plurality, providing a training input including a label for a feature of interest associated with a given region of the gemstone type in the given training image” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea; and
“providing a training output identifying a specific gemstone type that is associated with the feature of interest pertaining to the label” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“providing an input image of a given gemstone to the trained data model” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“providing an output including a representation of the respective feature of interest of the respective region pertaining to the identified specific gemstone type” as an insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea.
The “training a data model” (see the crossed-out limitation in claim 1, for example) is an additional element that does not integrate the abstract idea into a practical application - that the "training a data model" is just mere instructions to apply a judicial exception on a generic computer (see the computer implemented method in the preamble) as in MPEP 2106.05(f)
Claim 27 recites:
A computing device or system including one or more processors and a memory for storing a computer program, the one or more processors configured to execute (instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea).
These limitations are recited at a high level of generality. Further, the claims are claimed generically and are operating in their ordinary capacity such that they do not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Accordingly, even in combination, 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.
The “artificial neural network” (ANN) which appears as recited in claim 28 just stands in to automate a human mental process using a generic mathematical operation of convolution that has not been improved by the applicant.
Currently page 5 of the specification lists multiple exemplifications of the ANN and page 17 of the specification discloses “ANNs (including CNNs) are computational models inspired by biological neural networks and are used to approximate functions that are generally unknown. ANNs can be hardware (neurons are represented by physical components) or software-based (computer models) and can use a variety of topologies and learning algorithms. ANNs can be configured to approximate and derive functions without a prior knowledge of a task that is to be performed and instead, they evolve their own set of relevant characteristics from learning material that they process. A convolutional neural network (CNN) employs the mathematical operation of convolution in in at least one of their layers and are widely used for image mapping and classification applications.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
With regard to (2b) the Guidance provided the following examples of limitations that may be enough to qualify as “significantly more" when recited in a claim with a judicial exception:
Improvement to another technology or technical field
Improvement to functioning of computer itself and/or applying the judicial exception with, or by use of, a particular machine
Effecting a transformation or reduction of a particular article to a different state or thing.
Adding a specific limitation other that what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application
Meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment.
The Guidance further set forth limitations that were found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
Adding words to “apply it” (or an equivalent) with the judicial exception or mere instructions to implement abstract ideas on a computer
Simply appending well-understood, routine and conventional activities previously known to the industry specified at a high level of generality to the judicial exception, e.g. a claim to an abstract idea requiring no more than a generic
Computer to perform generic computer functions that are well -understood, routine and conventional activities previously known to the industry.
Adding insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 1, 16- 21 and 27- 28 do not recite any additional elements that are not well-understood, routine or conventional.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The above identified additional computer components, using instructions to apply the judicial exception, are merely generic computer components that are well-known, routine, and conventional as is evidenced by Bancorp Services v. Sun Life (Fed. Cir. 2012) and Alice Corp. v. CLS Bank (2014).
Claim 1 recites:
“providing a plurality of training images of gemstones, each training image pertaining to a gemstone type among a plurality of types of gemstones” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“for a given training image among said plurality, providing a training input including a label for a feature of interest associated with a given region of the gemstone type in the given training image” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea; and
“providing a training output identifying a specific gemstone type that is associated with the feature of interest pertaining to the label” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“providing an input image of a given gemstone to the trained data model” as an insignificant extra-solution activity to the judicial exception, e.g. mere data gathering in conjunction with a law of nature or abstract idea;
“providing an output including a representation of the respective feature of interest of the respective region pertaining to the identified specific gemstone type” as an insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea.
The “training a data model” (see the crossed-out limitation in claim 1, for example) is an additional element that does not integrate the abstract idea into a practical application - that the "training a data model" is just mere instructions to apply a judicial exception on a generic computer (see the computer implemented method in the preamble) as in MPEP 2106.05(f)
The “training a data model” (see the crossed-out limitation in claim 1, for example) is further well-known, routine, and conventional by the virtue of the factual evidences as follows:
Column 12 of 11720469 discloses “…In this embodiment, training data for the model may include routine performance data that may be received for common workloads or instruction sets by a processor core or its component macros. The training data may be collected from a single processor macro or a group of macros or multiple processor cores. The prediction results may be stored in a database so that the data is most current, and the output would always be up to date”.
[003] of 2022/ 0237411 discloses “Generally speaking, the conventional model training method is to continuously input training data into the model, and determine performance of the model based on an evaluation index”.
The “artificial neural network” (ANN) (see claim 28) is further well-known, routine, and conventional by the virtue of the specification and the factual evidences as follows:
Currently page 5 of the specification lists multiple exemplifications of the ANN and page 17 of the specification discloses “ANNs (including CNNs) are computational models inspired by biological neural networks and are used to approximate functions that are generally unknown. ANNs can be hardware (neurons are represented by physical components) or software-based (computer models) and can use a variety of topologies and learning algorithms. ANNs can be configured to approximate and derive functions without a prior knowledge of a task that is to be performed and instead, they evolve their own set of relevant characteristics from learning material that they process. A convolutional neural network (CNN) employs the mathematical operation of convolution in in at least one of their layers and are widely used for image mapping and classification applications.
Paragraph [0069] of the US PAP 2010/ 0323793 discloses “The user's head may be identified by one of a number of known techniques, including facial recognition by use of neural networks or Hidden Markov Models, or comparisons using Eigenfaces (where facial images are broken down into weighted Eigen components, with the pattern of weights being distinctive to an individual face). The head (as opposed to the face) may also be identified simply with respect to the body using known techniques such as skeletal modelling or template matching”.
Paragraph [004] of the US PAP 2020/ 0143245 discloses “In a conventional neural network, weights and output of neurons are all real numbers. A neural network may need Giga (10.sup.9) times of multiplication and addition operations in a forward propagation. As a result, although a large-scale neural network can have excellent performance at smart functions, such as object detection, human face recognition, image segmentation, target tracking, semantic segmentation, voice recognition, etc., neural networks are difficult to implement on platforms having limited resources and requiring a low power consumption (e.g., unmanned aerial vehicles, autonomous driving, robots, smart wearable devices, smart home appliances, smart phones, etc.)”.
Paragraph [0073] of the US PAP 2009/ 0141940 discloses “As a model within an embodiment of the present system is updated by changing the weights of its features or by adding new features, the model becomes more accurate in detecting and recognizing objects in an image. For example, in a facial recognition embodiment, a given character's or actor's appearance often changes over time, due to weight gain, hair loss, aging, or other similar reasons. Conventional facial recognition models are typically fixed models, and thus are only keyed to recognize the given actor as he or she appeared at a given point in time. With embodiments of the present system, however, each model is updated over time as new episodes or videos are released, and thus each model adapts and changes in response to changes in a given actor's appearance”.
Thus, since claim 1 is: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, claim 1 is not eligible subject matter under 35 U.S.C 101. Similar analysis is made for the dependent claims 16- 21 and 27- 28 and the dependent claims are similarly identified as: being directed towards an abstract idea, not reciting additional elements that integrate the judicial exception into a practical application, and not reciting additional elements that amount to significantly more than the judicial exception.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
It is initially noted that the applicant substantially repeats the arguments presented on 7/1/25. Accordingly, the responses provided on 7/30/25 are still applicable.
Regarding applicant’s remarks dated 10/29/2025, examiner responds as follows:
1)Applicant argues of the image processing as “impractical to perform in the human mind” due to the possibility of the claim recitations “may involve thousands of images to be processed”. Remarks at 8.
Initially examiner fails to see the “thousands of images” recitation to appear as recited in the claims. Applicant argues of some hypotheticals supra which may and / or may be the scenario. Claim 1 comprise of “a plurality of training images”, for example. The online Dictionary.com defines “plurality” as “a number greater than one”. And under the BRI (broadest reasonable interpretation) a human is clearly capable of performing said mental processes with the plurality of images (e.g., two or more images/ drawings). The analysis of the record (not repeated here for brevity) in the OA (office action) clearly reflects said interpretations and/ or claim analysis under the 35 USC 101 under the Alice/ Mayo two- part test under mental processes as an abstract idea.
2) Applicant argues of the similarities of the “training a data model to detect a characteristic associated with a feature of interest pertaining to a gemstones surface” of claim 1 and the USPTO Example 39 and states the present application “does not describe any mathematical relationship, calculations, or formulas and therefore does not recite an abstract idea” ; Applicant further argues “whether the data model is routine has no bearing on whether the claim limitation recites a judicial exception or integrates the alleged judicial exception into a practical idea”. Remarks at 8 -9.
In response examiner would note that “human mental process as an abstract idea.
As for the “training a data model”, under the Alice/ Mayo two- part test, the “training a data model” (see the crossed-out limitation in claim 1, for example) is an additional element that does not integrate the abstract idea into a practical application - that the "training a data model" is just mere instructions to apply a judicial exception on a generic computer (see the computer implemented method in the preamble) as in MPEP 2106.05(f). The “training a data model” (see the crossed-out limitation in claim 1, for example) is further well-known, routine, and conventional by the virtue of the factual evidences of the record.
Currently there are no parallels between the Example 39 (see the analogy of claim 39 in the background or the invention) and the claim recitations with current application.
3) Applicant argues of integration into practical application and states “All of the above listed limitations involve computerized steps using a trained data model as applied to an image to identify a location on a corresponding region of a gemstone associated with an input image. These steps, at minimum integrate the alleged abstract idea into a practical application. While the overly abstracted concept of determining a location associated with a gemstone might be an abstract idea capable of being performed in the human mind, the specific process stated in the claims is an improvement to the method that a human would utilize to perform the same process. Firstly, while a gemstone is a real object and a human determining a location on a gemstone would simply use the gemstone to determine the location, in the present application the real-life gemstone is captured or recorded in an image. That image may be a still image or a video image. Further, the claims include the process of training a data model on numerous images of different types of gemstones, gemstone features and prescribed labels to learn to identify new gemstones from images and identify features of interest in the new gemstone. Further, the claims recite using the image generated by the data model indicating the feature of interest on the region of the gemstone image to then identify the location on the real- life gemstone. Again, this is not the same process a human would use when determining a suitable location on a gemstone for marking the gemstone”. Remarks at 9- 10.
In response examiner would respectfully disagree.
Examiner would note that applicant admits to the “determining a location associated with a gemstone might be an abstract idea capable of being performed in the human mind” as listed supra as a mental process and contrary to the admission of the record argues of the same. Applicant argues of improvements to entail the steps traversed in claim 1, for example. However, as per the analysis and the interpretations of the record, under the Alice/ Mayo two- part test (not repeated here for brevity), the currently recited steps in claim 1 do not reflect the alleged improvements.
As per the alleged improvements, MPEP 2106.04(d)(1) states:
The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a). In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").
Accordingly, the examiner does not recognize, nor determine the claimed invention as providing an improvement as the alleged improvements are recited in conclusory manner/ a bare assertion of an improvement without the details necessary to be apparent to a person of ordinary skill in the art.
4) Applicant argues “It is indicated in the office action that “providing an output” is interpreted as insignificant extra-solution activity; however, the applicant respectfully disagrees with the interpretation. Without providing the output is part of the solution to the problem. The providing of the output includes providing “a representation of the respective feature of interest of the respective region pertaining to the identified specific gemstone type” of the newly analyzed gemstone images. Without providing the output there would be no ability to correlate the output provided representation to the actual gemstone. As stated above, the method recited in the claims is not simply the automation or computerization of the same method a human would perform, but is a computerized improvement to determining a location on a gemstone using steps that no human would take”. Remarks at 10 -11.
In response examiner would respectfully disagree.
Under the 35 USC 101 guidelines under the Alice/ Mayo two- part test, the alleged “solution to the problem” of “providing an output” does not qualify as eligible subject matter and is identified as (insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea).
The examiner further does not appreciate the applicant’s contentions as the current methodology is argued as not “automation or computerization” and yet is listed as a computerized improvement. Is it an improvement of the physical computer, the methodology, both, or something else.
The performance by the “computerized/ computerization” is merely automation of an otherwise human mental process.
MPEP 2106.05(a)(1) states:
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).
The identified additional elements (see the OA which is not repeated here for brevity) broadly read on generic computing devices. The following, controlling legal authorities are also applicable here:
See Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function-making calculations or computations-fails to circumvent the prohibition against patenting abstract ideas and mental processes.");
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (Explaining that merely "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."
citing Alice, 573 U.S. at 224 ("use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions" is not an inventive concept);
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) ("We ... look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.");
TLI Commc 'ns, 823 F.3d at 614 (holding generic computer components insufficient to add an inventive concept to an otherwise abstract idea);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.").
Accordingly, applicant merely offers mere allegations absent any substantiating rational and/ or rebuttal of the interpretations of the record in the body of the OA.
It should be noted that despite the allegations supra, the claims are examined for the improvements under the guidelines provided in the MPEP 2106.04(d)(1) as listed supra.
5) Applicant argues of the gemstones as “they also have practical importance in many fields such as, for example, the use of obsidian in making sharp knives and the use of diamonds in cutting or drilling. The differing properties of gemstones and their differing uses, means it is important that they are marked correctly and graded correctly (including the correct determination of locations of regions of gemstones”. Remarks at 11.
In response examiner does not appreciate what the applicant contends by the “practical importance/ important” (see the underlined portions supra) and what significance such “practical importance/ important” may and / or may not convey. Is it gemstones are “important” or is it the improvement aspect to the gemstones. In the event it may be the latter, examiner would point the portion of the MPEP 2106.04(d)(1) (reproduced supra) for the improvements.
As to the “cutting” aspect of gems, the online Wikipedia.org discloses “A gemstone desired to be used in jewelry is cut, carved or made into a bead. The best quality rough is cut, also often referred to as faceting. This is done by a lapidary who decides how to reshape the gemstone using knowledge of the refractive index of gemstones to maximise any particular crystal's colour or play of light.”.
The Wikipedia.org further discloses “Gemstones have no universally accepted grading system. Diamonds are graded using a system developed by the Gemological Institute of America (GIA) in the early 1950s. Historically, all gemstones were graded using the naked eye. The GIA system included a major innovation: the introduction of 10x magnification as the standard for grading clarity. Other gemstones are still graded using the naked eye (assuming 20/20 vision)”.
Accordingly, the processing/ cutting and the grading of the gems/ gemstones has long been and still remains a manual process performed by humans as noted supra.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Manuchehr Rahmjoo whose telephone number is 571-272- 7789. The examiner can normally be reached on 8 AM- 5 pm.
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Manuchehr Rahmjoo
/Manuchehr Rahmjoo/
Primary Examiner, AU 2667
Manuchehr.Rahmjoo@uspto.gov