DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 14-15 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.
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Election/Restrictions
Newly amended claims 4-13 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claim(s) 1-3 and 14-15, drawn to a method for evaluating a compatibility of a thermosetting resin composition.
Group II, claim(s) 4-13, drawn to a thermosetting resin composition comprising at least two kinds of resins and an inorganic filler.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Specifically, Group I is directed towards a method, the “for evaluating a compatibility of a thermosetting resin composition containing at least two kinds of resins” is intended use. MPEP 2111.02 (II) recites “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Here, the body of the claim sets fourth all the limitations of the claimed invention, therefore the actual compositional elements are not considered a limitation for the purposes of claim construction
Conversely, Group II is directed towards a composition, while the claim requires the composition to perform particular method steps, those method steps are not required by the claim. MPEP 2113 recites “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) ”
Here, the method steps are required by group I, but are non-limiting in group II because they do not limit the product itself.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 4-12 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 and 14-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. MPEP 2106 (III) provides the flow chart for determining whether a claim satisfies the criteria for subject matter eligibility. The analysis below shows the claims fail to meet the eligibility requirements.
Broadest reasonable interpretation:
Claims 1-3 are given their plain meaning.
Step 1: is the claim to a process, machine, manufacture or composition of matter?
Yes, a process.
Step 2A: prong one: does the claim recite an abstract idea?
Yes. Claim 1 and 3 each recite a calculation:
“an area ratio of a region of the non-separation part of the resultant binarized image to a total region of the binarized image (the area of the region of the non-separation part x 100/area of the total region of the binarized image) is calculated as the area ratio Rw of the non-separation part” (claim 1)
“an average domain size DL of the separation part is determined” (claim 2).
MPEP 2106.04(a) enumerates mathematical concepts as abstract ideas. As discussed above, the calculation is understood in light of the specification to be mathematical concepts.
Step 2A: prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 1 requires “obtaining a reflected electronic image of a cross section of a cured product of the thermosetting resin composition using a scanning electron microscope at an observation magnification of 50 to 250 times; and … step in which, in the reflected electronic image, a phase-separated resin region is referred to as a separation part and a remaining region is referred to as a non-separation part, and the image is binarized such that the separation part has one value and the non-separation part has the other value”.
. MPEP 2106.05(b)(III) recites “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.” Therefore, since the claim only uses the obtaining to gather data for the calculating step, these steps do not amount to significantly more than data gathering steps. That is, the gathering the data from an electron microscope at a magnification is incidental to the primary process of evaluating a composition using the claimed mathematical concepts of calculations (area ratio and average domain size calculations).
Moreover, obtaining an electron image and binarizing the image is a field of use. MPEP 2106 (I) recites “"An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer".
Indeed the instant specification teaches the electron microscope is a generic SEM from Jeol ([0416]) and the binarization may occur using “commercially available image editing software ([0052]). That is, the claimed invention is directed towards evaluating compatibility for a thermosetting resin composition, the evaluation is achieved via calculation of the area ratio in claim 1 or by determining the average domain size in claim 2. Since the electron microscope is merely used for gathering data to perform the claimed math and the binarization is also only performed such that the math may be performed, the electron microscope/binarization are directed merely towards data gathering or identifying a field of use therefore do not integrate the claimed calculations into a practical application.
Moreover, the binarization is disclosed to be assigning values 1 to white pixels and 0 to black pixels ([0051]), this may also be interpreted as an abstract idea because it could be done with a pencil and paper (i.e. metal activity).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judiciary exception?
No. As evidenced by the instant specification electron microscopy and binarization are well known routine and conventional.
MPEP 2106.05 (d) recites
“If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility”.
Here, as evidenced by the instant specification electron microscopy and binarization is well-understood, routine and conventional by the fact that it is commonly performed. Therefore, the active requirement of obtaining an image via electron microscope and binarization does not favor eligibility.
As discussed above the obtaining an image and binarization of it amounts to insignificant extra activity because they merely gather data upon which the calculation is performed.
Therefore claim 1 fails to meet the patent eligibility requirements under 35 USC § 101.
Claim 2 requires commensurate limitations and is not patent eligible for the same reasons discussed above.
Claims 3 and 14-15 further limit the magnification of the electron microscope or the material being imagined, however by the same analysis above, these limitation do not integrate the abstract idea into a practical application or provide significantly more than the abstract idea itself in each of claims 1 and 2.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Akita et al. (US pgPub 2023/0383077).
Regarding claim 2, Akita et al. teach a method (inherent in figure 1) for evaluating a compatibility of a thermosetting resin composition containing at least two kinds of resins and an inorganic filler (intended use, see discussion above with respect to MPEP 2111), the method comprising the following steps 1 B and 2B: Step 1 B: a step of obtaining a reflected electronic image ([0080] teaches acquire a backscattered electron image) of a cross section (cross-section in paragraph [0080]) of a cured product of the thermosetting resin composition ([0247] teaches a thermosetting resin and curing and paragraph [0081] teaches fiber reinforce plastic) using a scanning electron microscope ([0080]); and Step 2B: a step in which, in the reflected electronic image, a phase-separated resin region is referred to as a separation part and an average domain size DL of the separation part is determined ([0079]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akita et al. in view of Mizuki (JP2012188651) and further in view of Fujimaru (JP2003113320) (copy of publication submitted herewith).
Regarding claim 1, Akita teaches a method (fig. 1) for evaluating a compatibility of a thermosetting resin composition containing at least two kinds of resins and an inorganic filler (intended use), the method comprising the following steps 1A and 2A:
Step 1A: a step of obtaining a reflected electronic image of a cross section of a cured product of the thermosetting resin composition using a scanning electron microscope (see discussion above); and
Step 2A: a step in which, in the reflected electronic image, a phase-separated resin region is referred to as a separation part and a remaining region is referred to as a non-separation part, and the image is binarized such that the separation part has one value and the non-separation part has the other value (see discussion above, wherein paragraph [0080] also teaches binarization).
Akita fails to expressly suggest at an observation magnification of 50 to 250 times.
However Mizuki teaches at an observation magnification of 50 to 250 times ([0067] teaches 200X magnification depending on the separation size).
Mizuki modifies Akita by suggesting a magnification when phase separation is of order of 1 micron.
Since both inventions are directed towards measuring phase separation, it would have been obvious to use the magnification suggested in Mizuki in the method of Akita because it would be an appropriate magnification when phase separation is of order of 1 micron.
The combined device fails to disclose an area ratio of a region of the non-separation part of the resultant binarized image to a total region of the binarized image (the area of the region of the non-separation part x 100/area of the total region of the binarized image) is calculated as the area ratio Rw of the non-separation part.
However Fujimaru teaches in paragraph [0021] matrix phase and dispersed phase area ratio can be calculated using TEM images and image analysis equipment.
Fujimaru modifies the combined device by suggesting an additional calculation step of the area ratio.
Since both devices are directed towards imaging phase separation with an electron microscope, it would have been obvious to one of ordinary skill in the art to calculate the area ratio as suggested by Fujimaru because it would provide additional information about the composition being imaged to determine the quality of the manufactured composition.
Claims 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akita et al. in view of Mizuki (JP2012188651).
Regarding claim 3, Akita fails to disclose Akita fails to expressly suggest at an observation magnification of 50 to 250 times.
However Mizuki teaches at an observation magnification of 50 to 250 times ([0067] teaches 200X magnification depending on the separation size).
Mizuki modifies Akita by suggesting a magnification when phase separation is of order of 1 micron.
Since both inventions are directed towards measuring phase separation, it would have been obvious to use the magnification suggested in Mizuki in the method of Akita because it would be an appropriate magnification when phase separation is of order of 1 micron.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/ Primary Examiner, Art Unit 2881
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