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 .
Drawings
The drawings filed on 10/16/2025 are accepted.
Response to Amendment
The action is responsive to the Amendment filed on October 16, 2025. Claims 1-2, 7, 9, 14-16, 18-19, and 21 were amended; and claim 8 was cancelled. Thus, claims 1-7 and 9-21 are pending.
Claim Rejections - 35 USC § 101 Non-Statutory
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 and 9-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Specifically, Claim 1 recites:
An information processing apparatus comprising a hardware processor that: acquires, from a first detector, a-posteriori information related to samples of a predetermined target that are produced under various conditions; extracts a feature from the a-posteriori information that is suitable for determining whether the target satisfies a product specification; acquires, from a second detector, a-priori information related to the target obtained during a production process of the target; and analyzes the target based on the feature and the a-priori information to determine whether the target meets a product specification. The claim limitations in the abstract idea have been highlighted in bold; the remaining limitations are “additional elements.” Similar limitations comprise the abstract ideas of claim 21.
Additionally, or alternatively, Claim 21 recites:
A trained model that has been trained by machine learning in advance, using a-posteriori information related to samples of a target that are produced under various conditions and information related to a predetermined condition of the target as ground-truth data, and that outputs information related to whether the target meets a production specification, in response to an input of the a-posteriori information related to the predetermined target an a-priori information related to the target obtained during a production of the target.
Under Step 1 of the analysis, claim 1 does belong to a statutory category, namely it is an apparatus claim. Likewise, claim 21 is a computer program product claim.
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. Under Step 2A, Prong One, the broadest reasonable interpretation of the steps recited in Claim 1 include at least one judicial exception, that being a mathematical process. This can be seen in the claimed process steps of “extracts a feature from the a-posteriori information…” (See, for example, FIGS. 1-4; ¶70, of the instant specification), and “analyzes the target based on the feature and the a-priori information…” (See, for example, FIGS. 1-4; ¶¶71-72, of the instant specification), each of which encompasses mathematical concepts requiring specific mathematical calculations (The machine learning described in ¶¶70-72 of the instant specification.) to perform the information processing, and therefore encompasses mathematical concepts. Likewise, under the broadest reasonable interpretation of the steps recited in Claim 21 include at least one judicial exception, that being a mathematical process. This can be seen in the claimed process step of “trained model that has been trained by machine learning in advance …” (See, for example, FIGS. 1-4; ¶70, of the instant specification), which encompasses mathematical concepts requiring specific mathematical calculations (The machine learning described in ¶¶70-72 of the instant specification.) to perform the information processing, and therefore encompasses mathematical concepts.
For example, in claim 1, when given the broadest reasonable interpretation in light of the specification, the steps of “extracts,” and “analyzes” are performed using one are more training algorithms (machine learning model(s)). Claim 21 is drawn to a judicial exception, a trained model that has been trained by machine learning in advance.
In claim 1, the steps of: “extracts,” and “analyzes” each fall within the mathematical concepts grouping of abstract ideas; and similarly, in claim 21 the claim is drawn to a judicial exception, comprising the mathematical concepts grouping of abstract ideas. In claim 1, and similarly, in claim 21, recited process step(s) are considered together as a single abstract idea for further analysis. (Step 2A, Prong One: YES).
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
In claim 1, each of the process steps “extracts,” and “analyzes” each fall within the mathematical concepts grouping of abstract ideas are recited as being performed by a computer (“the information processing apparatus 100 includes a central processing unit (CPU) 110, a read-only memory (ROM) 120, a random access memory (RAM) 130, a storage 140, a communication interface 150, and an operation display unit 160.” FIG. 2; ¶45, of the instant specification). Similarly, the trained model of claim 21 is performed by a computer. {See above.} The computer is recited at a high level of generality (“central processing unit”). The computer is used as a tool to perform the generic computer functions of collecting data and performing the recited process steps. The computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). The recited process steps comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Claim 1 also recites the additional elements (equipment) of “a hardware processor” (See, for example, FIGS. 1-4; ¶45, ¶70, of the instant specification), “a first detector” (See, for example, FIGS. 1-4; ¶45, ¶70; FIG. 9; ¶91, of the instant specification), “a predetermined target” (See, for example, FIGS. 1-4; ¶45, ¶70, of the instant specification), and “a second detector” (See, for example, FIGS. 1-4; ¶45, ¶70; FIG. 9; ¶91, of the instant specification). Claim 1 additionally recites data comprising “a-posteriori information related to samples of a predetermined target…” (See, for example, FIGS. 1-4; ¶¶38-40; FIG. 13; ¶109, of the instant specification), “a feature from the a-posteriori information…” (See, for example, FIGS. 1-4; ¶¶38-40; FIG. 13; ¶109, of the instant specification), “a-priori information related to the target obtained during a production process of the target…” (See, for example, FIGS. 1-4; ¶¶38-40; FIG. 13; ¶¶109-110, of the instant specification). Claim 21 additionally recites the additional elements (equipment) of “a hardware processor,” and “a target” (See, for example, FIGS. 1-4; ¶45, ¶70, of the instant specification), and data comprising “a-posteriori information related to a target,” and “a predetermined condition of the target as ground-truth data” (See, for example, FIGS. 1-4; ¶¶38-40, of the instant specification). However, these additional elements merely comprise generic conventional non-specific equipment, and computer hardware and software elements, and data/information, and is/are set forth at a highly generic level and each of which comprise an “insignificant extra-solution” activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Applicant is thanked for their amendments to claim 1 which include the elements of “a-posteriori information related to samples of a predetermined target that are produced under various conditions,” “a feature from the a-posteriori information that is suitable for determining whether the target satisfies a product specification,” and “analyzes the target based on…the a-priori information to determine whether the target meets a product specification,” which were presented in an effort to overcome the outstanding rejections under 35 U.S.C. 101. However, the newly presented elements of “a-posteriori information related to samples of a predetermined target that are produced under various conditions,” “a feature from the a-posteriori information that is suitable for determining whether the target satisfies a product specification,” and “analyzes the target based on…the a-priori information to determine whether the target meets a product specification,” merely clarify the recited judicial exception(s) recited in the claim, and are not patent eligible. Claim 21 was amended similarly.
Likewise, the newly presented limitation of “acquires, from a second detector, a-priori information related to the target obtained during a production process of the target,” comprises a data gathering step which comprises an “insignificant extra-solution” {post-solution} activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
The recited additional elements can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, Prong Two of the analysis, even when viewed in combination, these additional elements recited in claim 1 do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed method. For instance, nothing is done with the analysis of the target based on the feature. Likewise, in claim 21, no specific practical application is associated with the claimed method. For instance, nothing is done once information related to the predetermined condition of the target is output.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong Two, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use, and/or merely insignificant extra-solution activity (Claims 1, 21). Such insignificant extra-solution activity, e.g. data gathering and output, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional as evidenced by MPEP 2106.05(d)(II) (describing conventional activities that include transmitting and receiving data over a network, electronic recordkeeping, storing and retrieving information from memory, and electronically scanning or extracting data from a physical document).
Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1, as well as claim 21, amount to significantly more than the abstract idea. Therefore, claim 1, as well as claim 21, is not patent eligible under 101.
With regards to the dependent claims, claims 2-7 and 9-20, provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
Response to Arguments
Applicant’s arguments filed on October 16, 2025 have been fully considered. Applicant’s amendments and arguments have overcome the outstanding prior art rejections. Applicant is thanked for their amendments and arguments which were presented in an effort to overcome the outstanding rejections under 35 U.S.C. 101. However, the rejection of claims 1-7 and 9-21 under 35 U.S.C. 101 persists.
In regard claims 1-7 and 9-21 rejected under 35 U.S.C. 101, Examiner’s position and supporting remarks are presented in the rejection above.
Additionally, Applicant is thanked for their amendments to claim 1 which include the elements of “a-posteriori information related to samples of a predetermined target that are produced under various conditions,” “a feature from the a-posteriori information that is suitable for determining whether the target satisfies a product specification,” and “analyzes the target based on…the a-priori information to determine whether the target meets a product specification,” which were presented in an effort to overcome the outstanding rejections under 35 U.S.C. 101. However, the newly presented elements of “a-posteriori information related to samples of a predetermined target that are produced under various conditions,” “a feature from the a-posteriori information that is suitable for determining whether the target satisfies a product specification,” and “analyzes the target based on…the a-priori information to determine whether the target meets a product specification,” merely clarify the recited judicial exception(s) recited in the claim, and are not patent eligible. Claim 21 was amended similarly.
Likewise, the newly presented limitation of “acquires, from a second detector, a-priori information related to the target obtained during a production process of the target,” comprises a data gathering step which comprises an “insignificant extra-solution” {post-solution} activity(ies). See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.05(g) “Insignificant Extra-Solution Activity,” Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
The recited additional elements can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, Prong Two of the analysis, even when viewed in combination, these additional elements recited in claim 1 do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed method. For instance, nothing is done with the analysis of the target based on the feature. Likewise, in claim 21, no specific practical application is associated with the claimed method. For instance, nothing is done once information related to the predetermined condition of the target is output.
Therefore, the rejection of the independent claims, claim 1, as well as claim 21, under 35 USC § 101 is maintained.
Similarly, the rejection of the dependent claims, claims 2-7 and 9-20, under 35 USC § 101 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 JEFFREY P AIELLO whose telephone number is (303) 297-4216. The examiner can normally be reached on 8 AM - 4:30 PM EST.
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/JEFFREY P AIELLO/Primary Examiner, Art Unit 2857
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