Prosecution Insights
Last updated: April 19, 2026
Application No. 17/918,581

SYSTEM FOR DETERMINING MATERIAL TO BE PROPOSED TO USER

Non-Final OA §101§103§112
Filed
Oct 13, 2022
Examiner
NEGIN, RUSSELL SCOTT
Art Unit
1686
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Hitachi, Ltd.
OA Round
1 (Non-Final)
56%
Grant Probability
Moderate
1-2
OA Rounds
4y 1m
To Grant
89%
With Interview

Examiner Intelligence

Grants 56% of resolved cases
56%
Career Allow Rate
504 granted / 899 resolved
-3.9% vs TC avg
Strong +33% interview lift
Without
With
+33.3%
Interview Lift
resolved cases with interview
Typical timeline
4y 1m
Avg Prosecution
45 currently pending
Career history
944
Total Applications
across all art units

Statute-Specific Performance

§101
25.1%
-14.9% vs TC avg
§103
36.9%
-3.1% vs TC avg
§102
7.4%
-32.6% vs TC avg
§112
18.0%
-22.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 899 resolved cases

Office Action

§101 §103 §112
DETAILED ACTION Comments The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis ( i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. Claims 1-11 are pending and examined in the instant application. Information Disclosure Statement The IDSs filed have been considered. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “random number element” in claim 8. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 112(b) - Indefiniteness The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 4-6 , 8 , and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 4, it is unclear as to what makes a material an available material versus an unavailable material. For the purpose of examination, an available material versus an unavailable material. The term “ similarity ” in each of claim s 4 , 6 , and 10 is a relative term which renders the claim indefinite. The term “ similarity ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear to the metes and bounds of what makes chemical formulas similar versus dissimilar . For the purpose of examination, it is interpreted that all chemical formulas are similar. Claim 8 recites a random number element that increase according to number of presentations of the candidate material. It is unclear as to metes and bounds of the overlooking risk evaluation value to be both based on a random number element and increasing according to number of presentations of the candidate material. For the purpose of examination, it is interpreted that the overlooking risk evaluation value increases according to number of presentations of the candidate material. Claim limitation “random number element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While paragraph 103 of the specification discloses a “random number element.” Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Applicant may: (a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; (b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or (c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)). If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either: (a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or (b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181. 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. Claim(s) 1-11 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea/law of nature/natural phenomenon without significantly more. Claims 1-10 are drawn to systems comprising processors, and claim 11 is drawn to a method. In accordance with MPEP § 2106, claims found to recite statutory subject matter ( Step 1 : YES ) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon ( Step 2A, Prong 1 ). In the instant application, the claims recite the following limitations that equate to an abstract idea: Claim s 1 and 11 recite the mental step of calculating an availability evaluation value indicating availability for a user of each of a plurality of materials based on a chemical formula of each of the plurality of materials. Claims 1 and 11 recite the mental step of estimating a physical property value of each of the plurality of materials based on a chemical formula of each of the plurality of materials. Claims 1 and 11 recite the mental step of calculating a physical property evaluation value of each of the plurality of materials based on a chemical formula of each of the plurality of materials. Claims 1 and 11 recite the mental step of calculating an overlooking risk evaluation value indicating priority of presenting each of the plurality of materials to the user based on the availability of presenting each of the plurality of materials to the user based on the availability evaluation value and the physical property evaluation value of each of the plurality of materials. Claims 1 and 11 recite the mental step of selecting a material to present as a candidate material for the plurality of materials according to the overlooking risk evaluation value. Claim 2 recites the mental step of storing a first database that stores information on a material for which a physical property value has been measured. Claim 2 recites the mental step of calculating the overlooking risk evaluation value further based on similarity between each of the plurality of materials and a chemical formula of the material for which the physical property value has been measured. Claim 3 recites the mental step of the physical property evaluation value being based on a probability that a physical property value of each of the plurality of materials becomes greater than or equal to a target value. Claim 4 recites the mental step of storing a second database that stores information on an available material and an unavailable material. Claim 4 recites the mental step of calculating an availability evaluation value of each of the plurality of materials based on similarities between chemical formulas. Claim 5 recites the mental step of receiving feedback information from a user for a presented candidate material. Claim 5 recites the mental step of storing the information on availability in the feedback information in the second database. Claim 6 recites the mental step of storing on a first database that stores information on a material for which a physical property value has been measured. Claim 6 recites the mental step of calculating the overlooking risk evaluation value further based on similarity between each of the plurality of materials and a chemical formula of the material for which the physical property value has been measured. Claim 6 recites the mental step requiring the feedback information to include a measured physical property value of at least a part of the presented candidate material. Claim 6 recite s the mental step of storing the measured physical property value in the feedback information in the first database. Claim 7 recites the mental step of in calculation of the overlooking risk evaluation value, a priority of the physical property evaluation value increases according to number of presentations of the candidate material. Claim 8 recites the mental step of requiring the calculation of the overlooking risk evaluation value is based on a random number element that increases according to number of presentations of the candidate material. Claim 9 recites the mental step of calculating a plurality of overlooking risk evaluation values by different mathematical formulas for each of the plurality of materials. Claim 9 recites the mental step of selecting a material to present as a candidate material from the plurality of materials based on the plurality of overlooking risk evaluation values. Claim 10 recites the mental step of excluding one of the materials in which the similarity of the chemical formula exceeds a threshold value. These recitations are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) and comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships. Therefore, these limitations fall under the “Mental process” and “Mathematical concepts” groupings of abstract ideas. Merely reciting that a mental process is being performed in a generic computer environment does not preclude the steps from being performed practically in the human mind or with pen and paper as claimed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then if falls within the “Mental processes” grouping of abstract ideas. As such, claim(s) 1-11 recite(s) an abstract idea/law of nature/natural phenomenon ( Step 2A, Prong 1 : YES ). Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not ( Step 2A, Prong 2 ). This judicial exception is not integrated into a practical application because the claims do not recite an additional element that reflects an improvement to technology or applies or uses the recited judicial exception to a ffect a particular treatment for a condition. Rather, the instant claims recite additional elements that amount to mere instructions to implement the abstract idea in a generic computing environment or mere instructions to apply the recited judicial exception via a generic treatment. As such, these limitations equate to mere instructions to implement the abstract idea on a generic computer that the courts have stated does not render an abstract idea eligible in Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. As such, claims 1-11 is/are directed to an abstract idea/law of nature/natural phenomenon ( Step 2A, Prong 2 : NO ). Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself ( Step 2B ). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that equate to mere instructions to apply the recited exc e ption in a generic way or in a generic computing environment. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. MPEP 2106.05(f) discloses that mere instructions to apply the judicial exception cannot provide an inventive concept to the claims. The additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the claims do not amount to significantly more than the judicial exception itself ( Step 2B : No ). As such, claims 1-11 is/are not patent eligible. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim (s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ullah et al. [Advanced Engineering Informatics, volume 22, 2008, pages 473-483; on IDS]. Claim 11 recites a method for determining a material to propose to a user, the system including one or more processors, and one or more storage devices that store programs to be executed by the one or more processors. The method comprises the processors calculating an availability evaluation value indicating availability for a user of each of a plurality of materials based on a chemical formula of each of the plurality of materials. The method comprises the processors estimating a physical property value of each of the plurality of materials based on a chemical formula of each of the plurality of materials. The method comprises calculating a physical property evaluation value of each of the plurality of materials is based on an estimation result of the physical property value of each of the plurality of materials. The method comprises calculating an overlooking risk evaluation value indicating priority of presenting each of the plurality of materials to the user based on the availability evaluation value and the physical property evaluation value of each of the plurality of materials. The method comprises selecting a material to present as a candidate material from the plurality of materials according to the overlooking risk evaluation value. Claim 1 is drawn to similar subject matter as claim 11, except claim 1 is drawn to a system with processors. The document of Ullah et al. studies an intelligent method for selecting optimal materials [title]. Figures 7 and 8 of Ullah et al. illustrate availability evaluation values and an estimate and calculation of physical properties based on compound or element labels which represent chemical formulas. Figures B.1, B.2, and B.3 on page 482 of Ullah et al. illustrate overlooking and selectable risk evaluation values indicating priority of presenting each of the plurality of materials. Ullah et al. does not teach computer processors. With regard to claims 2-4, Figures B.1, B.2, and B.3 on page 482 of Ullah et al. comprise databases with overlooking risk evaluation value s and probabilities (i.e. with target values such as low, moderate, and high) based on similarity between the materials and molecular formulas. With regard to claim s 5 -6 , Figure 5 of Ullah et al. provides a user interface to receive feedback and provide storage about the bioavailability of the materials. Figures B.1, B.2, and B.3 on page 482 of Ullah et al. comprise databases with overlooking risk evaluation values and probabilities (i.e. with target values such as low, moderate, and high) based on similarity between the materials and molecular formulas. With regard to claims 7-8, Figures 7 and 8 of Ullah et al. illustrate the overlooking risk value increasing according to a number of presentations of material. With regard to claim 9, page 476 of Ullah et al. teaches a plurality of different mathematical formulas. Figures B.1, B.2, and B.3 on page 482 of Ullah et al. illustrate overlooking and selectable risk evaluation values indicating priority of presenting each of the plurality of materials. With regard to claim 10, Figure 3 of Ullah et al. corresponds to Figure 5 of Ullah et al. with composites removed. It would have been obvious at the time of filing of the instant application to modify the materials analysis of Ullah et al. to be processed on a computer wherein the motivation would have been that automating manual tasks facilitates accuracy and efficiencies of the tasks. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) . E-mail Communications Authorization Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300): Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file. Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03. Conclusion No claim is allowed. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Russell Negin, whose telephone number is (571) 272-1083. This Examiner can normally be reached from Monday through Thursday from 8 am to 3 pm and variable hours on Fridays. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, Larry Riggs, Supervisory Patent Examiner, can be reached at (571) 270-3062. /RUSSELL S NEGIN/ Primary Examiner, Art Unit 1686 12 March 2026
Read full office action

Prosecution Timeline

Oct 13, 2022
Application Filed
Mar 12, 2026
Non-Final Rejection — §101, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
56%
Grant Probability
89%
With Interview (+33.3%)
4y 1m
Median Time to Grant
Low
PTA Risk
Based on 899 resolved cases by this examiner. Grant probability derived from career allow rate.

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