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 .
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 final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/16/2025 has been entered.
Response to Amendments/Arguments
Applicant’s arguments, see Pages 7-14, filed 08/18/2025, with respect to the rejection(s) of claim(s) 41, 43-44, 49-50 and 54-55 under 35 USC 102(a)(2) and claim(s) 42, 45-48 and 51-53 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
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 41-55 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claim 41 is directed to a method of quantifying the proportion of a marked material that is present in a product and therefore falls within one of the statutory categories of invention (process).
Step 2A Prong One:
Regarding claim 41, the limitations:
“quantifying the proportion of a marked material that is present in a product”;
“(ii) identifying the marked material by the presence of a luminescent marker or combination of luminescent markers that are unique to the marked material based on spectroscopic data associated with the one or more luminescent markers and associating the product with a defined portion of the marked material, where a defined portion comprises a material from a particular location, producer or time frame”;
“(iii) based on spectroscopic data collected from the product, automatically selecting reference data associated with one or more reference materials comprising the marked material”;
“(iv) quantifying the proportion of the marked material that is present in the product based on said composite signal and said reference data”;
“using said additional spectroscopic data for determining the overall material composition of the product or determining the identity and/or quantity of the one or more materials mixed with the marked material”;
are all abstract ideas that fall in the mathematical concept and/or mental process grouping of abstract ideas.
Step 2A Prong Two:
Regarding claim 41, there are no additional elements recited in the claim that integrate the abstract ideas into a practical application. Specifically, the examiner finds that each of the following additional elements merely adds insignificant extra-solution activity to the abstract idea:
“obtaining a composite signal associated with the product, the composite signal including spectroscopic data collected from the product, the spectroscopic data associated with a luminescent signal of the one or more luminescent markers in the marked material;”
“wherein the method further comprises obtaining additional spectroscopic data different to spectroscopic data used in part”
Further, the examiner finds that each of the following additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use because they are merely an incidental or token addition to the claim that does not alter or affect how the process step of quantifying the proportion of a marked material that is present in a product is performed:
“wherein the product comprises a mixture of one or more materials and the marked material is a material that has been marked with one or more luminescent markers, the method comprising:”
“wherein the luminescent markers are present in the marked material in a known concentration that is associated with the identity of the marked material;”
“wherein the marked material comprises natural or synthetic fibres and the product is in the form of natural or synthetic fibres, yarn, woven or non-woven fabric made from synthetic or natural fibers: or wherein the marked material comprises recycled plastic and the product is in the form of pellets, extruded materials, moulded materials or shredded or ground plastic material.”
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For example, there is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Step 2B:
The examiner finds that the following additional elements are Well-Understood, Routine, Conventional Activity because as explained in MPEP 2106.05(d), they amount to receiving data which the courts have found to are Well-Understood, Routine, Conventional Activity:
(i) obtaining a composite signal associated with the product, the composite signal including spectroscopic data collected from the product, the spectroscopic data associated with a luminescent signal of the one or more luminescent markers in the marked material;
wherein the method further comprises obtaining additional spectroscopic data different to spectroscopic data used in part (ii);
Discussion of Dependent Claims:
Claims 42-55 do not recite any additional elements that integrate the abstract ideas into a practical application or amount to significantly more than the abstract ideas.
Conclusion:
The courts have decided that natural phenomena, laws of nature, and abstract intellectual concepts, such as mental processes and mathematical concepts, are not patentable, as they are the basic tools of scientific and technological work (Gottschalk v Benson, 409 U.S.63, 175 USPQ 673 (1972)). It is well established that the mere physical or tangible nature of additional elements, such as a data input or detection step, does not automatically confer eligibility on a claim directed to an abstract idea (see Alice Corp. Pty. Ltd. v CLS Bank, 573 US, 134 S. Ct. 2347, 110 USPQ.2d 1976 (2014)).
Therefore, for the reasons outlined above, claims 41-55 are not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHER YAZBACK whose telephone number is (703)756-1456. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571)270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAHER YAZBACK/Examiner, Art Unit 2877
/MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877