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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/3/2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the X-ray detector and the rubber material must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 applicant regards as his invention.
Claims 7-9 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.
Claim 7 recites the limitation "the entire rubber material" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the entire rubber material" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
Considering claim 9, the evaluating step requires the use of measurements taken from “the rubber material”, but the measuring steps is applied to “an entire rubber material”. It is unclear if the evaluation is using the measured elements from the entire rubber material or a portion of the entire rubber material.
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 1-3, 6-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Considering the method of claim 1, the claim is directed to the abstract idea of “evaluating a percentage of void…” in a rubber material as calculated from an equation, which is purely a mathematical concept, which cites a specific mathematical equation, that can also be calculated in the mind.
It is noted that the claim additionally contains the phrase “the evaluation step comprises determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the rubber material”. On its face, this phrase appears to be both an intended use or implied outcome and an abstract idea akin to a mathematical concept, whereby “determining the percentage” is considered mathematical. However, a review of the specification, finds in [0009] of the originally filed specification, at best, that the quantitative evaluation being referred to is simply another way of restating the original evaluation step. The use of the equation is the means by which the step of “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector”, and as such, no additional step is taken during the evaluation step. Accordingly, the claim limitation is not considered an additional element.
The claim contains additional elements of measuring a transmittance and a thickness of a rubber material with no strain applied thereto and a transmittance and a thickness of the rubber material with strain applied thereto based on X-ray detection data detected from an X-ray detector.
This judicial exception is not integrated into a practical application because the additional elements, taken alone, are considered well-known insignificant extra-solution activity as being related to data gathering. In accordance with MPEP 2106.05(g), the collected measured transmittance and thickness, both without and with strain applied to a rubber specimen is similar to the that which was found by the courts to be necessary data gathering, whereby all uses of the claimed equation would require the necessary inputs claimed. See also, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). In combination, the data is gathered in ordinary fashion, using generic X-ray detectors and then manipulated, via a seemingly mental process or even by unknown computing means, to provide the desired output, in accordance with the use of the claimed equation.
In combination, the additional element of measuring the transmittance and thickness with and without strain, combined with the claimed evaluation equation, has not improved the art of X-ray detectors. The X-ray detector does not better detect X-rays based on the data manipulation that occurs after it has been collected. The additional elements do not amount to a particular machine for applying the abstract idea. No transformation of the rubber or X-rays into a different state of thing has occurred through the combination. The equation has not been utilized in a manner that goes meaningfully beyond its general link to the technological environment of analyzing voids in rubber.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because appending mere data gathering steps, considered extra-solution activity, to an abstract idea has been found by the courts to not be sufficiently more than the abstract idea itself, see MPEP 2106.05(I)(A).
Considering the additional element of measuring the transmittance and thickness of a rubber material specimen with and without strain applied thereto through X-ray detector data, this is considered well-known, routine, and conventional in the art. Zhang et al., cited by the Applicant in the specification, and submitted via IDS on 5/2/2023, contains a discussion of the measurement of X-ray transmittance (IC1/IC2) through, and a thickness of, a rubber sample that is undeformed and a measurement of X-ray transmittance through, and a thickness of, a rubber sample that is uniaxially strained in Equation (4) and pages 1531-1532, as well as the abstract. Therefore, the additional elements are considered well understood, routine and conventional in the art.
Thus, taken individually or in combination, the additional elements do not amount to significantly more than the abstract idea because the well-known, routine and conventional collection of transmittance and thickness data of a rubber sample, both unstrained and strained, used as necessary data-gathering for performing the abstract idea, has been found by the courts as not sufficiently more than the abstract idea itself, according to MPEP 2106.05(g).
Considering claim 2, the limitation “the thickness…is calculated” amounts to an abstract idea because it is a mathematical concept; an explicit calculation is being claimed. Based on MPEP 2106.04(II), because the only additional elements added in this claim are themselves an abstract idea, they are not sufficient to integrate the abstract idea into a practical application or significantly more than originally presented judicial exception, see also RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017). Therefore, individually, or in an ordered combination, the additional elements of the mathematical concepts of claim 2 fail to integrate the abstract idea of claim 1 into a practical application or amount to significantly more than the abstract idea already discussed in claim 1.
Considering claim 3, the recitation of the strain being an elongational strain is considered an additional element that modifies the measuring step of claim 1.
The judicial exception of claim 1 is not integrated into a practical application because the additional elements of claim 3, taken alone, are considered well-known insignificant extra-solution activity as being related to data gathering. In accordance with MPEP 2106.05(g), the collected measured transmittance and thickness, both without and with an elongational strain applied to a rubber specimen is similar to the that which was found by the courts to be necessary data gathering, whereby all uses of the claimed equation would require the necessary inputs claimed. See also, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). In combination, the data is gathered in ordinary fashion, using generic X-ray detectors and then manipulated, via a seemingly mental process or even by unknown computing means, to provide the desired output, in accordance with the use of the claimed equation.
In combination, the additional element of measuring the transmittance and thickness with and without elongational strain, combined with the claimed evaluation equation, has not improved the art of X-ray detectors. The X-ray detector does not better detect X-rays based on the data manipulation that occurs after it has been collected. The additional elements do not amount to a particular machine for applying the abstract idea. No transformation of the rubber or X-rays into a different state of thing has occurred through the combination. The equation has not been utilized in a manner that goes meaningfully beyond its general link to the technological environment of analyzing voids in rubber.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because appending mere data gathering steps, considered extra-solution activity, to an abstract idea has been found by the courts to not be sufficiently more than the abstract idea itself, see MPEP 2106.05(I)(A).
Considering the additional element of measuring the transmittance and thickness of a rubber material specimen with and without elongational strain applied thereto through X-ray detector data, this is considered well-known, routine, and conventional in the art. Zhang et al., cited by the Applicant in the specification, and submitted via IDS on 5/2/2023, contains a discussion of the measurement of X-ray transmittance (IC1/IC2) through, and a thickness of, a rubber sample that is undeformed and a measurement of X-ray transmittance through, and a thickness of, a rubber sample that is uniaxially elongationally strained in Equation (4) and pages 1531-1532, as well as the abstract. Therefore, the additional elements are considered well understood, routine and conventional in the art.
Thus, taken individually or in combination, the additional elements do not amount to significantly more than the abstract idea because the well-known, routine and conventional collection of transmittance and thickness data of a rubber sample, both unstrained and elongationally strained, used as necessary data-gathering for performing the abstract idea, has been found by the courts as not sufficiently more than the abstract idea itself, according to MPEP 2106.05(g).
Considering claim 6, the recitation of the rubber containing a filler is considered an additional element.
However, the type of material being acted upon in the method of claim 1 appears to be no more than a general linking of use of the abstract idea to a particular technological environment of field of use, as discussed in MPEP 2106.05(h). The courts have held that a general linking is not enough to integrate the abstract idea into a practical application and is not significantly more than the abstract idea itself.
Furthermore, Zhang et al., cited by the Applicant in the specification, and submitted via IDS on 5/2/2023, contains a discussion of the measurement of X-ray transmittance (IC1/IC2) through, and a thickness of, a rubber sample, having a filler (Abstract, CB-SBR), that is undeformed and a measurement of X-ray transmittance through, and a thickness of, a rubber sample that is uniaxially strained in Equation (4) and pages 1531-1532, as well as the abstract. Therefore, the additional elements are considered well-understood, routine and conventional in the art. The abstract idea itself, and the claim as a whole, is not meaningfully limited by the type of rubber being used in the pre-solution data-gathering measurements.
Considering claim 7, it is noted that the claim contains the phrase “the evaluation step comprises determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the entire rubber material”. On its face, this phrase appears to be both an intended use or implied outcome and an abstract idea akin to a mathematical concept, whereby “determining the percentage” is considered mathematical. However, a review of the specification, finds in [0009] of the originally filed specification, at best, that the quantitative evaluation being referred to is simply another way of restating the original evaluation step. The use of the equation is the means by which the step of “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector”, and as such, no additional step is taken during the evaluation step. Accordingly, the claim limitation is not considered an additional element.
Considering claim 8, the claim contains the additional element of measuring a transmittance and a thickness of the entire rubber material with no strain applied thereto and a transmittance and a thickness of the entire rubber material with strain applied thereto based on X-ray detection data detected from an X-ray detector.
This judicial exception is not integrated into a practical application because the additional elements, taken alone, are considered well-known insignificant extra-solution activity as being related to data gathering. In accordance with MPEP 2106.05(g), the collected measured transmittance and thickness, both without and with strain applied to a rubber specimen is similar to the that which was found by the courts to be necessary data gathering, whereby all uses of the claimed equation would require the necessary inputs claimed. See also, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). In combination, the data is gathered in ordinary fashion, using generic X-ray detectors and then manipulated, via a seemingly mental process or even by unknown computing means, to provide the desired output, in accordance with the use of the claimed equation.
In combination, the additional element of measuring the transmittance and thickness with and without strain, combined with the claimed evaluation equation, has not improved the art of X-ray detectors. The X-ray detector does not better detect X-rays based on the data manipulation that occurs after it has been collected. The additional elements do not amount to a particular machine for applying the abstract idea. No transformation of the rubber or X-rays into a different state of thing has occurred through the combination. The equation has not been utilized in a manner that goes meaningfully beyond its general link to the technological environment of analyzing voids in rubber.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because appending mere data gathering steps, considered extra-solution activity, to an abstract idea has been found by the courts to not be sufficiently more than the abstract idea itself, see MPEP 2106.05(I)(A).
Considering the additional element of measuring the transmittance and thickness of an entire rubber material specimen is considered well-known, routine, and conventional in the art. Lorenz-Haas et al. (NPL) discloses the technique of performing scanning small-angle X-ray scattering over a sample by moving the sample (Page 3057). Therefore, the additional elements are considered well understood, routine and conventional in the art.
Thus, taken individually or in combination, the additional elements do not amount to significantly more than the abstract idea because the well-known, routine and conventional collection of transmittance and thickness data of an entire rubber sample, both unstrained and strained, used as necessary data-gathering for performing the abstract idea, has been found by the courts as not sufficiently more than the abstract idea itself, according to MPEP 2106.05(g).
Considering the method of claim 9, the claim is directed to the abstract idea of “evaluating a percentage of void…” in an entire rubber material as calculated from an equation, which is purely a mathematical concept, which cites a specific mathematical equation, that can also be calculated in the mind.
It is noted that the claim additionally contains the phrase “the evaluation step comprises determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the entire rubber material”. On its face, this phrase appears to be both an intended use or implied outcome and an abstract idea akin to a mathematical concept, whereby “determining the percentage” is considered mathematical. However, a review of the specification, finds in [0009] of the originally filed specification, at best, that the quantitative evaluation being referred to is simply another way of restating the original evaluation step. The use of the equation is the means by which the step of “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector”, and as such, no additional step is taken during the evaluation step. Accordingly, the claim limitation is not considered an additional element.
The claim contains additional elements of measuring a transmittance and a thickness of an entire rubber material with no strain applied thereto and a transmittance and a thickness of the rubber material with strain applied thereto based on X-ray detection data detected from an X-ray detector.
This judicial exception is not integrated into a practical application because the additional elements, taken alone, are considered well-known insignificant extra-solution activity as being related to data gathering. In accordance with MPEP 2106.05(g), the collected measured transmittance and thickness, both without and with strain applied to an entire rubber specimen is similar to the that which was found by the courts to be necessary data gathering, whereby all uses of the claimed equation would require the necessary inputs claimed. See also, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). In combination, the data is gathered in ordinary fashion, using generic X-ray detectors and then manipulated, via a seemingly mental process or even by unknown computing means, to provide the desired output, in accordance with the use of the claimed equation.
In combination, the additional element of measuring the transmittance and thickness with and without strain, combined with the claimed evaluation equation, has not improved the art of X-ray detectors. The X-ray detector does not better detect X-rays based on the data manipulation that occurs after it has been collected. The additional elements do not amount to a particular machine for applying the abstract idea. No transformation of the rubber or X-rays into a different state of thing has occurred through the combination. The equation has not been utilized in a manner that goes meaningfully beyond its general link to the technological environment of analyzing voids in rubber.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because appending mere data gathering steps, considered extra-solution activity, to an abstract idea has been found by the courts to not be sufficiently more than the abstract idea itself, see MPEP 2106.05(I)(A).
Considering the additional element of measuring the transmittance and thickness of an entire rubber material specimen with and without strain applied thereto through X-ray detector data, this is considered well-known, routine, and conventional in the art. Zhang et al., cited by the Applicant in the specification, and submitted via IDS on 5/2/2023, contains a discussion of the measurement of X-ray transmittance (IC1/IC2) through, and a thickness of, a rubber sample that is undeformed and a measurement of X-ray transmittance through, and a thickness of, a rubber sample that is uniaxially strained in Equation (4) and pages 1531-1532, as well as the abstract. Repeating an SAXS process, across a sample is well-known, routine, and conventional in the art, as evidenced by Lorenz-Haas et al. (NPL), which discloses the technique of performing scanning small-angle X-ray scattering over a sample by moving the sample (Page 3057). Therefore, the additional elements are considered well understood, routine and conventional in the art.
Thus, taken individually or in combination, the additional elements do not amount to significantly more than the abstract idea because the well-known, routine and conventional collection of transmittance and thickness data of an entire rubber sample, both unstrained and strained, used as necessary data-gathering for performing the abstract idea, has been found by the courts as not sufficiently more than the abstract idea itself, according to MPEP 2106.05(g).
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
It is noted that during the interview of 11/6/2025, the Examiner did agree that improvements to the X-ray detector itself would provide a practical application and overcome the 35 U.S.C. 101 rejection. However, Applicant neither demonstrated, at the time of the interview or thereafter, any disclosed improvement to the detector in the specification, nor provided any claimed limitation that reasonably indicates a benefit to the X-ray detector. Accordingly, the 35 U.S.C. 101 rejection has not yet been overcome.
Furthermore, it is now understood that a “region outside of the observable wavenumber region of the X-ray detector” refers to undetectable areas associated with transmitted X-rays through the sample, in the path of the detector, based on wavenumbers that are too high or too low or through blocked regions. This is an understood terminology in the art. The Examiner’s interpretation made during the interview was that of regions outside of the viewable area of the sample and the detector, i.e. unirradiated portions of the sample that had not yet been analyzed, which was incorrect.
On page 6 of the response, Applicant argues that at least claim 1 recites a practical application in the claim because the phrase “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the rubber material” is non-conventional. A review of the specification finds that the step of “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the rubber material” is based on the comparison of the prior art, which did not detect voids in an unobserved region and only detected voids in a narrow observable region. However, there is no step described in the specification that does this “determining”, other than the evaluation associated with the claimed equation. This statement appears to be an intended outcome or improvement upon the prior art, but it is based solely on the use of the evaluating step equation.
Assuming, arguendo, that the Applicant was reciting the practical application as an improvement to some technology, to which technology is the Applicant arguing they have improved? The Examiner finds no improvement of the X-ray detector’s ability to detect X-rays and no improvement to the rubber having already been manufactured. The only potential area of improvement would be the actual claimed improvement of “determining the percentage of voids in a region inside and a region outside an observable wavenumber region of the X-ray detector to quantitatively evaluate the voids in the rubber material”. However, this fails to satisfy the requirements of MPEP 2106.05(a), as has been repeatedly stated in previous Office Actions, because the abstract idea of “determining the percentage”, as derived from the evaluating step using the mathematical equation, alone cannot provide the improvement.
Applicant argues that the “determining the percentage” limitation is analogous to Example 25 of the July 2015 SME guide, where both claims 1 and 2 were deemed eligible based on Step 2B analysis (now considered Step 2A – Prong 2, July 2024 Index of SME examples). The example illustrates that the additional elements integrated the abstract idea of the use of the Arrhenius equation into the practical application of controlling a mold process for rubber manufacturing. It is noted that example 25 is modelled after the fact pattern of Diamond v. Diehr, 450 U.S. 175 (1981).
In the instant claim, however, there is no practical application analogous to controlling a mold process. In fact, there is no described step that occurs after the void percentage evaluation/determination has occurred. Simply evaluating/determining the percentage has not provided any practical application akin to controlling a rubber manufacturing process or otherwise.
With respect to the 37 C.F.R. 1.132 declaration filed on 12/3/2025, by Tomomi Shiozawa, the Examiner appreciates the considerations set forth by Mr. Shiozawa, which have largely been repeated in the remarks on 7. The issue brought forth by the Examiner during the interview was one of interpretation based on the phrase “region outside an observable wavenumber region of the X-ray detector”, which has already been corrected in the above mentioned statement.
However, with further respect to the declaration and remarks on page 7, the Examiner still finds that there are no additional elements that provide an improvement to the technology area of X-ray detectors, generally. The X-ray detector is not shown to better detect X-rays in any way. Applicant’s asserted improvement, [0004-5], is the ability to evaluate a percentage of voids in a rubber material even though voids within some region cannot be observed. Applicant has not asserted that the X-ray detector has been improved to now detect previously undetected voids. Rather, the only improvement is in the evaluation of voids from the use of the claimed equation. As pointed out in the, declaration, with regard to the ability of known X-ray detectors to evaluate or predict the percentage of voids outside and inside an observable wavenumber region of the detector, “[c]onventional detectors are not able to achieve this determination because they do not employ” the equation. Therefore, the detector itself is not being improved, but rather the determination, evaluation, or prediction of the percentage of voids outside and inside an observable wavenumber region of the detector is being improved. Conventional detectors, collecting data in their normal routine manner, in combination with the mathematical equation of the claimed evaluating step, does not improve the detectors’ ability to detect X-rays in any way.
Since the improvement is solely based on the use of the equation in the evaluating step, which itself is considered an abstract idea, this fails to satisfy the requirements of MPEP 2106.05(a). The abstract idea of “determining the percentage”, as derived from the evaluating step using the mathematical equation, alone cannot provide the improvement and the additional elements, measuring steps, are deemed conventional both alone and in combination. Accordingly, the rejection is maintained for claim 1, 3-6 and new claims 7-9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan M Dunlap whose telephone number is (571)270-1335. The examiner can normally be reached Mon-Fri 10AM - 7PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JONATHAN M DUNLAP/Primary Examiner, Art Unit 2855 December 12, 2025
Prosecution Insights