DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22-23 and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims recite “drilling at one or more vectors based on the displayed output,” but said limitations are not disclosed in the original disclosure. Specifically, the original disclosure in Paragraph [0064] (part which is reproduced below for convenience), discloses several potential uses, such as facilitating suggested vectors for future drilling and providing insights towards peripheral resource expansion (as intended use), but does not disclose actually drilling or performing the peripheral resource expansion, as claimed. In other words, the original disclosure discloses possession for evaluating for mineral resource evaluation to identify vectors, but not for actually performing the drilling as claimed.
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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.
4. Claims 14-20 and 24-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to two of the four statutory classes, apparatus and method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 8 (as a representative example), we recognize that the limitations “receiving drill hole samples from holes drilled into earth at the proposed mine or producing mine, interpolating using anisotropies, multi-element assay results from the drill hole samples into contiguous blocks that each model a volume of earth sampled by drilling, wherein each block has block values that represent properties of the block, and collections of blocks form block models; applying a multi-dimensional distance-based clustering algorithm to the block models that groups blocks based on one or more of size, concentration and surface area and physical location in space, to identify clusters of the blocks that make up enhanced zones that share common block values for one or more elements within each of multiple models, and which have block values that are anomalous to block values of one or more surrounding blocks, surrounding a space occupied by each the enhanced zones with a first wireframe, where a wireframe is a three-dimensional model in which lines or curves are used to define edges, receiving a culling threshold, wherein the culling threshold is a concentration or volume of an enhanced zone, culling the enhanced zone wireframes based on the culling threshold, determining an optimal anisotropy for ach elements from the culled enhanced zone wireframes by performing a statistical directional analysis on the first wireframes for each element, reducing the culled enhanced zone wireframes based on the optimal anisotropy for one or more elements to produce a subset of optimal enhanced zone wireframes, surrounding a space occupied by culled enhanced zone wireframes that overlap with one or more overlap wireframe, each representing a geochemical zone in which the elements is present, comparing properties of the geochemical zone within the one or more overlap wireframes to a database of mineral deposits and mineral deposit types and generating similarity rankings,” are abstract ideas as they involve a combination of mental process and usage of mathematical concept. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “a memory,” and “a processor”, but said limitations are merely directed to general-purpose computer for implementing the abstract idea. The claims recite “DRIVER software”, but said limitation is merely an insignificant labeling of the abstract idea. The claims also recite various limitations in regard to displaying, including “displaying, by the DRIVER software on a display device of the computing system environment, a three-dimensional (3-D) view of the block models to a user,” “displaying, by the DRIVER software on the display device, the culled enhanced zone wireframe to the user,” and “displaying, by the DRIVER software on the display device, an output that includes the overlap wireframe for each geochemical zone and the similarity rankings,” but said limitation is merely an insignificant post-solution activity of displaying the desired output from the usage of the abstract idea. The claim also recites, “for future drilling or peripheral resource expansion from the producing mine,” but said limitations are merely intended use of the claimed invention, and as such, do not integrate the abstract idea into a practical application. The claims do not improve the functioning of any device. The claims do not improve other technology. At most, the claims are an improvement in the abstract idea of mineral resource evaluation for future drilling at a proposed mine or for peripheral expansion from a producing mine. However, a new or improved abstract idea is still an abstract idea. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “a memory,” and “a processor”, but said limitations are merely directed to general-purpose computer for implementing the abstract idea that is well-understood, routine and conventional. The claims recite “DRIVER software”, but said limitation is merely an insignificant labeling of the abstract idea. The claims also recite various limitations in regard to displaying,” including “displaying, by the DRIVER software on a display device of the computing system environment, a three-dimensional (3-D) view of the block models to a user,” “displaying, by the DRIVER software on the display device, the culled enhanced zone wireframe to the user,” and “displaying, by the DRIVER software on the display device, an output that includes the overlap wireframe for each geochemical zone and the similarity rankings,” but said limitation is merely an insignificant post-solution activity of displaying the desired output from the usage of the abstract idea, that is also well-understood, routine and conventional. The claims also recite “for future drilling or peripheral resource expansion from the producing mine,” but said limitation involving directing is merely an intended use of the claimed invention, and not significantly more.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
With respect to the 112 rejection, the Examiner respectfully disagrees.
In regard to 112 rejection, the Examiner respectfully disagrees. To satisfy the written description requirement, a patent specification must describe the claimed invention in "sufficient detail" (including "how" in inventor's own particular way) that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. (See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” (see Lockwood vs American Airlines, 107 F.3d at 1572, 41 USPQ2d at 1966 (1997)).
Furthermore, for written description, the question is not about how one of ordinary skill in the art "could" carry out the invention or "predict" with a reasonable degree of confidence, but rather, the recognition of the "possession" by the inventor by one of ordinary skill in the art (see Martin vs Mayer, 823 F2d 500, 3 USPQ2d 1333 (CAFC 1987). Id., at 1337, Jepson vs Coleman 314 F2d 533 (CCPAA 1963), "It is not a question of whether one skilled in the art "might" be able to construct the patentee's device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device.”
In the instant application, with the original disclosure merely making the suggestion in regard to drilling as from one of the potential future actions, the original disclosure amounts to nothing more than a “wish” or “plan” for future action (see Ariad, Id., at 1179, “Rather, we held that original claim language to “a DNA coding for interferon activity” failed to provide an adequate written description as it amounted to no more than a “wish” or “plan” for obtaining the claimed DNA rather than a description of the DNA itself.” and Fiers vs Revel, 984 F2d 1164, 25 USPQ2d 1601, Id., at 1605 "As we stated in Amgen and reaffirmed above, such a disclosure just represents a wish or arguably a plan, for obtaining the DNA") and outlining of the goals (see In re Wilder, 736 F2d 1516, 222 USPQ 369, Id., at 372-373 “In our view the board correctly read the Objects of the Invention as doing little more than outlining goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate. But the invention that achieves these general objectives must still be described.). For these reasons, the 112 rejection is maintained
For the 101 rejection, the Examiner respectfully disagrees. In short, the claimed invention is directed to providing drilling interpretation and volume estimating, abstract ideas (that involves a combination of mental process of evaluating the data such as comparing, and mathematical concept, including interpolating and geometrical surface area and volume analysis), that are merely being implemented using a general-purpose computer. Further limitations are recited that involves displaying, but they are nonetheless insignificant post-solution activity of outputting the desired data, and is well-understood, routine and conventional. As such, the 101 rejection 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HYUN D PARK whose telephone number is (571)270-7922. The examiner can normally be reached 11-4.
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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