The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This office action is in response to Applicant’s submission filed on 11 May 2026. THIS ACTION IS NON-FINAL.
Status of Claims
Claims 1-10 are pending.
Claims 2, 7-8, 10 are withdrawn.
Claims 1, 3-6 are rejected under 35 U.S.C. 101 for being directed to software per se.
Claim 9 is rejected under 35 U.S.C. 101 for being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 9 is objected to.
Claim Objections
Claim 9 is objected to because of the following informalities: “inputting … regarding a characteristic of the thermosetting resin composition is input or a to second machine learning model … “appeared to include typo, “… a to second machine model” should be “…to a second machine model”. Appropriate correction is required.
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.
Non-Statutory Subject Matter
Claims 1, 3-6 are directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed element could be computer software.
Judicial Exception
Claim 9 of the claimed invention are directed to a judicial exception, an abstract idea, without significantly more.
With regards to claim 9, the claim recites an article of manufacturing, which falls into one of the statutory categories.
2A – Prong 1: the claim, in part, recites “… acquiring the predicted composition data output from the first machine learning model or the predicted characteristic data output from the second machine learning model” (mental process and/or math concept), as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting generic computer elements, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the language about generic computer elements, “acquiring”, in the limitation citied above encompasses obtaining prediction data using abstract prediction models, which is based on observation, evaluation, judgement, and/or opinion, that could be performed by human using paper / pen / calculator. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
2A – Prong 2: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: (a) “A non-transitory computer readable medium storing a program for causing an information processing apparatus to perform a method”, which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)); (b) “inputting, to a first machine learning model that outputs predicted composition data including a predicted composition value regarding a composition of a thermosetting resin composition when target characteristic data including a characteristic value regarding a characteristic of the thermosetting resin composition is input or a to second machine learning model that outputs predicted characteristic data including a predicted characteristic value regarding the characteristic of the thermosetting resin composition when target composition data including a target composition value regarding the composition of the thermosetting resin composition is input, the target characteristic data or the target composition data”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
2B Analysis: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of: (a) “A computerized system comprising: one or more computer processors; and computer memory storing computer-useable instructions that, when used by the one or more computer processors, cause the one or more computer processors to perform operations…”, which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)); (b) “inputting, to a first machine learning model that outputs predicted composition data including a predicted composition value regarding a composition of a thermosetting resin composition when target characteristic data including a characteristic value regarding a characteristic of the thermosetting resin composition is input or a to second machine learning model that outputs predicted characteristic data including a predicted characteristic value regarding the characteristic of the thermosetting resin composition when target composition data including a target composition value regarding the composition of the thermosetting resin composition is input, the target characteristic data or the target composition data”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
Regarding claims 1, 3-6, the claims are directed to software per se, which is not one of the patentable categories. For compact persecution, judiciary exception analysis is provided below as the claims include elements directed to abstract idea.
(Independent Claims)
With regards to claim 1,
2A – Prong 1: the claim, in part, recites “… acquire the predicted composition data output from the first machine learning model or the predicted characteristic data output from the second machine learning model” (mental process and/or math concept), as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting generic computer elements, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the language about generic computer elements, “acquire”, in the limitation citied above encompasses obtaining prediction data using abstract prediction models, which is based on observation, evaluation, judgement, and/or opinion, that could be performed by human using paper / pen / calculator. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
2A – Prong 2: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: (a) “An information processing apparatus comprising: a control unit, wherein the control unit includes a predicting unit configured to”, which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)); (b) “input, to a first machine learning model that outputs predicted composition data including a predicted composition value regarding a composition of a thermosetting resin composition when target characteristic data including a characteristic value regarding a characteristic of the thermosetting resin composition is input or to a second machine learning model that outputs predicted characteristic data including a predicted characteristic value regarding the characteristic of the thermosetting resin composition when target composition data including a target composition value regarding the composition of the thermosetting resin composition is input, the target characteristic data or the target composition data”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
2B Analysis: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of: (a) “A computerized system comprising: one or more computer processors; and computer memory storing computer-useable instructions that, when used by the one or more computer processors, cause the one or more computer processors to perform operations…”, which is mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)); (b) “input, to a first machine learning model that outputs predicted composition data including a predicted composition value regarding a composition of a thermosetting resin composition when target characteristic data including a characteristic value regarding a characteristic of the thermosetting resin composition is input or to a second machine learning model that outputs predicted characteristic data including a predicted characteristic value regarding the characteristic of the thermosetting resin composition when target composition data including a target composition value regarding the composition of the thermosetting resin composition is input, the target characteristic data or the target composition data”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
(Dependent claims)
With regards to claim 3, the claim recites additional element of “wherein the thermosetting resin composition has a film shape”, providing more details description of data input to the abstract prediction models, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, at Step 2A, prong two, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of “wherein the thermosetting resin composition has a film shape”, providing more details description of data input to the abstract prediction models, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
With regards to claim 4, the claim recites additional element of “wherein the thermosetting resin composition is for interlayer dielectrics”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, at Step 2A, prong two, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of “wherein the thermosetting resin composition is for interlayer dielectrics”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
With regards to claim 5, the claim recites additional element of “wherein the composition of the thermosetting resin composition is presence or absence of at least one of a thermosetting resin, a thermoplastic resin, an inorganic filler, a flame retardant, a curing accelerator, and a solvent, a compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent, or a proportion of the compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, at Step 2A, prong two, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of “wherein the composition of the thermosetting resin composition is presence or absence of at least one of a thermosetting resin, a thermoplastic resin, an inorganic filler, a flame retardant, a curing accelerator, and a solvent, a compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent, or a proportion of the compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
With regards to claim 6, the claim recites additional element of “wherein the characteristic of the thermosetting resin composition is at least one of dimensional stability, heat resistance, elasticity, strength, extensibility, dielectric property, surface property, adhesion, electric insulation property, and flame retardance”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). Accordingly, at Step 2A, prong two, the additional elements individually or in combination do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of “wherein the characteristic of the thermosetting resin composition is at least one of dimensional stability, heat resistance, elasticity, strength, extensibility, dielectric property, surface property, adhesion, electric insulation property, and flame retardance”, which is extra-solution activity of pre-solution data gathering (see MPEP.2106.05(g)). The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception. The claim is not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Steingrimsson, et. al., US-PGPUB NO.20200257933A1 [hereafter Steingrimsson] in view of Nakajin et al., “Prediction of physical properties of thermosetting resin by using machine learning structural formulas of raw materials”, MRS Advances, 27 September 2020 [hereafter Nakajin].
With regards to claim 1, Steingrimsson teaches
“An information processing apparatus comprising: a control unit, wherein the control unit includes a predicting unit configured to (Steingrimsson, FIG.2, 6, 10, 13-15, 18, 22, 33, 35, Claim 1,
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):
input, to a first machine learning model that outputs predicted composition data including a predicted composition value … when target characteristic data including a characteristic value (Steingrimsson, FIG.2, 6, 10, 13, 22-25, Claim 1, [0386-0390],
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) … is input or to a second machine learning model that outputs predicted characteristic data including a predicted characteristic value … when target composition data including a target composition value … is input, the target characteristic data or the target composition data (Steingrimsson, FIG.2, 6, 10, 13, 22-25, Claim 1, [0369]
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), and acquire the predicted composition data output from the first machine learning model or the predicted characteristic data output from the second machine learning model (Steingrimsson, FIG.13, 22-27, Claim 1, [0386-0391],
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704
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)”.
Steingrimsson does not explicitly detail “…regarding a composition of a thermosetting resin composition…”.
However Nakajin teaches “…regarding a composition of a thermosetting resin composition… (Nakajin, Figure.1-3, Introduction and Computational details, p.1568-1571,
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491
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)”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Steingrimsson and Nakajin before him or her, to modify the process and system of using ML for composition prediction of Steingrimsson to include thermosetting resin as shown in Nakajin.
The motivation for doing so would have been to predict thermosetting resins properties (Nakajin, Abstract).
With regards to claim 6, Steingrimsson in view of Nakajin teaches
“The information processing apparatus according to claim1, wherein the characteristic of the thermosetting resin composition is at least one of dimensional stability, heat resistance, elasticity, strength, extensibility, dielectric property, surface property, adhesion, electric insulation property, and flame retardance (Steingrimsson, FIG.13, 22, 26,
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725
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)”.
Claim 9 is substantially similar to claim 1. The arguments as given above for claim 1, are applied, mutatis mutandis, to claim 9, therefore the rejection of claim 1 are applied accordingly.
The combined teaching described above will be referred as Steingrimsson + Nakajin hereafter.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Steingrimsson, et. al., US-PGPUB NO.20200257933A1 [hereafter Steingrimsson] in view of Nakajin et al., “Prediction of physical properties of thermosetting resin by using machine learning structural formulas of raw materials”, MRS Advances, 27 September 2020 [hereafter Nakajin] and Funamoto et al., US-PGPUB NO.20050285509A1 [Funamoto].
With regards to claim 3, Steingrimsson + Nakajin teaches
“The information processing apparatus according to claim 1”.
Steingrimsson + Nakajin does not explicitly detail “wherein the thermosetting resin composition has a film shape”.
However Funamoto teaches “wherein the thermosetting resin composition has a film shape (Funamoto, FIG.8, [0125] “… flat film shape with a uniform film thickness can be formed …’)”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Steingrimsson + Nakajin and Funamoto before him or her, to modify the process and system of using ML for composition prediction of Steingrimsson + Nakajin to include detailed composition as shown in Funamoto.
The motivation for doing so would have been for providing process for manufacturing organic EL device (Funmoto, Abstract).
With regards to claim 4, Steingrimsson + Nakajin teaches
“The information processing apparatus according to claim 1”.
Steingrimsson + Nakajin does not explicitly detail “wherein the thermosetting resin composition is for interlayer dielectrics”.
However Funamoto teaches “wherein the thermosetting resin composition is for interlayer dielectrics (Funamoto, FIG.7, [0103-0104] “… interlayer dielectric layer 230 covering the surface of the semiconductor film 210 and substrate P is formed ..’)”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Steingrimsson + Nakajin and Funamoto before him or her, to modify the process and system of using ML for composition prediction of Steingrimsson + Nakajin to include detailed composition as shown in Funamoto.
The motivation for doing so would have been for providing process for manufacturing organic EL device (Funmoto, Abstract).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Steingrimsson, et. al., US-PGPUB NO.20200257933A1 [hereafter Steingrimsson] in view of Nakajin et al., “Prediction of physical properties of thermosetting resin by using machine learning structural formulas of raw materials”, MRS Advances, 27 September 2020 [hereafter Nakajin] and Katagiri et al., US-PGPUB NO.20120172569A1 [Katagiri].
With regards to claim 5, Steingrimsson + Nakajin teaches
“The information processing apparatus according to claim 1”.
Steingrimsson + Nakajin does not explicitly detail “wherein the composition of the thermosetting resin composition is presence or absence of at least one of a thermosetting resin, a thermoplastic resin, an inorganic filler, a flame retardant, a curing accelerator, and a solvent, a compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent, or a proportion of the compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent”.
However Moriwaki teaches “wherein the composition of the thermosetting resin composition is presence or absence of at least one of a thermosetting resin, a thermoplastic resin, an inorganic filler, a flame retardant, a curing accelerator, and a solvent, a compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent, or a proportion of the compound contained in at least one of the thermosetting resin, the thermoplastic resin, the inorganic filler, the flame retardant, the curing accelerator, and the solvent (Katagiri, [0107],
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342
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)”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Steingrimsson + Nakajin and Katagiri before him or her, to modify the process and system of using ML for composition prediction of Steingrimsson + Nakajin to include more details of thermosetting resin composition as shown in Katagiri.
The motivation for doing so would have been for providing thermosetting resin having a benzoxazine ring (Katagiri, Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TSU-CHANG LEE whose telephone number is 571-272-3567. The fax number is 571-273-3567.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Omar Fernandez Rivas, can be reached 571-272-2589.
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/TSU-CHANG LEE/
Primary Examiner, Art Unit 2128
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