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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/19/2026 has been entered.
Response to Arguments
Objections to the claims and rejections made under 35 U.S.C. 102/103 are withdrawn.
Applicant's arguments filed 3/19/2026 have been fully considered but they are not persuasive.
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On page 9, Applicant argues,
Examiner acknowledges applicants attempt to overcome the outstanding 35 U.S.C. 101 rejection by amending claim to include additional technical features corresponding to paragraphs 28 and 29 of the specification. However, claim 1, as drafted, does not overcome the rejection because it fails to integrate the recited judicial exception into a practical application.
MPEP 2106.04(d) states:
“Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception… Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. However, the way in which the additional elements use or interact with the exception may integrate it into a practical application.”
Accordingly, even with the addition of the amendment, claim 1 does not describe sufficient technical details to integrate the judicial exception into a practical application. The amendment adds a conditional limitation: “in a case where a plurality of the pieces of the active material is arranged close to one another, identify, as a feature point, a center of gravity of a piece of the active material having a maximum diameter that is largest of the plurality of the pieces of the active material.”
This limitation merely species a condition under which a feature point is identified, but it fails to integrate this specific identification into the practical application of the claim as a whole. The limitation provides a specific case for the feature point identification, but does not require that this identification be the one used for the feature point identification step or in the coordinate system generation step. Because the claim does not positively link the result of this specific identification to the steps of the claim, the limitation does not impose a meaningful limit on the abstract idea of performing mathematical calculations.
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On pg. 3 applicant notes a technical improvement for the claimed invention:
To provide this technical improvement, the claim would need to include the specific steps of identifying the feature point (e.g., the center of gravity of the piece with the largest diameter) and then use that feature point in the coordinate system generation and deformation calculation steps. As currently drafted, the claim does not require this linkage and therefore does not achieve the states improvement. Therefore, the claim as a whole is still directed to the abstract idea of mathematical calculations without a meaningful integration into a practical application.
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 1-7 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 1 recites “in a case where a plurality of the pieces of the active material is arranged close to one another, identify, as a feature point, a center of gravity of a piece of the active material having a maximum diameter that is largest of the plurality of the pieces of the active material” which is indefinite.
First, the claim lacks antecedent basis for the term “the pieces”. The claim previously refers to the singular “a piece of an active material”. The introduction of the plural “the pieces” creates ambiguity as to what this term is meant to refer to. For example, it is unclear whether “the pieces” is intended to refer to multiple instances of the singular “piece of an active material” or if it is meant to refer to an entirely new element.
Second, the limitation creates ambiguity regarding the scope of the feature point identification step. The claim recites a general feature point identification step followed by a specific case for identifying a particular feature point (the center gravity of the largest piece). However, the claim fails to define the relationship between this specific case and the coordinate system generation step. For example, is the coordinate system generated using this particular feature point only when the condition is met? Or is the specific case merely one possible outcome of the feature point identification step? The claim provides no structural limitation linking this specific case to the previously recited steps, and thus one of ordinary skill in the art would not be able to ascertain the scope of the claim.
Third, the phrase “arranged close to one another” is purely subjective and does not provide objected standard for determining when the condition is met. For example, the claim fails to define what constitutes “close” such as specific distances defined in a (3D) volume and/or a relative spacing of the pieces. Thus, a person of ordinary skill in the art would not be able to ascertain when this limitation is triggered.
For examination purposes, the claim will be interpreted to mean that when multiple pieces of an active material are arranged relative to one another in 3D data, the feature point identification step identifies the center of gravity of the piece with the largest diameter as the feature point for use in coordinate system generation step.
Claim 7 contains elements found analogous to claim 1. Therefore, claim 7 is rejected for the same reason.
Claims 2-6 are rejected as being dependent on a rejected base claim.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of defining spatial relationships through a coordinate system and comparing feature point coordinates across 3D datasets to calculate expansion/contraction and deformation, without significantly more. The following analysis is in accordance with the Subject Matter Eligibility Test (See flowchart in MPEP 2106).
Step 1
Independent claim 1, is directed to one of the four statutory categories of eligible subject matter (machine): thus, the claim passes Step 1 of the Subject Matter Eligibility Test.
Step 2A: prong 1
The claim recites:
“identify a feature point from arrangement information regarding a piece of an active material, the arrangement information being included in the first 3D data” which can be reasonably interpreted as a mental process of a human observer reviewing a electrode scan and identifying specific points corresponding to an active material from the given 3D dataset.
“generate, based on relative positional information regarding the feature point, a coordinate system for calculation of the amount of deformation; and calculate, by comparing the first 3D data with the second 3D data, the amount of expansion/contraction of the electrode and the amount of deformation of the electrode.” which can be reasonably interpreted as mathematical concepts of defining spatial relationships through a coordinate system and comparing feature point coordinates across 3D datasets to calculate expansion/contraction and deformation.
“in a case where a plurality of the pieces of the active material is arranged close to one another, identify, as a feature point, a center of gravity of a piece of the active material having a maximum diameter that is largest of the plurality of the pieces of the active material” which can be reasonably interpreted as mathematical concepts of calculating diameters and a center of gravity of particles in a 3D dataset.
Step 2A: prong 2
The judicial exception is not integrated into a practical application because additional elements:
“a processor; a memory” which can be reasonably interpreted as merely using a computer as a tool to implement the abstract idea. Implementing an abstract idea on a computer does not integrate the judicial exception into a practical application or apply the judicial exception in a way that meaningfully limits its scope or results in a specific technological improvement.
“an X-ray CT apparatus configured to scan the entire periphery of the electrode to reconstruct the 3D data and output the 3D data to the controller” which can be reasonably interpreted as merely a data gathering step for future decision making. X-ray CT scans an entire electrode to generate 3D data for expansion/contraction calculations; therefore, the additional element does not add a meaningful limitation to the claim as it is an insignificant extra-solution activity.
Step 2B
Finally, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following:
“a processor; a memory” which can be reasonably interpreted as generic computer elements does not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
“an X-ray CT apparatus configured to scan the entire periphery of the electrode to reconstruct the 3D data and output the 3D data to the controller” which can be reasonably interpreted as well-understood, routine, and conventional in the field. Therefore, this limitation remains insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
Conclusion
The additional elements of the claim do not recite an improvement in the functioning of a computer or other technology or technical field, the claimed steps are not performed using a particular machine, the claimed steps do not effect a transformation, and the claims do not apply the judicial exception in any meaningful way beyond generically linking the use of the judicial exception to a particular technological environment. Therefore, the analysis under prong two of step 2A of the Subject Matter Eligibility Test does not result in a conclusion of eligibility.
Claim 7 contains elements found analogous to that of claim 1, with the addition of “a non-transitory computer readable medium” . The additional elements can be reasonably interpreted as merely using a generic computer as a tool to implement the abstract idea. Implementing an abstract idea on a generic computer does not integrate a judicial exception into a practical application. Thus, claim 7 is similarly rejected under 35 U.S.C. 101.
Dependent claims 2-6 recite additional elements that do not integrate the same abstract idea into a practical application or transform the abstract idea in a meaningful way.
Examiner’s Note
Examiner notes that no prior art was applied against claims 1-7. However, claims 1-7 stand rejected under 35 U.S.C. 112(b) due to indefiniteness, and cannot be considered to be allowable subject matter because the scope of the claims is not clearly defined. Further, claims 1-7 stand rejected under 35 U.S.C. 101, and cannot be considered to be allowable subject matter because the claims are not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR LEVI HANSEN whose telephone number is (703)756-5533. The examiner can normally be reached Monday-Friday 9:00-5:00 (ET).
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/CONNOR L HANSEN/Examiner, Art Unit 2672
/SUMATI LEFKOWITZ/Supervisory Patent Examiner, Art Unit 2672
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