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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/01/2026 has been entered.
Detailed Action
Claims 1 – 10, 12, 13, 15 – 17, 19 – 22, are pending; claim 14 being presently cancelled, claims 21 and 22 are new.
The effective filing date of the present application is 11/20/2020.
Response to Amendment
Applicant's amendments to claim 13 and cancellation of claim 14 have rendered the previous rejection under 35 U.S.C. § 101 as moot; therefore, this rejection for these claims being directed to non-statutory subject matters is withdrawn.
The examiner will address applicant's remarks at the end of this office action.
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.
Claim 9 is 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.
Regarding claim 9, the phrase "wherein the marker is selected from the group consisting of UV marker, XRD marker, XRF marker, QR code, and steganographic feature" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
This is an issue because claim 1 recites scanning by a wavelength scanner to “generate spectral scan data representing radiation emitted from one or more markers…”. Do all these items emit radiation? The Specification defines markers as potentially comprising chemical tracers, these markers ”show various spectroscopic properties and are therefore detectable (e.g. being florescent under UV light).” Specification also details “… marker may further comprise QR-data, digital watermarks.” Further, Specification adds, “the marker is not a chemical tracer, instead it is a QR-code 23.” Finally, the disclosure details and illustrates a scan (or detection process) being accomplished with an “optical scanner (e.g. a camera of a smartphone).” It is unclear whether a camera of a smartphone contains a “wavelength scanner comprising…”, and therefore, can “generate spectral scan data representing radiation emitted from one or more markers..” as claimed within claim 1. Further, is only a smartphone required or do the claims need the combination of elements comprising a wavelength scanner? Because claim 9 further seeks to define those claimed markers, and raises the above questions, claim 9 is indefinite.
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 – 10, 12, 13, 15 – 17, 19 – 22, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At Step 1 of analysis, the instant claims are directed towards a method and a system. Thus, all claims fall within one of the four statutory categories and are considered eligible subject matter.
At Step 2A, Prong One, of eligibility analysis, the Examiner has determined that the claims, as a whole, set forth a method for identifying plastic compounds and determining a sustainability score (a metric describing characteristics of the plastic compound). This describes a mental process which includes observations (receiving data), evaluations (assessing the compound and associated data), and judgments and opinions (determining a score and initiating further processing) of the plastic compound. Noting that claims can recite a mental process even if they are claimed as being performed on a computer, the Examiner has concluded that the claims recite an abstract idea.
Claim 1, which is illustrative of claim 17, contains elements that define this abstract idea (and are highlighted below):
A computer-implemented method for generating and validating a sustainability score of a plastic compound, the method comprising:
scanning, by a wavelength scanner comprising an X-ray generator, a copper filter, and an X-ray fluorescence detection unit, a plastic compound to generate spectral scan data representing radiation emitted from one or more markers embedded in the plastic compound;
receiving, by a receiving unit coupled to the wavelength scanner, the spectral scan data from the wavelength scanner, the receiving unit comprising a physical hardware interface configured according to a communication standard;
accessing, by one or more processing units comprising distributed hardware components coupled to the receiving unit, a computer-based database storing marker definitions for a plurality of plastic compounds and associated sustainability data;
identifying, by the one or more processing units, at least one marker embedded in the plastic compound by comparing the received spectral scan data with the marker definitions stored in the computer-based database;
determining, by the one or more processing units, a sustainability score for the plastic compound based on the identified at least one marker and the associated sustainability data stored in the computer-based database;
comparing, by the one or more processing units, the determined sustainability score with a provided sustainability score linked to the plastic compound to determine whether the comparison lies within an acceptable or predetermined range; and
in response to determining that the comparison lies within the acceptable or predetermined range, generating, by the one or more processing units, a control signal that triggers further processing of the plastic compound.
At Step 2A, Prong Two, of eligibility analysis. the Examiner has determined that the identified abstract idea (judicial exception) is not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f). Further, in MPEP 2106.05(f) it is noted that "[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more.” Therefore, according to the MPEP, this is not solely limited to computers but includes other technology that, recited in an equivalent to “apply it,” is a mere instruction to perform the abstract idea on that technology.
Claims 1 and 17 recite the following additional elements:
a wavelength scanner comprising an X-ray generator, a copper filter, and an X-ray fluorescence detection unit;
a receiving unit coupled to the wavelength scanner, comprising a physical hardware interface configured according to a communication standard;
one or more processing units comprising distributed hardware components coupled to the receiving unit;
a computer-based database.
These elements are mere instructions to apply the abstract idea to a computer, per MPEP § 2106.05(f). Applicant has described these computing elements generically in the disclosure, at page 11 and Figure 4, as filed. Simply implementing the abstract ideas on a generic computer is not a practical application of the abstract idea. For example, “The term computer-based database is to be understood broadly in the present case and comprises any database or data system, which is configured to store and manage data.”
Applicant’s amended claim element: a wavelength scanner comprising an X-ray generator, a copper filter, and an X-ray fluorescence detection unit; while not describing a generic computer, nonetheless describes a necessary mere data gathering step, that being obtaining data representing radiation emitted from one or more markers embedded in the plastic compound. Further, the term “scan data is to be understood broadly in the present case and comprises any data received from a scan and/or a detection process”; and, “[t]he term wavelength scanner is to be understood broadly in the present case and comprises a scanner that is configured to determine a wavelength of an atom or a molecule. The term wavelength scanner comprises scanners based on UV detection technique, a near infra-red detection technique, mid infra-red detection technique, an X-Ray fluorescence detection technique or neuron activation technique. (Emphasis added). Since several techniques are disclosed, and the scanner described herein is merely one of those techniques, this claim element is necessarily required to generate data. Thus, this element describes one technique used to gather data, and therefore, recites an insignificant extra-solution activity to perform one step, of a combination of steps, to score a plastic compound. Adding insignificant extra-solution activity to the judicial exception does not integrate a judicial exception into a practical application. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea.
At Step 2B of eligibility analysis, the Examiner has determined that the claims 1 and 17 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea within a computer environment to perform the steps that define the abstract idea. As discussed above, the additional elements identified, amounts to no more than mere instructions to implement an abstract idea on a computer, per MPEP 2106.05(f), and describe insignificant extra-solution activity, per MPEPE 2106.05(g). This does not provide for provide for significantly more.
Dependent claims 2 and 3 contain further embellishments to the same abstract idea found in claim 1. Recitations to data of samples and identifying data, are further steps performed to identify plastic compounds; therefore, they are directed to the abstract idea. Further, these claims utilize block chain, which is a generic term for a distributed ledger, or a database. These additional elements describe the system in a generic way, as disclosed at Specification [3:34]. Thus, the mere automation of receiving a block chain and uploading a block chain, is noted that use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) and does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
Dependent claims 4 – 7, 12, and 20, contain further embellishments to the same abstract idea found in claim 1. Recitations to determining a type and/or quantity of the marker, a weight, a sustainability score, and number of recycling loops, are further refinements to the observations, evaluations, and judgments and opinions for scoring. Further, these claims are not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f), because they utilize the generically described additional elements of claim 1 – “computer-implemented”.
Dependent claims 8 and 16 contain further embellishments to the same abstract idea found in claim 1. Recitations to display on a user interface is a further recitation to instructions to apply the abstract idea to a computer. Instructions to display information is not sufficient to show an improvement in computer-functionality. See MPEP 2106.05(a).
Dependent claims 9 and 10 contain further embellishments to the same abstract idea found in claim 1. Recitations to a group of markers or group of plastic compounds are further refinements to the method employed to perform the abstract idea – they are the core data that defines the plastic compounds to be observed, evaluated, and judged. Further, these claims are not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f), because they utilize the generically described additional elements of claim 1 – “computer-implemented”.
Dependent claim 13 contains further embellishments to the same abstract idea found in claim 1. Recitations to a computer program product comprising nontransitory computer readable medium storing instructions is reciting computer software with instructions, as described in MPEP 2106.05(f).
Dependent claims 15 and 16 contain further embellishments to the same abstract idea found in claim 1. Recitations to a plastic compound handing device and the user interface is noted to be use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea and does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
Dependent claim 19 contains further embellishments to the same abstract idea found in claim 1, as it requires the method steps of claim 1 and adds more to the abstract idea. Recitations to receiving a score that is calculated, and comparing the score, are further refinements to the observations, evaluations, and judgments and opinions for the scores. Further, these claims are not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f), because they utilize the generically described additional elements of claim 1 – “computer-implemented”.
New dependent claims 21 and 22 contain further embellishments to the same abstract idea found in claims 1 and 17. Recitations to determining a range and prevent further processing are evaluations and judgments needed to be made based on the evaluation of the plastic compound. They are further refinements to the abstract idea identified. A control signal is merely an alert or notification to optionally do something (or do not do something). They recite an intended result without reciting any steps that define how to accomplish the result. Further, a control signal is itself an instruction to a computer environment. The claims are not patent eligible.
Therefore, for the reasons cited above, claims 1 – 10, 12, 13, 15 – 17, 19 – 22, are directed to an abstract idea without integration into a practical application and without reciting significantly more.
Response to Arguments
Applicant's arguments filed 06/01/2026 have been fully considered but they are not fully persuasive. Applicant’s arguments discuss rejection of prior claims under 35 U.S.C. § 101. See page 8. Applicant’s first remarks contend that amended claims 1 and 17 are not directed to merely identifying a plastic compound , but rather, recite a specific machine-based process that integrates any abstract idea into a practical application. See page 9. Based on the reasoning that follows, the Examiner respectfully disagrees with Applicant’s arguments.
First, as detailed earlier, the Examiner does not find this argument persuasive because obtaining spectral scan data seems to be a mere data gathering step. The disclosure details and illustrates a scan (or detection process) being accomplished with an “optical scanner (e.g. a camera of a smartphone).” See also Fig 3. It is unclear whether a camera of a smartphone contains a “wavelength scanner comprising…”, and therefore, can “generate spectral scan data representing radiation emitted from one or more markers..” as claimed within claim 1. Further, is only a smartphone required or do the claims need the combination of elements comprising a wavelength scanner as Applicant argues? The Examiner thus concludes that the combination of additional elements within the amended claims, alone and in combination, do not integrate the abstract idea into a practical application.
Applicant adds that the claims describe using physical scan data, definition data, and score validations, to trigger further processing. However, the Examiner concludes that these steps are those that fittingly set forth a method for identifying plastic compounds and determining a sustainability score (a metric describing characteristics of the plastic compound). These elements describe a mental process which includes observations (using physics scan data), evaluations (definition data), and judgments and opinions (determining a score and initiating further processing) of the plastic compound. Noting that claims can recite a mental process even if they are claimed as being performed on a computer. Courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind. Applicant’s arguments are not persuasive.
Regarding Applicant’s arguments on page 9 describing a wavelength scanner, the Examiner also finds this argument not persuasive. This element leads to questions regarding whether this component is merely an additional element or an unconventional combination necessary to gather spectral data. A reasonable interpretation of this element leads to contradictory conclusions. First, is Applicant’s arguments toward a narrow scanner comprising “comprising an X-ray generator, a copper filter, and an X-ray fluorescence detection unit, …to generate spectral scan data representing radiation emitted from one or more markers embedded in the plastic compound”, - or to – “to determine a wavelength of an atom or a molecule.” This may sound quite specific; however, this definition is much different than a device obtains scan data that “is to be understood broadly in the present case and comprises any data received from a scan and/or a detection process.” This data also “comprises data from spectroscopic analysis and optical scanner (e.g. a camera of smartphone). Said phone being used to scan a QR code in one exemplified description. Because the Examiner cannot definitively ascertain if the recited wavelength scanner is merely performing data gathering, or whether it is a significant limitation (a specific machine-based process as Applicant argues ), the Examiner must conclude this element does not serve to provide for integration into a practical application. Applicant’s arguments are not persuasive.
Applicant next argues that the dependent claims further narrow a practical application. See page 9. The Examiner respectfully disagrees with Applicant. The Examiner has concluded, and detailed above, that the dependent claims are rife with further embellishments to the same abstract idea found in claims 1 and 17. Therefore, they are directed to the abstract idea and do not integrate into a practical application.
Regarding Applicant’s pointing to claims 2 and 3, the Examiner disagrees. Dependent claims 2 and 3 contain further embellishments to the same abstract idea found in claim 1 as well. Recitations to data of samples and identifying data, are further steps performed to identify plastic compounds; therefore, they are directed to the abstract idea. Further, these claims utilize block chain, which is a generic term for a distributed ledger, or a database. These additional elements describe the system in a generic way, as disclosed at Specification [3:34]. Thus, the mere automation of receiving a block chain and uploading a block chain, is noted that use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) and does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
Applicant next agues the rejection of all prior claims under 35 U.S.C. § 103. See page 10. In view of the amendments to the claims, and upon further research, the Examiner agrees. The amended claims recite elements not taught nor suggested by the cited prior art. Certain art discloses a machine for processing recyclable materials, (Saltzman). Other art teaches a tagging unit configured to provide an identifier, (Stöcker). Therefore, the Examiner reads the current amended claims as reciting elements not disclosed by the prior art. Specifically not disclosed, either alone, or in combination, are the following claimed elements, within claims 1 and 17:
scanning, by a wavelength scanner comprising an X-ray generator, a copper filter, and an X-ray fluorescence detection unit, a plastic compound to generate spectral scan data representing radiation emitted from one or more markers embedded in the plastic compound;
identifying, by the one or more processing units, at least one marker embedded in the plastic compound by comparing the received spectral scan data with the marker definitions stored in the computer-based database.
Regarding claims 2 – 10, 12 – 13, 15 – 17, and 19 – 22, based on their dependency to independent claims 1 and 17, they inherit the distinguished claim limitations and are therefore, also not disclosed by the prior art.
Noting that patentability of any claimed invention under 35 U.S.C. §§ 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101, the Examiner points to other rejections within this Office Action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON EDMONDS whose telephone number is (571) 272-6171. The examiner can normally be reached M-F 8am-4pm EST.
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/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
DONALD J. EDMONDS
Examiner
Art Unit 3629
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