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 .
Response to Amendment
The amendment filed 02/09/2026, has been entered.
The amendment of claim(s) 1-2, 4-20 has been acknowledged.
The cancelation of claim(s) 3 has been acknowledged.
The Introduction of new claim(s) 21 has been acknowledged.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 2, 4-10, 12-13, 15-21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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, 11, and 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The limitations, under their broadest reasonable interpretation, cover mental process (concept performed in a human mind, including as observation, evaluation, judgment, opinion). The claims recite a method of checking and determining the quality of documents. This judicial exception is not integrated into a practical application because the steps do not add meaningful limitations to be considered specifically applied to a particular technological problem to be solved. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such.
According to the USPTO guidelines, a claim is directed to non-statutory subject matter if:
• STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
• STEP 2: the claim recites a judicial exception, e.g., an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
o STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural
phenomenon?
o STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the
judicial exception into a practical application?
o STEP 2B: Does the claim recite additional elements that amount to significantly more
than the judicial exception?
Using the two-step inquiry, it is clear that claims 1 and 10 are directed to an abstract idea as shown below:
STEP 1: Do the claims fall within one of the statutory categories?
YES. Claim 1 is directed to a system, i.e., process.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea?
YES, the claims are directed toward segmenting without a shape model.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
• Mathematical concepts – mathematical relationships, mathematical formulas or equations,
mathematical calculations;
• Certain methods of organizing human activity – fundamental economic principles or
practices (including hedging, insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing personal behavior or relationships or
interactions between people (including social activities, teaching, and following rules or
instructions); and
• Mental processes – concepts that are practicably performed in the human mind (including an
observation, evaluation, judgment, opinion).
The method in claim 1 could compromise a mental process.
Claim 1 recites:
A system for examining a semiconductor specimen comprising a plurality of layers at respective different depths, and a plurality of holes, each hole having a top portion at [[the]] a surface of said specimen and a bottom portion accommodated in one of said layers, the system comprising a processing and memory circuitry (PMC) configured to:a. provide an inspection image indicative of at least one of said holes;b. process at least one hole image in said inspection image, including:i. segment the inspection image and determine data indicative of a contour of the top portion of the hole;ii. segment the inspection image or derivative thereof and determine data indicative of a contour of a shape of the bottom portion of said hole enclosed within the contour of the top portion of the hole, without using a shape characterizing model ;thereby facilitating examining of the specimen including utilizing at least the data indicative of the contour of the shape of the bottom portion of said hole, for measurements of characteristics of at least the bottom-portion.
These limitations, as drafted, is a simple process that, under their broadest reasonable interpretation covers a set of observations that could be done with the human eye and mind.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
NO, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
• an additional element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field;
• an additional element that applies or uses a judicial exception to affect a particular treatment
or prophylaxis for a disease or medical condition;
• an additional element implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the claim;
• an additional element effects a transformation or reduction of a particular article to a different
state or thing; and
• an additional element applies or uses the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort designed to
monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
• an additional element merely recites the words “apply it” (or an equivalent) with the judicial
exception, or merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea;
• an additional element adds insignificant extra-solution activity to the judicial exception; and
• an additional element does no more than generally link the use of a judicial exception to a
particular technological environment or field of use.
Claims 1- 11 do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre- guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
• adds a specific limitation or combination of limitations that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
With regard to (2b) the Guidance provided the following examples of limitations that may be enough to qualify as “significantly more" when recited in a claim with a judicial exception:
• Improvement to another technology or technical field
• Improvement to functioning of computer itself and/or applying the judicial
exception with, or by use of, a particular machine
• Effecting a transformation or reduction of a particular article to a different state or
thing.
• Adding a specific limitation other that what is well understood, routine and
conventional in the field, or adding unconventional steps that confine the claim to
a particular useful application
• Meaningful limitation beyond generally linking the use of an abstract idea to a
particular technological environment.
The Guidance further set forth limitations that were found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
• Adding words to “apply it” (or an equivalent) with the judicial exception or mere
instructions to implement abstract ideas on a computer
• Simply appending well-understood, routine and conventional activities previously
known to the industry specified at a high level of generality to the judicial
exception, e.g. a claim to an abstract idea requiring no more than a generic
• Computer to perform generic computer functions that are well -understood,
routine and conventional activities previously known to the industry.
• Adding insignificant extra-solution activity to the judicial exception, e.g. mere data
gathering in conjunction with a law of nature or abstract idea
• Generally linking the use of the judicial exception to a particular technological
environment or field of use.
Thus, since Claim 1 is: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, claim 1 is not eligible subject matter under 35 U.S.C 101.
Regarding claims 11 and 14, claim 11 and 14 has been analyzed with regard to claim 1 and is rejected for the same reasons of obviousness as used above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jinsu Hwang whose telephone number is (703)756-1370. The examiner can normally be reached Mon 6am-8am, 3pm-9pm EST; Thu 12pm - 4pm EST; Fri 12pm-8pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Bella can be reached at (571) 272-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JINSU HWANG/Examiner, Art Unit 2667
/MATTHEW C BELLA/Supervisory Patent Examiner, Art Unit 2667
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