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 .
Specification
The use of the term ZETASIZER, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as (TM), SM, or (R) following the term. Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The use of the term TURBISCAN, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as (TM), SM, or (R) following the term. Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The use of the term QUBIT (referred to as "Qbit" in the application), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized and correctly spelled wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as (TM), SM, or (R) following the term. Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in the third limitation "a comparison between the prototype functional property feature values and target functional property feature values." While "the prototype functional property feature values" has proper antecedent basis from the second limitation, "target functional property feature values" lacks any prior introduction in the claim. The inconsistent article usage—"the" before "prototype functional property feature values" but no article before "target functional property feature values"—in the same parallel phrase creates ambiguity as to whether the target values are an assumed external input to the method or a step inadvertently omitted from the claim. A person of ordinary skill in the art reading this claim in light of the specification cannot determine with reasonable certainty whether the step of obtaining "target functional property feature values" is within or outside the scope of the claimed method.
For purposes of examination, "target functional property feature values" is interpreted under BRI to encompass any values characterizing the functional properties of a target—whether extracted from measured signals, predetermined, predicted, or retrieved from a database. The target functional property feature values are treated as an assumed external input to the method for purposes of prior art searching.
Claim 1 recites "determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values." The comparison required by this limitation necessarily depends upon having "target functional property feature values" available, yet the claim recites no step by which these values are obtained, measured, extracted, predicted, or otherwise determined. The two preceding steps produce only prototype-related data: the first step measures a prototype functional property signal, and the second step extracts prototype functional property feature values therefrom. No step in the claim establishes how, when, or by what means the target functional property feature values are produced or received. The specification at ¶[0025] states that the method "can include" step S200 ("determining functional property feature values for a target"), which is described at length at ¶[00101]–[00104] as the process of measuring target functional property signals and extracting feature values therefrom—the counterpart to what the claimed steps 1 and 2 do for the prototype. This S200 step is the source of the target functional property feature values used in the comparison recited in the third limitation. Its omission from claim 1 renders the scope of the claim uncertain: a person of ordinary skill in the art cannot determine whether the claim covers a method requiring a target measurement step, a method using only predetermined/external target values, or both. The claim therefore fails to particularly point out and distinctly claim the subject matter of the invention.
For purposes of examination, the limitation "determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values" is interpreted under BRI to cover any method in which a model uses any form of comparison between the prototype feature values and any set of target functional property feature values (from any source—measured, predetermined, predicted, or retrieved from a database) to output manufacturing variable values.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites “A method, comprising” a series of steps, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 1 is directed to an abstract idea. Specifically, claim 1 recites a mental process. The claim recites the following limitations, which set forth concepts that can practically be performed in the human mind, including observation, evaluation, judgment, and comparison:
extracting prototype functional property feature values from the prototype functional property signal…Extracting feature values from a signal is an act of observation and evaluation: a person can examine a measured functional property signal (for example, a force-versus-time texture curve) and identify or extract feature values such as a peak, a maximum, or a mean, as the specification itself describes (¶[0064]).
…determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values…This is an act of comparison and judgment: a person can compare two sets of values and decide how to adjust manufacturing inputs (such as ingredients or treatments) accordingly. The specification confirms that these determinations can be made manually using human domain knowledge (¶[00127], ¶[00128]).
These limitations therefore recite a mental process. See MPEP 2106.04(a)(2)(III).
Step 2A, Prong 2: The claim recites the following additional elements:
measuring a prototype functional property signal for a prototype sample, wherein the prototype sample is associated with a set of initial manufacturing variable values…This additional element constitutes insignificant extra-solution activity—namely, mere data gathering that obtains the input subsequently analyzed by the abstract idea. See MPEP 2106.05(g). The claim does not recite any particular machine or assay tool for performing the measuring; the measuring is recited at a high level of generality and is not tied to a particular machine that imposes meaningful limits on the claim. See MPEP 2106.05(b). The recitation that the determined values are “manufacturing variable values” merely generally links the abstract idea to the field of food or sample manufacturing; the claim does not recite actually manufacturing any sample. Generally linking the use of a judicial exception to a particular technological environment or field of use does not integrate the exception into a practical application. See MPEP 2106.05(h).
using a model… This additional element of using a model is recited at a high level of generality and amounts to mere instructions to apply the abstract idea using a generic model implemented on a generic computer. The specification describes the “model” as encompassing any of a broad range of generic methods, including regression, classification, neural networks, rules, heuristics, equations, selection from a library, and nearest-neighbor methods (¶[0054]), implemented using generic computing components such as CPUs, GPUs, servers, and cloud computing (¶[0087]). Mere recitation that a judicial exception is to be performed using a generic model and generic computer equipment in their ordinary capacity cannot integrate the judicial exception into a practical application. See MPEP 2106.05(f).
The judicial exception is not integrated into a practical application. The additional elements, considered individually and as an ordered combination, do not integrate the judicial exception into a practical application.
Under Ex Parte Desjardins, the specification is first evaluated to determine whether a person of ordinary skill in the art would recognize the claimed invention as providing an improvement to a technology or technical field, and the claim is then evaluated to determine whether it reflects that improvement. The specification describes certain advantages—namely, that comparing non-semantic feature values extracted from raw measurement signals provides a more accurate representation of the subjective sensory adjacency of a prototype to a target (¶[0031]); that training a model using feature values extracted from functional property signals can increase prediction accuracy and/or enable a smaller training dataset (¶[0032]); and that selecting a subset of predictive features can reduce computational complexity (¶[0033]). The first advantage is an improvement to the abstract analysis itself—a more accurate way of comparing data achieved by selecting which data to compare—rather than an improvement to any technology or technical field. See MPEP 2106.05(a); cf. SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018). The second and third advantages (¶[0032], ¶[0033])—increased prediction accuracy with a smaller training dataset, and reduced computational complexity achieved through feature selection—concern how a machine learning model is trained and operates. It is assumed arguendo that, as disclosed, these describe improvements to the functioning of the model of the type recognized as technological in Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB Sept. 26, 2025) (Appeals Review Panel Decision), such as reduced storage, reduced complexity, and improved model operation. See MPEP 2106.05(a).
In any event, the claim does not reflect any of these disclosed advantages, and so does not benefit from the improvement consideration regardless of how the advantages are characterized. Claim 1 does not recite training a model, does not recite selecting or weighting any subset of features, does not recite extracting non-semantic signal features by any particular technique, and does not recite any particular comparison technique. The claim instead recites a generic “extracting” of feature values, a generic “comparison,” and a generic “model.” Because the claim does not include the components or steps that purportedly provide the improvement, it does not benefit from the improvement consideration. See MPEP 2106.05(a); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016).
Accordingly, claim 1 does not integrate the judicial exception into a practical application.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception.
The additional element of measuring a prototype functional property signal is well-understood, routine, and conventional. The specification itself confirms the conventional nature of this data-gathering activity by listing a broad array of standard, off-the-shelf assay tools used to measure functional property signals, including a texture analyzer, rheometer, differential scanning calorimeter, spectrophotometer, and mass spectrometer (¶[0053]). This is an express statement in the specification demonstrating the well-understood, routine, and conventional nature of the element. See MPEP 2106.05(d). Moreover, the courts have recognized that mere data gathering is insignificant extra-solution activity that is well-understood, routine, and conventional. See MPEP 2106.05(g); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
The additional element of using a model is likewise well-understood, routine, and conventional. The specification describes the model as comprising generic, well-known model types—including regression, classification, neural networks, decision trees, Bayesian methods, k-means clustering, and nearest-neighbor methods—implemented on generic computing hardware (¶[0054], ¶[0087]). This is an express statement in the specification demonstrating the well-understood, routine, and conventional nature of the element. See MPEP 2106.05(d). The use of a generic computer to implement an abstract idea does not add significantly more. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Considered as an ordered combination, the additional elements add nothing that is not already present when they are considered individually. The claim recites the conventional sequence of gathering data (measuring a signal), analyzing that data through the abstract mental process (extracting feature values and determining variable values based on a comparison), and using a generic model to do so. This ordered combination of conventional data gathering followed by abstract analysis on a generic computer does not amount to significantly more than the abstract idea itself. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Accordingly, claim 1 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 USC 103 as being unpatentable over US Pat. No. 11,164,478 to Pichara et al. (cited in IDS, hereinafter Pichara) in view of US Pat. No. 10,791,753 to Bai et al. (hereinafter Bai).
Pichara discloses A method, comprising: (Pichara: Abstract and FIG. 10…Pichara discloses a computer-implemented method that uses machine learning, i.e., a trained prediction model, to mimic a target food item, which constitutes a method, "A prediction model can be trained using features of the source ingredients to match those of the given target food item"):
using a model, determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values (Pichara: Abstract…Pichara's trained prediction model (e.g., gradient boosting trees and Lasso regression) determines a formula comprising a set of source ingredients and their proportions, which constitutes a set of manufacturing variable values, by matching the candidate source-ingredient feature values to the feature values of the target food item, thereby determining the manufacturing variable values based on a comparison between prototype feature values and target feature values, "A formula comprising a combination of most relevant source ingredients and their proportions can be determined using the trained prediction model"; col. 2, ln. 1-23…the prediction algorithms are trained to match the source-ingredient features to the target food item, being a model-based determination of the formula from a comparison to the target's feature values, "Several prediction algorithms can be trained to match from the hypothesis space of the N source ingredients (used as data features) to the given target food item using a feature selection process").
Pichara does not expressly disclose measuring a functional property signal from a physical prototype sample and extracting feature values from that signal, but with Bai does teach:
measuring a prototype functional property signal for a prototype sample, wherein the prototype sample is associated with a set of initial manufacturing variable values (Bai: Abstract, col. 15, ln. 36-48 and FIG. 13…Bai measures an acoustic signal, a functional property signal under fig. 13:1306, produced by a food snack (the prototype sample) that is manufactured by a food processing unit according to input parameters such as frying temperature, frying time, and slice thickness, which constitutes a set of initial manufacturing variable values, "the acoustic quantitative texture measurement tool (1306) may be positioned immediately after the FPU (1320) and before a seasoning unit (1307) or packaging unit (1308). The texture measurement tool (1306) may be placed between any two stations in the process to capture acoustic signals from the passing product after laser excitation. According to a preferred exemplary embodiment, the tool (1306) records/captures acoustic signal when an energy excitation tool strikes the food snack from FPU (1320) and processes the acoustic signal to quantitatively measure a texture attribute with an acoustic model"; col. 18, ln. 19-32… the output controller (1312) may adjust an input parameter to the frying unit such as frying temperature or frying time. The output controller (1312) may adjust an input parameter to the slicing unit so that the slices are thinner or thicker depending on the correlation of the output texture attribute to the input parameters")
extracting prototype functional property feature values from the prototype functional property signal (Bai: FIG. 7 and col. 12, ln. 20-37…Bai applies a fast Fourier transform to the measured acoustic signal and identifies relevant frequencies and their associated intensities extracted from the signal, which constitutes functional property feature values extracted from the signal, "a fast fourier transformation (FFT) technique may be used to transform the acoustic signal from a time domain representation to a frequency domain representation"; FIG. 11 and col. 14, ln. 58-67…the extracted frequency features correspond to quantified texture attributes, "frequencies (1101) may be relevant for hardness and frequencies (1201) may be relevant for fracturability as determined by a statistical analysis")
Pichara and Bai are analogous art because they are from the same field of endeavor, specifically artificial-intelligence-driven food product development in which measured physical and/or chemical features of food are used to determine manufacturing and process variables. Both references are also reasonably pertinent to the same problem of producing a food product whose measured functional properties match those of a target.
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to combine Bai's measurement of a functional property signal from a physical food prototype, and extraction of feature values from that signal, with Pichara's prediction-model-based determination of manufacturing variable values, so as to drive Pichara's model with feature values measured from a physical prototype and refine the formula toward the target. This is a combination of known prior art elements according to known methods to yield the predictable result of more accurately matching the target's functional properties (KSR rationale (A)).
The suggestion/motivation for doing so is found in the references themselves: Pichara expressly teaches using instrumentation to measure physical and/or chemical features of the food to drive the matching (Pichara: col. 3, ln. 40-45…"Near-Infrared (NIR) spectroscopy techniques may be used to identify physical and/or chemical features of the ingredients"), and Bai expressly teaches a feedback loop in which measured texture features are used to control manufacturing input parameters so the product matches a target (Bai: Abstract…"feeds back texture attribute information to a controller that controls input parameters to food processing unit such that the texture attribute of a resultant food snack falls within an acceptable limit"). A person of ordinary skill in the art would therefore have been motivated to supply Pichara's prediction model with functional-property feature values measured from a physical prototype as taught by Bai.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,941,538. Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of claim 1 of the Patent falls within the scope of instant claim 1, which is generic to the species claimed in the Patent. Instant claim 1 recites a method of (i) measuring a prototype functional property signal for a prototype sample associated with a set of initial manufacturing variable values, (ii) extracting prototype functional property feature values from the prototype functional property signal, and (iii) using a model to determine a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values. Claim 1 of the Patent recites each of these three limitations and merely adds further limitations that narrow the extraction step (requiring that the prototype functional property feature values comprise a first and a second prototype functional property feature value) and the comparison step (requiring a prototype characterization comprising a weighted aggregation of the first and second feature values, a target characterization, and a distance between the prototype and target characterizations). Every method that practices claim 1 of the Patent therefore necessarily practices each and every limitation of instant claim 1, so instant claim 1 is anticipated by claim 1 of the Patent. Allowing instant claim 1 would improperly extend the right to exclude already granted by the narrower patent claim. Because the patent claim is a species that falls wholly within the genus of instant claim 1, no separate obviousness analysis is required (MPEP § 804, subsection II.B.2)
Instant Claim 1 ↔ U.S. Pat. No. 11,941,538 Claim 1
Instant Application Claims
U.S. Pat. No. 11,941,538 Claims
A method, comprising:
A method, comprising:
measuring a prototype functional property signal for a prototype sample, wherein the prototype sample is associated with a set of initial manufacturing variable values;
measuring a prototype functional property signal for a prototype sample, wherein the prototype sample is associated with a set of initial manufacturing variable values;
extracting prototype functional property feature values from the prototype functional property signal; and
extracting prototype functional property feature values from the prototype functional property signal, wherein the prototype functional property feature values comprise a first prototype functional property feature value and a second prototype functional property feature value; and
using a model, determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values.
using a model, determining a set of manufacturing variable values based on a comparison between the prototype functional property feature values and target functional property feature values, wherein the comparison between the prototype functional property feature values and the target functional property feature values is determined by: determining a prototype characterization comprising a weighted aggregation of the first prototype functional property feature value and the second prototype functional property feature value; determining a target characterization based on the target functional property feature values; and determining a distance between the prototype characterization and the target characterization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN CHEN whose telephone number is (571) 272-4143. The examiner can normally be reached M-F 10-7.
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/ALAN CHEN/Primary Examiner, Art Unit 2125
Prosecution Insights