DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 02/20/2026, with respect to claim rejections under 35 U.S.C. 101 have been fully considered, along with amendments, but they are not persuasive.
On page 15, Applicant states that “determining based on component weight percentage data, a known composition having a same component as a target composition” and “generating for the target composition, a second synthesized spectrum of the target composition based on a synthesized spectrum of the known composition and on a first synthesized spectrum of the target composition”, cannot be considered mental steps as that overlooks the technical nature and volume of data. This is not persuasive because the claim, as written recites that the first two spectrums are generated from weight percentage compositions and matrix correction procedures, but does not positively recite determining the weight percentage compositions or matrix corrections. The claim, as written, requires determining a known composition “based on” component weight percentage data, then generating a spectrum of a target composition “based on” two other spectrums, in other words, looking at two spectrums and making a third, which are considered mental steps.
On page 16, the Applicants remarks about the additional elements and integration into a practical application are also not persuasive. The only additional elements are the processor and memory that perform the mental steps discussed above, meaning the computer is used as a tool in its expected capacity (see MPEP 2106.05(f) (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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 (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.). As stated above, the claim merely recites using two spectrums to make a third, the component weight composition and matrix correction are not claimed to be performed within the claim or by the processor and memory.
Additionally, Claim 15 is still not directed toward one of the four statutory categories and is considered “software per se” as it does not have a physical or tangible form (see MPEP 2106.03 I. Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations; […] a product claim to a software program that does not also contain at least one structural limitation (such as a "means plus function" limitation) has no physical or tangible form, and thus does not fall within any statutory category).
Applicant's arguments filed 02/20/2026, with respect to rejections of claims 1-4 and 7 under 35 U.S.C. 102/103 have been fully considered, along with amendments, but they are not persuasive.
Beginning on page 19, Applicant states that the cited Dasaratha reference does not disclose using "component weight percentage data" to determine a "known composition having a same component as a target composition," nor does it disclose any matrix correction procedure or weight-percentage composition of a "target composition." This is not persuasive because Dasaratha teaches using mass spectrometers, which provide component weight percentage, and Euclidian distance of the resultant spectrum to determine the matching library spectrum. As stated above, the generation of the spectrum of the known composition and first synthesized spectrum from their weight percentage compositions and using matrix correction are not positively recited as being performed by the claimed system, and therefore do not carry patentable weight.
Applicant also states that Dasaratha does not teach a first synthesized spectrum of the target composition. However, this is not persuasive because Dasaratha teaches that the spectrum of the unknown (target) compound, as well as the known compounds, may be “corrected” to remove all undesirable signals and artifacts that are present in the spectrum and are not related to the chemical compositions of the unknown mixture and known compounds (Dasaratha [0016]).
Applicant’s arguments, beginning on page 18, filed 02/20/2026, with respect to rejections of claims 8-20 under 35 U.S.C. 102/103 have been fully considered, along with amendments, and are persuasive, insofar that the cited prior art reference does not seem to fairly teach or suggest to generating, by the system, an intermediary synthesized relationship being a relationship defining a per-energy-range delta of photon counts, in other words, synthesizing a revised spectrum of a target composition through analysis of photon counts. The rejections of claims 8-20 under 35 U.S.C. 102/103 have been withdrawn.
Applicant’s arguments, beginning on page 20, filed 02/20/2026, with respect to rejections of claims 5 and 6 under 35 U.S.C. 103 have been fully considered, along with amendments, and are persuasive, insofar that the cited prior art reference seems to teach away from applying, to the weight percentage composition of the components of the known composition, scales for the components of the known composition based on a result of the matrix correction procedure on the first sum, the matrix correction procedure comprising at least one of a ZAF analysis, an inverse ZAF analysis, a PAP analysis, an Armstrong analysis, or an XPHI analysis, wherein the applying causes generation of a scaled synthesized spectrum, in a form of photon counts per energy range, being the synthesized spectrum of the known composition.. The rejections of claims 5 and 6 under 35 U.S.C. 103 have been withdrawn.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, Claim 1 recites:
A system, comprising:
a memory that stores computer executable components; and
a processor that executes at least one of the computer executable components that:
determines, based on component weight percentage data, a known composition having a same component as a target composition; and
generates, for the target composition, a second synthesized spectrum of the target composition based on a synthesized spectrum of the known composition and on a first synthesized spectrum of the target composition, the synthesized spectrum of the known composition having been generated from weight percentage composition of components of the known composition using a matrix correction procedure, and the first synthesized spectrum of the target composition having been generated from weight percentage composition of components of the target composition using the matrix correction procedure (Examiner notes the synthesized spectrum of the known composition and the first synthesized spectrum of the target composition having been generated from weight percentage composition of components using the matrix correction procedure are not positively recited elements of the claim and therefore do not carry patentable weight).
While Claim 8 recites:
A computer-implemented method, comprising:
synthesizing, by a system operatively coupled to a processor, a revised synthesized spectrum of a target composition, the synthesizing comprising:
generating, by the system, an intermediary synthesized relationship being a relationship defining a per-energy-range delta of photon counts a synthesized spectrum of a known composition and a first synthesized spectrum of the target composition, the synthesized spectrum of the known composition and the first synthesized spectrum of the target composition each having been generated from respective component weight percentages using a matrix correction procedure (Examiner notes the synthesized spectrum of the known composition and the first synthesized spectrum of the target composition having been generated from weight percentage composition of components using the matrix correction procedure are not positively recited elements of the claim and therefore do not carry patentable weight);
aggregating, by the system, the intermediary synthesized relationship and a measured spectrum of the known composition by combining photon counts of corresponding energy ranges; and
generating, by the system, an aggregated synthesized spectrum based on the aggregating and being the revised synthesized spectrum of the target composition.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under the Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (machine).
Additionally, the Examiner notes that Claim 15, is not directed toward one of the four statutory categories and is considered “software per se” as it does not have a physical or tangible form (see MPEP 2106.03 I. Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations; […] a product claim to a software program that does not also contain at least one structural limitation (such as a "means plus function" limitation) has no physical or tangible form, and thus does not fall within any statutory category). Claims 16-20 are rejected for their dependence on claim 15.
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim limitation, that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
For example in claim 1, the steps of “determines, based on component weight percentage data, a known composition having a same component as a target composition (determination based on information); and
based on a synthesized spectrum of the known composition and on a first synthesized spectrum of the target composition, generates a second synthesized spectrum of the target composition (output of analysis); and
generates, for the target composition, a second synthesized spectrum of the target composition based on a synthesized spectrum of the known composition and on a first synthesized spectrum of the target composition (make a third spectrum based on some combination or observation of the first two)” are treated by the Examiner as belonging to mental process grouping.
In claim 8, the step of “generating, by the system, an intermediary synthesized relationship being a relationship defining a per-energy-range delta of photon counts a synthesized spectrum of a known composition and a first synthesized spectrum of the target composition (determining a relationship based on subtraction); and
generating an aggregated synthesized spectrum based on the aggregating and being the revised synthesized spectrum of the target composition (addition of spectrum values)” is treated by the Examiner as belonging to mathematical concept grouping, while the steps of “synthesizing a revised synthesized spectrum of a target composition (build spectrum based on desired composition), comprising:
generating, by the system, an intermediary synthesized relationship being a relationship defining a per-energy-range delta of photon counts a synthesized spectrum of a known composition and a first synthesized spectrum of the target composition (determination of subtraction based relationship based on information); and
aggregating the intermediary synthesized relationship and a measured spectrum of the known composition (grouping/adding information); and
generating an aggregated synthesized spectrum based on the aggregating and being the revised synthesized spectrum of the target composition (performing the grouping/adding of information)” are treated as belonging to mental process grouping.
Similar limitations comprise the abstract ideas of Claim 15.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The above claims comprise the following additional elements:
Claim 1: a memory that stores computer executable components; and a processor that executes at least one of the computer executable components;
Claim 8: a processor;
Claim 15: a processor.
The additional elements of a memory (generic memory) and a processor (generic processor) are generally recited and are not qualified as particular machines.
In conclusion, the above additional elements, considered individually and in combination with the other claim elements do not reflect an improvement to other technology or technical field, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claims are directed to a judicial exception and require further analysis under the Step 2B.
However, the above claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B analysis).
The claims, therefore, are not patent eligible.
With regards to the dependent claims, claims 2-7, 9-14, and 16-20 provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 –
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasaratha et al. (US 20110153226 A1), hereinafter “Dasaratha”.
Regarding Claim 1, Dasaratha teaches a system, comprising:
a memory that stores computer executable components(Dasaratha [0043] the series of instructions are stored on a storage device, such as mass storage 406. However, the series of instructions can be stored on any suitable storage medium, such as a diskette, CD-ROM, ROM, EEPROM, DVD, Blu-ray disk, etc. Furthermore, the series of instructions need not be stored locally, and could be received from a remote storage device, such as server on a network, via network/communication interface 410. ); and
a processor that executes at least one of the computer executable components (Dasaratha [0043] In one embodiment, component identification process 408 described herein is implemented as a series of software routines run by hardware system 400. These software routines comprise a plurality or series of instructions to be executed by a processor in a hardware system, such as processor 402. […] The instructions are copied from the storage device, such as mass storage 406, into system library 404 and then accessed and executed by processor 402. See Fig. 4 402) that:
determines, based on component weight percentage data, a known composition having a same component as a target composition (Dasaratha [0015] At step 102, the spectrum of the unknown mixture is compared with the spectrum of each of a first plurality of library compounds. The library may contain the spectrum of one or more known compounds. See Fig. 1 102); and
generates, for the target composition, a second synthesized spectrum of the target composition (Dasaratha [0022] At step 106, a residual spectrum may be computed for each of the candidate mixture combinations by removing the fitted spectrum of the candidate mixture combination from the spectrum of the unknown mixture. See Fig. 1 106. The final residual spectrum of the unknown mixture is generated based on a known spectrum and a corrected first spectrum of the unknown mixture) based on a synthesized spectrum of the known composition (Dasaratha [0019] At step 104, a model is generated for each of the candidate mixture combinations obtained in the step 102. The model is used to generate scaling factors for each of the compounds present in the candidate mixture combination. See Fig. 1 104) and on a first synthesized spectrum of the target composition (Dasaratha [0016] The spectrum of the unknown mixture may be obtained using various spectroscopic techniques, such as, but not limited to, infrared, Raman, fluorescence and near infrared spectroscopy techniques. In an embodiment of the present invention, before comparing the spectrum of the unknown mixture with the spectrum of the known compounds, the spectrum of the unknown mixture, as well as the spectra of known compounds in the library, may be corrected. The correction is made to remove all undesirable signals and artifacts that are present in the spectrum and are not related to the chemical compositions of the unknown mixture and known compounds.), the synthesized spectrum of the known composition having been generated from weight percentage composition of components of the known composition using a matrix correction procedure, and the first synthesized spectrum of the target composition having been generated from weight percentage composition of components of the target composition using the matrix correction procedure (Examiner notes the synthesized spectrum of the known composition and the first synthesized spectrum of the target composition having been generated from weight percentage composition of components using the matrix correction procedure are not positively recited elements of the claim and therefore do not carry patentable weight).
Regarding Claim 2, Dasaratha further teaches at least one of the computer executable components further:
generates the second synthesized spectrum of the target composition based on a measured spectrum of the known composition obtained from a sample of established providence of the known composition (Dasaratha [0015] The library may contain the spectrum of one or more known compounds. In an embodiment of the invention, the library may be stored as various sub-libraries. The known spectra within the library must have been measured or modeled).
Regarding Claim 7, Dasaratha further teaches updates data in a database of known compositions, that includes the measured spectrum and the synthesized spectrum of the known composition and the second synthesized spectrum of the target composition, and determines the second synthesized spectrum of the target composition as a second known composition for determining a resultant synthesized spectrum of a second target composition by using the second synthesized spectrum as a reference spectrum in subsequent nearest-neighbor determinations and spectrum synthesis operations (Dasaratha [0025] The selected compounds are hereinafter referred to as potential compounds. Thus, the potential compounds are identified based on the comparison of the residual spectrum of each of the candidate mixture combination with the spectrum of the second plurality of library compounds. Also see [0028] At step 112, the search algorithm checks a first termination condition and determines whether another iteration of the algorithm is required. And Figs. 2 and 3. The comparisons are made iteratively until error is satisfactorily reduced).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dasaratha (as stated above) in view of Corbett et al. (US 20110144922 A1), hereinafter “Corbett”.
Regarding Claim 3, Dasaratha further teaches determines the known composition as being a nearest neighbor of a set of known compositions, including the known composition, to the target composition (Dasaratha [0017] A similarity measure is computed for the first plurality of library compounds. […] Further, the first plurality of library compounds may be sorted by the similarity measure and ranked in a descending or ascending order depending on the similarity measure used).
Although Dasaratha teaches mixture spectra percentages (Dasaratha [0032] [0032] FIG. 2 illustrates an example embodiment of the present invention in which the components of an unknown mixture are identified using the search algorithm. Consider a synthetic test mixture spectra created by combining 33% of the Raman spectra of 1.3-Cyclooctadiene, 33% of the Raman spectra of 1.5-Hexadiene and 33% of the Raman spectra of 1.7-Octadiene for illustrating various steps involved in the search algorithm.), Dasaratha is not relied upon to explicitly teach wherein the nearest neighbor is a composition having component weight percentages closer to component weight percentages of the target composition than other known compositions of the set of known compositions, the component weight percentages being determined from spectra using the matrix correction procedure (Examiner notes as stated above, the use of the matrix correction procedure is not positively recited and therefore does not carry patentable weight).
Corbett teaches the relationship between spectral percentages/ratios and weight percentages (Corbett [0013] If one measures a sample of pure iron and pure sulphur, the spectra of these elements can be overlaid onto the spectrum of pyrite appropriately. The result is shown in FIG. 4. In particular, FIG. 4 shows that scaling the iron spectrum 44 to 42.0% and the sulphur spectrum 46 to 41.5% allows them to fit the peaks in the pyrite spectrum 42. These numbers are the peak ratios of these elements, because they represent the ratio of the area of each peak relative to a pure sample of the element. They do not represent the weight percentage of the material.).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to modify Dasaratha in view of Corbett to explicitly teach wherein the nearest neighbor is a composition having component weight percentages closer to component weight percentages of the target composition than other known compositions of the set of known compositions, because the spectral percentages of Dasaratha can be converted to weight percentages and still be used to determine the closest composition (Corbett [0015] The peak ratios obtained previously can be converted to a weight percentage using a standard matrix correction algorithm such as ZAF corrections. ZAF corrections account for differences in the atomic number (Z) of the elements, the absorption factor (A) of x-rays travelling through the material, and fluorescence (F) of x-rays from elements stimulating the emission of x-rays from other elements.).
Regarding Claim 4, although the disclosure of Dasaratha (as stated above) teaches modeling mixtures according to their components (Dasaratha [0017] a principal component regression model, and a partial least squares model may be used to compute the similarity measure. Principal component regression models and partial least squares models are built using the library data and then applied to the unknown mixture to generate similarity measures. Also see [0015] In one embodiment of the present invention, the mixture may contain more than one compound), Dasaratha is not relied upon to explicitly teach determines the known composition based on identifying a linear combination of two or more other known compositions whose component weight percentage vectors are combined to approximate component weight percentages of the target composition.
Corbett teaches determines the known composition based on identifying a linear combination of two or more other known compositions whose component weight percentage vectors are combined to approximate component weight percentages of the target composition (Corbett [0094] The calculation to generate the optimal weights uses the standard linear least squares algorithm. The least squares algorithm solves an over-determined system of linear equations of the form Ax=b (Equation 1: Linear equation to be solved)).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to modify Dasaratha (as stated above) in view of Corbett to explicitly teach determines the known composition based on identifying a linear combination of two or more other known compositions whose component weight percentage vectors are combined to approximate component weight percentages of the target composition, because a mixture is made up of a combination of its components, whether that be a combination of a single substance or compounds, and therefore the mixture has to be the sum of its parts, whether expressed in total values or percentages (Corbett [0081] The iterative least squares analysis is a technique which uses standard linear least squares curve fitting to find the optimal weights for each template in order to synthesise the spectrum of an unknown material.).
The Examiner notes that there are currently no prior art rejections for claims 5, 6, and 8-20.
Conclusion
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 CHRISTIAN T BRYANT whose telephone number is (571)272-4194. The examiner can normally be reached Monday-Thursday and Alternate Fridays 7:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CATHERINE RASTOVSKI can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAN T BRYANT/Examiner, Art Unit 2857
Prosecution Insights