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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
Priority
Current application, US Application No. 18/098,352 filed on 01/18/2023, claims foreign priority to JP 2022-017407, filed on 02/07/2022.
Examiner acknowledges that the certified copy of foreign priority document has been received. However, the certified English translation copy of the original foreign document, which is not written in English, has not been received. There is no requirement to submit certified English translation copy at this stage according to 37 CFR 1.55(g)(3). However, should the need of certified English translated copy arise according to the cases mentioned in 37 CFR 1.55(g)(3), submission may be requested in the future.
DETAILED ACTION
This office action is responsive to the amendment filed on 05/11/2026. Claims 1, 5-7 and 11-13 are currently pending. Claims 2-4 and 8-10 are canceled per applicant’s request.
Response to Amendment
Applicant's amendment is entered into further examination and appreciated by the examiner.
Response to Arguments/Remarks
Regarding remarks on the rejections under 35 USC 112(a), applicant’s arguments accompanied with amended claims are fully considered, but are not persuasive because of the following reasons.
Applicant argues (see pg. 8 par. 1 – pg. 10 par. 2, particularly from pa. 8 par. 3) that (a) the rejected limitations are similar to the claims originally filed at the time of filing current application and (b) the amendment, including equation (3) and expression (4), makes clear that the scope of the claims do not overreach the scope of the disclosure described in the specification.
Examiner respectfully submits that (a) reciting the originally filed claims only is not warranted to overcome the rejections in this new prosecution period because the claims are required to have proper description support from the specification no matter whether they are originally disclosed or not (see applicant’s own arguments – the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing [pg. 9 par. 1-2]) and (b) The recited equation (3) shows the relationship between
I
(
m
+
1
)
and
I
1
, which are intensities of mth sum peak and 0th sum peak (or main sum peak), respectively. The applicant calls
I
(
m
+
1
)
as predictive count value and
I
1
as main count value, and asserts that the equation (3) and expression (4) provides description support for the claimed limitation.
However, the equation (3) which provides a relationship between
I
(
m
+
1
)
and
I
1
, i.e. intensity ratio of m-th sum peak is proportional to the m-th power of the number of pulses. (see Tanaka – [pg. 9 eq. 3]) works only when a certain conditions, i.e. c >>1, c >>m and r <<1, are met. Applicant appears to remedy this deficiency by using a correction constant CoefMode, which is expressed by expression (4).
However, expression (4) lacks the description support from the specification because specification only mentions predetermined constants are used in the expression but fails to describe how the expression which includes the predetermined constants are derived. The specification also fails to provide meats and bounds of the recited predetermined constants. Therefore, the rejections are maintained.
Regarding remarks on the rejections under 35 USC 112(b), applicant’s arguments accompanied with amended claims are persuasive and the previous rejections are withdrawn. However, the amendment introduced new ambiguities and new rejections are issued. See the updated office action below.
Regarding remarks on the rejections under 35 USC 101, applicant’s arguments accompanied with amended claims are fully considered, but are partially because of the following reasons.
Applicant argues (see pg. 13 par. 1 - par. 3) that the amended claim 7 includes use of processors and recites the step of “performing at least one of a qualitative analysis and a quantitative analysis of the one or more elements constituting the sample based on the final spectrum”.
Examiner respectfully submits that merely using a computer as a tool to perform an abstract idea (see MPEP 2106.04(d) and 2106.05(f)) fails to integrate a judicial exception into a practical application. Therefore, the rejections are maintained for claims 7 and 11-13.
Regarding remarks on the rejections under 35 USC 102/103, applicant’s arguments have been accepted and the previous rejections are withdrawn..
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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention. As per claims 1 and 7, the limitation ”calculating a predictive count value of a sum peak, for each of one or more elements constituting the sample, using a count value and an energy value of characteristic X-rays in the initial spectrum, the count value being the number of counts of X-ray photons” and “wherein a count value in the initial spectrum includes a count value of the main peak of the initial spectrum, and
wherein the calculating the predictive count value includes using Equation (1 or 3) below:
I
(
m
+
1
)
=
c
∙
r
m
/
(
m
+
1
)
!
∙
I
1
∙
C
o
e
f
M
o
d
e
(
e
q
.
1
o
r
3
)
,
wherein "
I
(
m
+
1
)
" represents the predictive count value of the mth sum peak, "c" represents a count rate, "r" represents a peaking time, "I1" indicates the count value of a main peak in the initial spectrum, and "CoefMode" is expressed by Expression (2 or 4):
C
o
e
f
M
o
d
e
=
C
o
e
f
A
×
C
o
e
f
E
-
e
+
C
o
e
f
(
e
x
.
2
o
r
4
)
, wherein each of CoefA, CoefE, and Coef is a predetermined constant, and "e" represents an energy of characteristic X-rays of an element as a target of calculation of the predictive count value” lack the description support from the specification because the specification discloses the prediction of count value in a sum peak using the eq. 3 (see specification – [0056-0062] and excerpt snapshot below) by introducing CoefMode as shown in Ex 4, which depends on the energy of element’s X-ray characteristic, as an augmentation to equation 3 of the recited literature, Tanaka (Tanaka, Ryohei, and et al. "Artificial peaks in energy dispersive X‐ray spectra: sum peaks, escape peaks, and diffraction peaks." X‐Ray Spectrometry 46, no. 1 (2017): 5-11), hereinafter ‘Tanaka’.
Tanaka’s equation 3 includes variables obtained in the time domain, e.g. the number of pulses per second for c and r second (see Tanaka’s excerpt snapshot below – [pg. 8 par. 1 from the bottom – pg. 9 par. 3, Fig. 5]) with approximation for specified conditions.
Applicants introduce a constant CoefMode expressed in Ex. (4) to compensate the uncertainties of predicting count values, but fails to provide a description support from the specification how ex. (4) has been derived and how the uncertainties of predicting count values are overcome.
PNG
media_image1.png
399
552
media_image1.png
Greyscale
Snapshot of Tanaka’s theory of sum-peak
As per claims 5-6 and 11-13, claims are also rejected because base claims 1 and 7 are rejected.
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.
Claims 1, 5-7 and 11-13 are rejected under 35 U.S.C. 112(b) as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim. As for claims 1 and 7, the limitation “Expression (2):
CoefMode=CoefA ×(CoefE-e)+Coef (eq.2), wherein each of CoefA, CoefE, and Coef is a predetermined constant” is indefinite because each predetermined constants are recited without any specific details nor boundaries, failing to provides meats and bounds of the recited predetermined constants.
As per claims 5-6 and 11-13, claims are also rejected because base claims are rejected.
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 7-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, representative claim 7 recites:
“A data processing method of obtaining a final spectrum by processing an initial spectrum of a sample acquired by processing, by a first processor, an output of an X-ray detector, (7.A) the method comprising, by a second processor, the steps of:
calculating a predictive count value of a sum peak, for each of one or more elements constituting the sample, using a count value and an energy value of characteristic X-rays in the initial spectrum, the count value being the number of counts of X-ray photons; (7.B)
subtracting the predictive count value calculated for each of one or more elements constituting the sample from the count value of the initial spectrum to obtain the final spectrum;(7.C)
and performing at least one of a qualitative analysis and a quantitative analysis of the one or more elements constituting the sample based on the final spectrum, (7.D.1)
wherein a count value in the initial spectrum includes a count value of the main peak of the initial spectrum, and
wherein the calculating the predictive count value includes using Equation (3) below:
I
(
m
+
1
)
=
c
∙
r
m
/
(
m
+
1
)
!
∙
I
1
∙
C
o
e
f
M
o
d
e
(
e
q
.
3
)
, wherein "I(m+n)" represents the predictive count value of the mth sum peak, "c" represents a count rate, "r" represents a peaking time, "I1" indicates the count value of a main peak in the initial spectrum, and "CoefMode" is expressed by Expression (4):
C
o
e
f
M
o
d
e
=
C
o
e
f
A
×
C
o
e
f
E
-
e
+
C
o
e
f
(
e
x
.
4
)
, wherein each of CoefA, CoefE, and Coef is a predetermined constant, and "e" represents an energy of characteristic X-rays of an element as a target of calculation of the predictive count value. (7.D.2)”.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under the Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (Machine).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exception. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim limitation, that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations), and mental processes (concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion).
For example, highlighted limitations/steps (7.A) – (7.D.2) are treated by the Examiner as belonging to Mathematical Concept grouping or a combination of Mathematical Concept and Mental Process groupings as the limitations include Mathematical Calculations, or show Mathematical Relationship combined with optional Mental evaluations/judgements.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The above claims comprise the following additional elements: (Side Note: duplicated elements are not repeated)
In Claim 7: “A data processing method”, “a X-ray detector”, “a first processor” and “a second processor”;
As per claim 7, the additional element in the preamble “A data processing method” is not a meaningful limitation because the preamble generally links the method with an abstract idea. Although X-ray detector is recited, it is used only as describing where the output comes from and is not positively recited. Besides, the X-ray detector is a standard element in the art and is not particular. The limitations/elements “a first processor” and “a second processor” represent use of a standard general computer or computing systems in the art and they are not particular.
In conclusion, the above additional elements, considered individually and in combination with the other claim elements as a whole do not reflect an improvement to the computer technology or other technology or technical field, and, therefore, do not integrate the judicial exception into a practical application. No particular machine or real-world transformation are claimed. Therefore, the claims are directed to a judicial exception and require further analysis under the Step 2B.
Under Step 2B analysis, the above claims fail to include additional elements that are sufficient to amount to significantly more than the judicial exception as shown in the prior art of record.
The limitations/elements listed as additional elements above are well understood, routine and conventional steps/elements in the art according to the prior art of record. (See Murata, Ziegler, Hong and others in the list of prior art cited below)
Claims 7 and 11-13, therefore, are not patent eligible.
Allowable Subject Matter
Claims 1 and 7 recite subject matter which is allowable over the prior art, and would be allowable if rewritten or amended to overcome current objections and rejections.
The following is a statement of reasons for the indication of allowable subject matter: As per claims 1 and 7, the closest prior art of record, Murata (US 20250130184 A1 ), Ziegler (US 3146347 A), Hong (CN 209296943 U) and
Tanaka (Tanaka, Ryohei, and et al. "Artificial peaks in energy dispersive X-ray
spectra: sum peaks, escape peaks, and diffraction peaks." X-Ray Spectrometry 46, no.
1 (2017): 5-11), either singularly or in combination, fail to anticipate or render obvious limitations “calculating a predictive count value of a sum peak, for each of one or more elements constituting the sample, using a count value and an energy value of characteristic X-rays in the initial spectrum, the count value being the number of counts of X-ray photons” and “wherein a count value in the initial spectrum includes a count value of the main peak of the initial spectrum, and
wherein the calculating the predictive count value includes using Equation (1 or 3) below:
I
(
m
+
1
)
=
c
∙
r
m
/
(
m
+
1
)
!
∙
I
1
∙
C
o
e
f
M
o
d
e
(
e
q
.
1
o
r
3
)
,
wherein "
I
(
m
+
1
)
" represents the predictive count value of the mth sum peak, "c" represents a count rate, "r" represents a peaking time, "I1" indicates the count value of a main peak in the initial spectrum, and "CoefMode" is expressed by Expression (2 or 4):
C
o
e
f
M
o
d
e
=
C
o
e
f
A
×
C
o
e
f
E
-
e
+
C
o
e
f
(
e
x
.
2
o
r
4
)
, wherein each of CoefA, CoefE, and Coef is a predetermined constant, and "e" represents an energy of characteristic X-rays of an element as a target of calculation of the predictive count value” in combination with other limitations.
As per claim 1, Murata discloses
An X-ray fluorescence analyzer (apparatus 10, a fluorescence X-ray spectrometer [0064, Fig. 1]) comprising:
an X-ray detector configured to detect X-rays of a sample; Murata (radiation such as X-rays, a radiation detector [0002, 0064, Fig. 1], showing detector 1 and sample 6)
a processor configured to generate an initial spectrum of the sample by processing an output of the X-ray detector; (a first spectrum generation unit that generates a first spectrum [0031], generate a first spectrum [0110, Fig. 12], a processor, generate first spectrum [claim 26]))
and a processor configured to generate a final spectrum by performing removal processing for removing one or more sum peaks from the initial spectrum, (adequately remove sum peaks from the spectrum of radiation [0006], a first spectrum, a second spectrum … occurrence of sum peaks … are reduced [0032], a second spectrum generation unit [0113, Fig. 12], a processor, generate second spectrum [claim 26])
Although Murata discloses using the same processor for generating the first and final spectrum, Murata also discloses using multiprocessors (analysis device, multi-core CPU [0066, Fig. 2], the analysis device 3 may be configured with multiple computers [0068]), implying it is possible to possible to use different processors for different data processing.
Murata further discloses
wherein the removal processing includes:
calculating a predictive count value of a sum peak, for each of one or more elements constituting the sample, using a count value and an energy value of characteristic X-rays in the initial spectrum, the count value being the number of counts of X-ray photons; (number of counts … in the first range, first spectrum, sum peaks, the second spectrum has less peaks than the first spectrum, which shows that sum peaks are removed [0115. Fig. 13], in the second embodiment, one energy range, another energy range [0116])
and subtracting the predictive count value calculated for each of the one or more elements constituting the sample from the count value of the initial spectrum to generate the final spectrum, (corrected count number is calculated so that a value estimated … subtracted from the number of counts [0111], the second spectrum has less peaks than the first spectrum, which shows that sum peaks are removed [0115. Fig. 13]) and
wherein the processor is configured to perform at least one of a qualitative analysis and a quantitative analysis of the one or more elements constituting the sample based on the final spectrum. (analysis device 3 performs qualitative analysis or quantitative analysis on the elements in the sample based on the spectrum of the fluorescence X-ray [0092]).
However, Murata is silent regarding the above allowable limitations.
Ziegler discloses the count value decreases as the value of energy of the X-ray spectrum increases (the intensity of the generated X-ray spectrum from deceleration of electrons tends to increase with increasing bombarding energy, the response in the signal channel tends to decrease with an increasing setting on the lower threshold, and the overall response is one of a decreasing output count rate as a function of increasing energy [col 5 line 26-32]), but is silent regarding the above allowable limitations.
Hong discloses regarding identifying an offset value for energy using the initial spectrum and calculating spectral position corresponding to the peak in the initial spectrum (spectrum offset, the standard energy spectrum written is the initial stage, computed by convolution of the spectral position of a peak value, namely the peak position offset d [pg. 9 line 4-14]) and make the initial spectrum to be shifted by the offset value (correcting the offset to calculate, so that the finally obtained spectrum is the most accurate [pg. 9 line 17-18]), but is silent regarding the above allowable limitations.
Tanaka discloses calculating the predictive value includes calculating a product of the count value in the initial spectrum, a first coefficient, and a second coefficient ([pg. 9 eq. 3]), but is silent regarding the above allowable limitation.
A newly reviewed prior art reference, Grodzins (CN 102246025 A), discloses a (method of operating an x-ray fluorescence (XRF) analyzer to automatically suppress sum-peaks. The method includes irradiating a sample to acquire an initial energy spectrum. The energy spectrum is processed to identify a sum-peak that interferes with a characteristic fluoresced peak of an element of interest [abs], Although in the XRF field algorithm of estimating and peak count is known, but use of the algorithm brings uncertainty, this uncertainty increases instrument detection limit (LOD) of the element of interest and when interested elements with low content present, adversely affecting the apparatus reliably detects the presence of capability of the element of interest [0005], the controller 135 receives pulses generated by detector 115 and DSP 140 of, and processing and accumulating pulse on the analysis time to construct the initial energy spectrum. total assay time, sample radiation and emitting radiation detection and processing period, may through operator control to set a fixed value, or may be adjusted based on the estimated spectrum according to need ‘e.g., when count has been detected a specified number or has achieved a target Signal-to-noise ratio, terminating analysis’ [0026]), but is silent regarding the above allowable limitations.
As per claims 5-7 and 11-13, claims are also allowable because base and representative claim 1 is allowable.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS KAY whose telephone number is (408) 918-7569. The examiner can normally be reached on M, Th & F 8-5, T 2-7, and W 8-1.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen M Vazquez can be reached on 571-272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS KAY/Primary Examiner, Art Unit 2857
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