DETAILED ACTION
Remarks
This office action is issued in response to communication filed on 6/8/2026. Claims 1-15 are pending in this Office Action.
Objection to claim 4 has been withdrawn in response to applicant’s amendment that overcomes the objection.
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 Arguments
Applicant’s arguments filed 6/8/2026 have been fully considered and are not persuasive. The examiner respectfully traverses applicant’s arguments.
Applicant argues:” The claimed searching step specifically requires conducting the search by inverse analysis using the prediction models. The inverse analysis is performed, for example, by inputting target properties of the resin into the learned prediction models, which may be generated by, for example, determining features such as molecular fingerprints and/or descriptor. See Figs. 3 and 4 and paras. [0052], [0069]-[0075], [0084] and [0100] of the specification as published. The prediction models then predict the features of a novolac phenol resin that will yield the target properties, and the search results, such as recipes, are outputted based on the inverse analysis. See id., Fig. 4, and paras. [0077]-[0079] and [0109]-[0113]”.(Applicant’s arguments at page 9-10)
Examiner responses: The examiner respectfully disagrees. The human mind is capable of perform the searching step using inverse analysis such as using inverse analysis and recall from memory. Using the prediction models to perform the search amounts to no more than using a computer with generic models to apply the abstract idea. There is no details to how the models operate to perform the search. The examiner notes that the features upon which applicant relies (i.e., “The inverse analysis is performed, for example, by inputting target properties of the resin into the learned prediction models, which may be generated by, for example, determining features such as molecular fingerprints and/or descriptor”; “The prediction models then predict the features of a novolac phenol resin that will yield the target properties, and the search results, such as recipes, are outputted based on the inverse analysis”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues: “Instant claim 1 recites a step of generating a plurality of prediction models corresponding to a plurality of objective variables with actual data of a novolac phenol resin. The search technology for a novolac phenol resin having a desired physical property balance is improved by conducting the inverse analysis using the prediction models generated based on actual data pertaining to novolac phenol resins. Id., para. [0052]. Thus, the claimed generation step of the prediction models improves the technology of searching for a novolac phenol resin having a desired physical property balance.”( Applicant’s argument at page 11)
Examiner responses: The examiner respectfully disagrees. Per MPEP 2106.05(a), “the claim must include the components or steps of the invention that provide the improvement described in the specification”. There is nothing in the claim 1 that reflects steps that provide the improvement. Instead, claim 1 as recited only recites at a very high level of perform the search by inverse analysis with the prediction models. There is no detail steps of how the models operate that result in the improvement in the searching process and therefore, claim 1 does not include additional element that amount to significantly more than the judicial exception. Accordingly, Claim 1 is ineligible.
Applicant argues: “As discussed above, adding a specific limitation that improves any technology or technical field is considered as integrating the judicial exception into practical application, or additional elements that amount to an inventive concept. Specifically, instant claim 5 requires relearned prediction models which are relearned with the actual data of a novolac phenol resin used for the predetermined application, after the prediction models are generated with the actual data of a novolac phenol resin used for other than the predetermined application. The claimed relearned prediction models provide improved search accuracy, which is considered as integrating the searching step into practical application or in the alterative, significantly more to the claimed searching step.”(Applicant’s arguments at page 13)
Examiner responses: The examiner respectfully disagrees. The use of the models to relearn provide nothing more than mere instruction to implement an abstract idea on a generic computer. There is no details of how the models operate and therefore, elements of claim 5 do not provide an inventive concept. Claim 5 therefore is ineligible.
Applicant’s arguments with respect to claims rejected under 35 USC 103 have been considered and are moot in view of new ground of rejection.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 7 and 8:
Step 1: Statutory Category ?: Yes. claim 1 recites a method (i.e., a “process”) , claim 7 recites a device (i.e., a “machine”) and claim 8 recites a non-transitory computer readable medium (i.e., an article of manufacture) which are statutory categories.
Step 2A-Prong 1: Judicial Exception Recited ?: Yes.
Claim 1:
The limitation “searching for a novolac phenol resin having a desired physical property balance by inverse analysis using the prediction models” is a mental process that can be performed in the human mind using observation, evaluation, judgment and opinion (for example, recall from memory ). Except for the “using the prediction models” language, there is nothing in the claim that prevents the limitation from being performed in the human mind.
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 1 recites additional elements of “generating a plurality of prediction models corresponding to a plurality of objective variables, using actual data pertaining to a novolac phenol resin; wherein the actual data includes a polymer composition, a structural formula, a reaction solvent, and a reaction parameter pertaining to the novolac phenol resin, and the objective variables include developability, heat resistance, and molecular weight” is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic prediction models. Claim 1 further recite that the searching is performed by “an information processing device”. The processing device is also recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the additional element of “prediction models” and “information processing device” are at best equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 1 therefore is ineligible.
Claim 2 recites the additional element of “wherein in the step of generating the plurality of prediction models, a feature is calculated based on the actual data, and the feature is used as an explanatory variable for the prediction models” which is a mathematical calculations that falls within the mathematical concepts grouping of abstract idea. Claim 2 does not include any additional element that integrates the abstract idea into practical application in step 2A-Prong 2 and amounts to significantly more than the judicial exception in step 2B. Claim 2 is not patent eligible.
Claim 3 recites the additional element of “wherein the feature includes at least one of a molecular fingerprint or a descriptor” which is a mathematical calculations that falls within the mathematical concepts grouping of abstract idea. Claim 3 does not include any additional element that integrates the abstract idea into practical application in step 2A-Prong 2 and amounts to significantly more than the judicial exception in step 2B. Claim 3 is not patent eligible.
Claim 4 recites the additional element of “wherein the feature further includes information pertaining to an SP value of a solvent” which is a mathematical calculations that falls within the mathematical concepts grouping of abstract idea. Claim 4 does not include any additional element that integrates the abstract idea into practical application in step 2A-Prong 2 and amounts to significantly more than the judicial exception in step 2B. Claim 4 is not patent eligible.
Claim 5 recites the additional element of “wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application, and in the step of generating the plurality of prediction models, after the prediction models are generated using the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 5 therefore is ineligible.
Claim 6 recites the additional element of “wherein the predetermined application is semiconductor manufacturing application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 6 therefore is ineligible.
Claim 7:
The limitation “searches for a novolac phenol resin having a desired physical property balance by inverse analysis using the prediction models” is a mental process that can be performed in the human mind using observation, evaluation, judgment and opinion (for example, recall from memory ). Except for the “using the prediction models” language, there is nothing in the claim that prevents the limitation from being performed in the human mind.
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 7 recites additional elements of “generates a plurality of prediction models corresponding to a plurality of objective variables, using actual data pertaining to a novolac phenol resin; wherein the actual data includes a polymer composition, a structural formula, a reaction solvent, and a reaction parameter pertaining to the novolac phenol resin, and the objective variables include developability, heat resistance, and molecular weight” is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic prediction models. Claim 7 further recite that the searching is performed by “an information processing device comprising a control unit”. The control unit is also recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 7 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the additional element of “prediction models” and “control unit ” are at best equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 7 therefore is ineligible.
Claim 8:
The limitation “search for a novolac phenol resin having a desired physical property balance by inverse analysis using the prediction models” is a mental process that can be performed in the human mind using observation, evaluation, judgment and opinion (for example, recall from memory ). Except for the “using the prediction models” language, there is nothing in the claim that prevents the limitation from being performed in the human mind.
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 8 recites additional elements of “generates a plurality of prediction models corresponding to a plurality of objective variables, using actual data pertaining to a novolac phenol resin; wherein the actual data includes a polymer composition, a structural formula, a reaction solvent, and a reaction parameter pertaining to the novolac phenol resin, and the objective variables include developability, heat resistance, and molecular weight” is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic prediction models. Claim 8 further recites “non-transitory computer readable recording medium storing instructions” and “ a processor” both of which are recited at a high level of generality and amount s to no more than mere instructions to apply the exception using a generic computer components.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 8 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the additional element of “prediction models”, “non-transitory computer readable recording medium storing instructions” and “ a processor” are at best equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 8 therefore is ineligible.
Claim 9 recites the additional element of “wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application, and in the step of generating the plurality of prediction models, after the prediction models are generated using the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 9 therefore is ineligible.
Claim 10 recites the additional element of “wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application, and in the step of generating the plurality of prediction models, after the prediction models are generated using the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 10 therefore is ineligible.
Claim 11 recites the additional element of “wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application, and in the step of generating the plurality of prediction models, after the prediction models are generated using the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 11 therefore is ineligible.
Claim 12 recites the additional element of “wherein the predetermined application is semiconductor manufacturing application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim12 therefore is ineligible.
Claim 13 recites the additional element of “wherein the predetermined application is semiconductor manufacturing application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 13 therefore is ineligible.
Claim 14 recites the additional element of “wherein the predetermined application is semiconductor manufacturing application” which amounts no more than mere instructions to apply the exception using generic prediction models and equivalent of adding the words “apply it” to the judicial exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 14 therefore is ineligible.
Claim 15 recites the additional element of “further comprising synthesizing the novolac phenol resin having the desired physical property balance” which is insignificant extra solution activities(See MPEP 2106.05(g)) and is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)). Even when considered in combination, the additional elements do not provide an inventive concept, claim 15 therefore is ineligible.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kanazawa et al.(US Patent Application Publication 2022/359047 A1, hereinafter “Kanazawa” ) and further in view of Imada et al.(US Patent Application Publication 2018/0327533 A1, hereinafter “Imada”)
As to claim 1, Kanazawa teaches a method for searching for a novolac phenol resin that is performed by an information processing device, the method comprising the steps of:
generating a plurality of prediction models corresponding to a plurality of objective variables (Kanazawa par [0057] teaches training prediction model. Kanazawa par [0058] teaches plurality of machines learning models) with actual data of a novolac phenol resin ; and
searching for a novolac phenol resin having a desired physical property balance by inverse analysis with the prediction models,(Kanazawa par [0064]
teaches it is considered that there is a material database X collected in another case in the past, and at this time the purpose of use is to search a material having material physical properties B. Here, in a case where it is found that there is a correlation between the material physical properties A and B by expert knowledge, the material database X is likely to overlap with the material set having high material physical properties A. Accordingly, it is considered that the material having high material physical properties A is easily searched by learning the autoencoder using the material database X and extracting the material feature quantities” )
wherein the actual data includes a polymer composition, a structural formula (Kanazawa par [0035] teaches structural formula), a reaction solvent, and a reaction parameter pertaining to the novolac phenol resin, and the objective variables include developability, heat resistance, and molecular weight.
Kanazawa teaches wherein the actual data includes a structural formula (Kanazawa par [0035] teaches structural formula) but fails to expressly teach generating with actual data of a novolac phenol resin; wherein the actual data includes a polymer composition , a reaction solvent and
a reaction parameter pertaining to the novolac phenol resin, and the objective variables include developability, heat resistance, and molecular weight.
However, Imada teaches actual data of a novolac phenol resin (Imada par [0106] teaches phenol resins such as phenol novolac resin) wherein the actual data includes a polymer composition , a reaction solvent ,(Imada par [0056] teaches reaction solvent and par [0105] teaches plurality of polymers), and
a reaction parameter pertaining to the novolac phenol resin (Imada par [0057] teaches the reaction between the phenol compound (a1) and the aromatic aldehyde compound (a2) may be carried out, for example, at 60° C. to 140° C. for 0.5 to 20 hours. ), and
the objective variables include developability, heat resistance, and molecular weight. (Imada par [0102] teaches developability, heat resistance and molecular weight )
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to combine the teachings of Kanazawa and Imada to achieve the claimed invention. One would have been motivated to make such combination to expand the search capability.
As to claim 2, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 1, wherein in the step of generating the plurality of prediction models, a feature is calculated based on the actual data, and the feature is used as an explanatory variable for the prediction models. (Kanazawa par [0057] teaches the material property prediction unit inputs the structure formula information of the material experimental data to the learned autoencoder to generate feature quantities (descriptor) of the compound)
As to claim 3, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 2, wherein the feature includes at least one of a molecular fingerprint or a descriptor. (Kanazawa par [0057] teaches the material property prediction unit inputs the structure formula information of the material experimental data to the learned autoencoder to generate feature quantities (descriptor) of the compound.)
As to claim 4, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 3, wherein the feature further includes information pertaining to a solubility parameter value of a solvent.(Imada par [0058] teaches solubility for the triarylmethane compound (A) is high)
As to claim 5, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 1, wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties a. the data may be added to the training data) , and in the step of generating the plurality of prediction models, after the prediction models are generated with the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned with the actual data of a novolac phenol resin used for the predetermined application.( Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A, the data may be added to the training data. As described the prediction model for assuming the material physical properties A is capable of being learned)
As to claim 6, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 5, wherein the predetermined application is semiconductor manufacturing application. (Imada par [0103] teaches semiconductor manufacturing )
Claims 7 and 8 merely recite an information processing device and non-transitory computer readable recording medium when executed by a processor, perform the method of claim 1. Accordingly , Kanazawa and Imada teach every limitation of claims 7-8 as indicates in the above rejection of claim 1.
As to claim 9, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 2, wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A. the data may be added to the training data) , and in the step of generating the plurality of prediction models, after the prediction models are generated with the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application. (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A, the data may be added to the training data. As described the prediction model for assuming the material physical properties A is capable of being learned)
As to claim 10, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 3, wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A. the data may be added to the training data), and in the step of generating the plurality of prediction models, after the prediction models are generated using the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned using the actual data of a novolac phenol resin used for the predetermined application. (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A, the data may be added to the training data. As described the prediction model for assuming the material physical properties A is capable of being learned)
As to claim 11, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 4, wherein the actual data includes actual data of a novolac phenol resin used for a predetermined application and actual data of a novolac phenol resin used for other than the predetermined application (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A. the data may be added to the training data), and in the step of generating the plurality of prediction models, after the prediction models are generated with the actual data of a novolac phenol resin used for other than the predetermined application, the prediction models are relearned with the actual data of a novolac phenol resin used for the predetermined application. (Kanazawa par [0070] teaches in a case where the training data includes data other than the structural formula and the data of the material physical properties A, the data may be added to the training data. As described the prediction model for assuming the material physical properties A is capable of being learned)
As to claim 12, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 9, wherein the predetermined application is semiconductor manufacturing application. (Imada par [0103 teaches semiconductor manufacturing)
As to claim 13, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 10, wherein the predetermined application is semiconductor manufacturing application ( Imada par [0103 teaches semiconductor manufacturing)
As to claim 14, Kanazawa and Imada teach the method for searching for a novolac phenol resin according to claim 11, wherein the predetermined application is semiconductor manufacturing application. ( Imada par [0103 teaches semiconductor manufacturing)
As to claim 15, Kanazawa and Imada teach the method according to claim 1, further comprising synthesizing the novolac phenol resin having the desired physical property balance.(Imada par [0102] teaches after the end of the reaction, for example, a reprecipitation operation is performed by adding water to the reaction product and washing is performed with an appropriate organic solvent, thereby obtaining the desired resin containing phenolic hydroxyl group. In view of exhibiting excellent balance among developability, heat resistance, and substrate followability, and suitability as a resist material, the weight average molecular weight (Mw) of the resin containing phenolic hydroxyl groups obtained as described above is preferably 8,000 to 30,000. In addition, the polydispersity (Mw/Mn) of the resin containing phenolic hydroxyl groups is preferably 3 to 10)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fujishima et al. US Patent Application Publication 2023/0252319 A1, par [0008] discloses learning processing unit that uses characteristic data including a characteristic value regarding a characteristic of a thermosetting resin composition and composition data including a composition value regarding a composition of the thermosetting resin composition as learning data to execute a learning process .
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 HIEN DUONG whose telephone number is (571)270-7335. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Viker Lamardo can be reached at 571-270-5871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HIEN L DUONG/Primary Examiner, Art Unit 2147
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