DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02 September 2026 has been entered.
Response to Arguments
Applicant's arguments filed 02 September 2026 have been fully considered but they are not persuasive.
Claim rejections under 35 USC 112(a): written description1
Response to (1)
The remarks take the position that paragraph [0041] teaching a zinc concentration Xc and a zinc concentration Yc determined by elemental analysis and determining whether those concentrations satisfy a relationship xc≥c x Uc is sufficient to satisfy the claim requirement of “calculate a zinc concentration Xc in a field of view…and a zinc concentration Yc in a second field of view”.
This has not been found persuasive. Specifically, while paragraph [0041] teaches the concentrations exist and elemental analysis is performed, the specification is devoid of any prose, equation, flow chart of steps as to how the elemental analysis is performed to calculate concentrations.
That is, paragraph 0041 does not teach that elemental analysis determines concentrations. Instead paragraph [0041] teaches “elemental analysis” and “comparing a zinc concentration Xc and Yc. That is, there is no disclosed nexus between the elemental analysis and the “calculated concentrations”. Moreover, even if there was, the specification still omits the necessary steps to use the elemental analysis to determine or calculate concentrations.
MPEP 2161.01 (I) recites:
“It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015”
The issue here is not whether one of ordinary skill in the art could write a program to perform elemental analysis, but whether the specification discloses the steps to perform elemental analysis to calculate concentrations within fields of view.
Paragraph [0030] of the published application recites:
“The method for discriminating whether or not a carbon black in the elastomer composition is a recovered carbon black desirably includes: elemental analysis using an electron microscope image of the elastomer composition; comparing a zinc concentration Xc in the field of view including X pieces of primary particles of the carbon black with a zinc concentration Yc in the field of view including Y pieces of primary particles of the carbon black; and comparing the fields of view satisfying a relationship: X>Y.”
Paragraph [0044] of the published application recites
“As described above, in the discrimination method including: elemental analysis using an electron microscope image of the elastomer composition; comparing a zinc concentration Xc in the field of view including X pieces of primary particles of the carbon black with a zinc concentration Yc in the field of view including Y pieces of primary particles of the carbon black; and comparing the fields of view satisfying a relationship: X>Y, for example, when the comparison of the fields of view satisfying a relationship: X>Y is performed by comparing a field of view including 50 pieces or more of primary particles of the carbon black with a field of view including 20 pieces or less of primary particles of the carbon black, and the zinc concentration Xc in the field of view including 50 pieces or more and the zinc concentration Yc in the field of view including 20 pieces or less determined by the elemental analysis satisfy a relationship: Xc≥2×Yc, it is sufficiently plausible that zinc is localized on or near the surface of the carbon black. Thus, the carbon black can be discriminated with high accuracy as a recovered carbon black.”
That is, the specification is devoid of the steps necessary to perform elemental analysis. Moreover, the specification is completely silent with respect to how the concentrations are calculated within the claimed fields of view. Instead, the specification merely recites that concentrations exist.
This amounts to the desired result of performing elemental analysis to calculate concentrations, when the specification is notably silent with respect to how the inventor intends to achieve the elemental analysis, therefore failing to meet the written description requirement under 35 USC § 112(a).
Moreover, the specification never suggests that the elemental analysis calculates the zinc concentrations. Specifically, zinc concentrations are only disclosed to exist:
[0030] “a zinc concentration Yc in the field of view including Y pieces of primary particles”
[0031] “Specifically, in the comparison of the zinc concentration Xc in the field of view including as many as X pieces of primary particles of the carbon black with the zinc concentration Yc in the field of view including as few as Y pieces of primary particles of the carbon black where the relationship X>Y is satisfied, when the concentration Xc is remarkably higher than the concentration Yc, zinc can be assumed to be localized on or near the surface of the carbon black”
Indeed the term calculation does not even present in the applicant’s originally filed specification.
At best the specification suggests zinc concentrations exist in fields of view, however there is no disclosure that they are calculated via elemental analysis. Applicant is remined that “New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971)” (MPEP 2163 (I)(B))
Here, there is no suggestion that the disclosed elemental analysis calculates any concentration within any field of view.
Therefore, the claims are still rejected under 35 USC 112(a).
Response to (2)
The remarks argue without evidence the specification identifies relevant observation equipment, analytical technique and measurement framework to convey possession of the claimed invention. As discussed above this has not been found persuasive. That is, while electron microscopy and elemental analysis is disclosed, there is no disclosed nexus between the calculation of concentration and elemental analysis. Moreover, there is no specific disclosure of the specific steps taken in elemental analysis to obtain any concentration.
The remarks point to the specification’s disclosure of STEM to suggest this is more than an abstract idea. This has not been found persuasive as the question under 35 USC 112(a) is with respect to possession. The specification does disclosure a STEM, however this does not resolve the issue as to how the result of calculating concentrations over fields of view are achieved.
The remarks then point to the disclosure of elemental analysis, however, this again does not resolve how the concentrations are determined and/or calculated in the specifically claimed fields of view.
Lastly, the remarks take the position that determining concentrations within a selected region of an image would have been understood by POSITA as conventional. The remarks provide no evidence. However, if an affidavit or declaration under 37 CRF 1.132 is filed with evidence that, as of the earliest effective filing date, this was understood to one of ordinary skill in the art such evidence may be sufficient to overcome the rejections under 35 USC 112(a).
Response to (3)
The remarks take the position that paragraph [0004] is directed towards a fundamentally different technique and therefore the use of elemental analysis to determine concentrations is a fundamentally different technique. While this is true, the instant specification still fails to disclose how the concentrations within respective fields of view are calculated, therefore does not resolve the issues with respect to possession.
Response to (4)
The remarks take the position that the amended subject matter is supported by the instant specification. This has been found persuasive, however does not remedy the issues discussed in the Final Rejection under 35 USC § 112(a).
Rejections under 35 USC 112(b)
The remarks take the position that the amendment overcomes the indefinite issues. This has been found persuasive, by amendment a new issue is raised as discussed below.
Rejections under 35 USC § 101
The remarks take the position that the instant invention resides in the discovery of a unique physical and chemical characteristic of recovered carbon black. Specifically the relationship Xc ≥2 x Yc is a technical parameter to determine a physical difference in nanostructure and is not a mathematical calculation, but rather forms part of an analytical process in the field of material science.
This has not been found persuasive. Initially, Xc ≥2 x Yc is an inequality, which is well understood to be a mathematical concept. Inequalities are defined as “A mathematical statement that one expression is greater than or less than another in value. The following symbols are used:
x>y for ‘x is greater than y’ x < y for ‘x is less than y'”2
That is, in addition to the mathematical statement of calculating concentrations, an inequality is a mathematical concept.
Moreover, the remarks take the position that the inequality forms part of an analytical process disclosed in paragraphs [0028]-[0030]. This has not been found persuasive. The physical material (i.e. carbon black) is only required in the observing step that uses an electron microscope to obtain an image. In other words, the observing is insignificant extra solution of data gathering. MPEP 2106 (b)(III) recites:
“Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)),…We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)).”
Here, the electron microscope only nominally contributes to the execution of the claimed method in that it gathers data (i.e. image) in which the abstract idea is performed (i.e. image analysis, calculations and comparison as claimed).
The remarks suggests the improvement is to the field of material analysis of reliably discriminating recovered black from general purposed carbon black. However, since the discrimination is defined mathematical concepts (an inequality from calculated concentrations of zinc) the improvement is towards an abstract idea itself. MPEP 2106 recites: “Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546. Moreover, MPEP 2106.05 (a) recites “it is important to keep in mind that an improvement in the abstract idea itself…is not an improvement in technology”
In other words, because the discrimination is defined as a comparison via an inequality (i.e. a mathematical concept) from calculated concentrations (mathematical concept). The claimed invention is directed towards an improvement in an abstract idea itself, which does not render the claim non-abstract. Therefore, the claims still fail to meet the patent eligibility requirements under 35 USC § 101.
Lastly, the remarks take the position that the claims require significantly more than an abstract idea. Specifically, the remarks take the position that the claimed invention does not merely employ the electron microscope by utilizes a specific discrimination protocol in which “a field of view containing 50 or more primary particles is compared with a field of view containing 20 or fewer primary particles”. This in and of itself is a mathematical concept of comparing data, using some undisclosed elemental analysis. The specific comparison is calculated via the claimed inequality, therefore as discussed above the “discrimination protocol” is itself an abstract idea performed on data gathered from a TEM.
Therefore, the remarks are unpersuasive and the rejection stands as reiterated herein below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 fails to meet the written description requirement for requiring “performing elemental analysis within the image to calculate a zinc concentration Xc in a first field of view including 50 or more primary particles of the carbon black and a zinc concentration Yc in a second field of view including 20 or fewer primary particles of the carbon black.”. The instant specification recites in paragraph [0004] of the published application “conventional analysis methods such as measurement of primary particle size with an electron microscope and measurement of aggregate distribution based on DBP oil absorption, IA, CTAB, or particle size distribution have difficulty in discriminating between a recovered carbon black and a conventional carbon black.”
That is, the instant specification admits that conventionally using an electron microscope discriminating with a SEM is difficult. The instant specification then suggests the solution is via the claimed method (see paragraph [0004]).
However, the instant specification is silent as to how the claimed elemental analysis is performed to calculate zinc concentrations in different fields of view.
Paragraph [0030] of the published application recites:
“The method for discriminating whether or not a carbon black in the elastomer composition is a recovered carbon black desirably includes: elemental analysis using an electron microscope image of the elastomer composition; comparing a zinc concentration Xc in the field of view including X pieces of primary particles of the carbon black with a zinc concentration Yc in the field of view including Y pieces of primary particles of the carbon black; and comparing the fields of view satisfying a relationship: X>Y.”
Paragraph [0044] of the published application recites
“As described above, in the discrimination method including: elemental analysis using an electron microscope image of the elastomer composition; comparing a zinc concentration Xc in the field of view including X pieces of primary particles of the carbon black with a zinc concentration Yc in the field of view including Y pieces of primary particles of the carbon black/
Therefore, it would be understood to one of ordinary skill in the art that distinguishing whether a carbon black is a recovered carbon black via examining the presence of an inorganic substance is done via image analysis, however the specification is devoid of any disclosure as to how the image analysis is performed. Therefore claim 1 is a result without any disclosure as to how the result is achieved. MPEP 2163.03 (V) recites:
“An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”
Here, the claim merely requires examining a surface for the presence of inorganic substance to achieve the result of discriminating between carbon black and recovered carbon black. The specification discloses this is achieved via image analysis ([0042]), however there is no disclosure as to how the image analysis is achieved. Image analysis is a computer implemented functional limitation as evidenced by the analysis image generated from the STEM image in the drawings. MPEP 2161.01 (I) recites:
“Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”
Here, the specification merely shows the result of image analysis and therefore does not provide any algorithm (steps/procedure) as to how the image analysis is performed such that examination may be achieved for the purpose of discriminating between carbon black and recycled carbon black. As further indicated in MPEP 2161.01(I): “It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015).
Here, the specification is silent with respect to how the image analysis is performed, therefore the claim fails to meet the written description requirement for the examining step and subsequent discrimination result.
Lastly, MPEP 2173.05 (g) recites “Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197”.
Here, the claimed method covers all means of elemental analysis, when no means of elemental analysis is disclosed.
Claims 2-5 fail to meet the written description requirement by virtue of their dependencies on rejected claim 1.
Additionally, claim 1 has been amended to include new matter not supported by the originally filed specification. Claim 1 lacks written description for “performing elemental analysis within the image to calculate a zinc concentration Xc in a first field of view including 50 or more primary particles of the carbon black, and a zinc concentration Yc in a second field of view including 20 or fewer primary particles of the carbon black”
Specifically, the specification is devoid of any means of calculating zinc concentrations in respective fields of view via elemental analysis. See further discussion in the response to arguments section above.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 fails to meet the enablement requirement for reciting “A method for discriminating whether or not a carbon black is a recovered carbon black, comprising observing, in scanning transmission electron microscopy (STEM) mode with a transmission electron microscope (TEM), an elastomer composition containing an elastomer component and the carbon black to obtain an image with an electron microscope; performing elemental analysis within the image to calculate a zinc concentration Xc in a first field of view including 50 or more primary particles of the carbon black, and a zinc concentration Yc in a second field of view including 20 or fewer primary particles of the carbon black; and comparing the calculated Xc and Yc, and, when Xc is two times or more of Yc (Xc > 2 xYc), discriminating the carbon black as a recovered carbon black.”
Specifically, the claim requires an elemental analysis of an image obtained from an electron microscope to calculate zinc concentrations in respective fields of view and via comparison of the concentrations discriminating carbon black as recovered carbon black.
The breath of the claim is any elemental analysis to perform the claimed concentrations and comparison via an inequality. The nature of the invention is elemental analysis of an image ([0030], [0044]) from a TEM or electron microscope ([0015], [0024]). The state of the prior art as admitted at paragraph [0004] of the originally filed specification is that “conventional analysis methods such as measurement of primary particle size with an electron microscope and measurement of aggregate distribution based on DBP oil absorption, IA, CTAB, or particle size distribution have difficulty in discriminating between a recovered carbon black and a conventional carbon black.”
That is, as readily admitted in the applicant’s specification, one skilled in the art would recognize that it is difficult to discriminate between a recovered carbon black and a conventional carbon black by elemental analysis methods of primary particle size or distribution with an electron microscope.
Moreover, the instant specification teaches “samples are observed with TEM and images thereof are captured at a magnification at which the primary particle size of the carbon black can be measured. Elemental analysis is performed in the same field of view, and elemental mapping images are obtained” ([0038]). Additionally, paragraph [0032] teaches the determination is made by a comparison wherein “a larger amount of zinc is assumed to be present on or near the surface of the carbon black as compared to the zinc distribution in the entire elastomer composition” ([0032]).
That is, by some elemental analysis that is different from the conventional elemental analysis (that is measuring distribution/particle size in the conventional electron microscope image appears difficult to discriminate carbon black from recovered carbon black), the claim is able to calculate zinc concentrations in respective fields of view in order for the discrimination to occur via comparison of the concentrations.
However, the specification is silent with respect to any elemental analysis steps or procedure to allow for the discrimination of recovered carbon black and conventional carbon black. That is, the discrimination is only possible via the elemental analysis however the specification is devoid of any disclosure as to how the elemental analysis is performed so that the discrimination may occur. This paired with the admission that it was known that discrimination to be difficult, suggests that there is not enough information for one of ordinary skill in the art to make and use the claimed invention.
The remarks try to resolve the issue of written description by pointing to prior art. However, MPEP 2161.01 (III) recites:
“The specification need not teach what is well known in the art. However, applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art. ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941, 94 USPQ2d 1823, 1827 (Fed. Cir. 2010) … ("Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent."). The Federal Circuit has stated that "‘[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’" Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1115 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)). See also Idenix Pharms. LLC v. Gilead Scis. Inc., 941 F.3d 1149, 1159-61, 2019 USPQ 2d 415844 (Fed. Cir. 2019). ”
Here, the novel aspect of the claimed invention is the discrimination recovered carbon black from conventional carbon black via elemental analysis. However, the specification is notably silent with how this is performed. While elemental mapping or analysis is known to the art, as admitted by the instant specification it is difficult to distinguish between the two using conventional methods. Therefore, there is not enough information to allow one of ordinary skill in the art to make and use the claimed invention.
Paragraph [0004] demonstrates that electron microscopy and particle size/distribution (i.e. elemental analysis or mapping) could not predictably discriminate between recovered and conventional carbon black.
The specification provides no direction or working examples of elemental analysis to calculate concentrations. Therefore, the claim as a whole fails to meet the enablement requirement under 35 USC § 112(a).
Claims 2-5 fail to meet the enablement requirement by virtue of their dependencies on rejected claim 1.
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.
Claims 1-5 are 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 is vague and indefinite for reciting “observing…with a transmission electron microscope.. an elastomer composition…to obtain an image with an electron microscope” because it is not clear whether the claimed “an electron microscope” electron microscope that obtains the image is the same or different from the TEM that performs imaging via STEM. It appears from the specification that the transmission electron microscope also the claimed “TEM”, however no unambiguous determination can be made.
Claim 1 recites “a recovered carbon black” in lines 1-2 and “a recovered carbon black” in the last line of claim 1 because it is not clear whether the second “a recovered carbon black” is defining a different carbon black from “a recovered carbon black” in lines 1-2 or if it is referring back to the “recovered black” of lines 1-2. It appear that the last line should recite “the recovered carbon black”, however no unambiguous determination can be made.
Moreover, claim 1 is vague and indefinite for reciting “observing, in scanning transmission electron microscopy (STEM) mode with a transmission electron microscope” because it is not clear whether the claimed TEM is in a STEM mode or if the STEM mode is associated with a separate instrument. This issue may be overcome by amending the claim to recite observing with a transmission electron microscope operating in a scanning transmission electron microscopy (STEM) mode…
Claims 2-5 are vague and indefinite by virtue of their dependencies on rejected claim 1.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) discriminating whether or not a carbon black is a recovered carbon black comprising examining the presence of an inorganic substance on or near a surface of the carbon black.
The broadest reasonable interpretation is the plain meaning of claim 1.
Step 1: is the claim to a process, machine, manufacture or composition of matter?
Yes a process.
Step 2A prong one: does the claim recite an abstract idea?
Yes.
MPEP 2106.04(a) enumerates abstract ideas including mathematical concepts and metal processes.
Claim 1 recites “performing elemental analysis within the image to calculate a zinc concentration xc in a first field of view…and a zinc concentration Yc in a second field of view…and comparing the calculated Xc and Yc, and, when Xc is two times or more of Yc (Xc > 2 xYc), discriminating the carbon black as a recovered carbon black..
Elemental analysis is a calculation of concentration (mathematical concept) and comparison via an inequality is also mathematical concept.
Thus the claim contains a mathematical concept.
Step 2A prong two: does the claim recite additional elements that integrate the judicial exception into a practical?
No. Claim 1 requires “observing , in scanning transmission electron microscopy (STEM) mode with a transmission electron microscope (TEM), an elastomer composition containing an elastomer component and the carbon black to obtain an image with an electron microscope”
MPEP 2106.05(b) (III) recites “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)),…We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)).”
Since the claim only uses the electron microscope to gather data for the calculating step, the observing via an electron microscope does not amount to significantly more than data gathering steps.
As discussed above in the response to arguments section the claimed and disclosed improvement is discriminating between convention and recovered carbon black, however because the discrimination process is defined as an inequality (i.e. a mathematical concept) the discrimination process is itself an abstract idea.
MPEP 2106 recites: “Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546. Moreover, MPEP 2106.05 (a) recites “it is important to keep in mind that an improvement in the abstract idea itself…is not an improvement in technology”
In other words, because the discrimination is defined as a comparison via an inequality (i.e. a mathematical concept) from calculated concentrations (mathematical concept). The claimed invention is directed towards an improvement in an abstract idea itself, which does not render the claim non-abstract.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judiciary exception?
As admitted in paragraph [0004] electron microscopes are conventional to the art3. MPEP 2106.05(d) recites
"If, however, the additional element (or combination of elements) is no more than well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
Here, as evidenced by the instant specification electron microscopy measurement methods are well known routine and conventional.
Moreover, as discussed in the response to arguments section, this limitation amounts to insignificant extract activity because the electron microscope merely gathers data upon which the calculation is performed.
Therefore, claim 1 fails to meet the patent eligibility requirements under 35 USC § 101.
Claims 2-4 and further limit the abstract idea above without providing anything further than the abstract idea itself.
Claim 5 additionally requires “elemental analysis using an electron microscope image”, however this additionally is an abstract idea (i.e. a mathematical concept of analysis of an image). This is a requirement that a generic computer perform generic computer functions, e.g., running an algorithm. Such a requirement to apply an abstract idea using a generic computer does not render an abstract idea patent eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014). Additionally, any implication of obtaining the image using an electron microscope is merely insignificant extra-solution (i.e. data gathering). MPEP 2106.05(b) (III) reciters “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 Note the remarks do not address the enablement rejection, therefore the enablement rejection under 35 USC 112(a) stands as reiterated herein below.
2 Inequality. (2008). In D. Nelson (Ed.), The Penguin Dictionary of Mathematics (4th ed.). Penguin. Infobase. https://access.infobase.com/article/2459104-inequality?aid=279753 (copy of publication submitted herewith)
3 conventional analysis methods such as measurement of primary particle size with an electron microscope and measurement of aggregate distribution based on DBP oil absorption, IA, CTAB, or particle size distribution have difficulty in discriminating between a recovered carbon black and a conventional carbon black.
