DETAILED ACTION
Response to Arguments
Applicant's arguments filed 27 May 2026 have been fully considered but they are not persuasive.
Drawings:
The drawing objection has been overcome by the filed replacement sheet showing the respective claimed fields of view.
Claim rejections under 35 USC 112(a):
The remarks take the position the claims are directed towards a specific analytical procedure involving an electron microscope image, elemental analysis within defined fields of view, calculation for zinc concentrations in those fields of view, and comparison of the calculated concentrations according to the defined numerical relationship, thus not a desired result.
This has not been found persuasive, claim 1 as amended requires:
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
That is, the desired result is performing elemental analysis to calculate zinc concentrations within fields of view.
The remarks continue by citing US 2013/0274462 as describing an element mapping method using STEM as an analytical technique capable of analyzing the distribution state of elements in a small area, as well as the weight ratio or molar ratio thereof. The remarks conclude this demonstrates that a person of ordinary skill in the art would understand the manner of performing elemental analysis and calculating zinc concentrations.
This has not been found persuasive. Specifically, 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. 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).
Lastly, it is noted nothing in the instant specification suggests the elemental analysis of the image is one disclosed in the US20130274462 reference.
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, claim 1 is additionally rejected under 112(a) for introducing new limitations that are not supported by the originally filed specification.
Rejections under 35 USC § 112(b)
The claims have been amended to overcome indefiniteness issues under 35 USC § 112(b). However, by amendment, new issues are raised.
Rejections under 35 USC § 101
While the claims have been amended such that they no longer require a mental process. The claims are still directed towards the an abstract idea. Specifically, mathematical concepts i.e. calculating zinc concentrations Xc and Yc via elemental analysis and comparison to make a determination when Xc is two time or more of Yc.
The remarks then suggest the steps require nano-scale imaging and elemental analysis of physical material. 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) 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.
Prior art rejections:
By amendment the prior art rejections have been overcome.
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 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 enablement requirement for reciting “A method for discriminating whether or not a carbon black is a recovered carbon black, comprising observing 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 an elastomer composition…to obtain an image with an electron microscope” because it is not clear whether the electron microscope observes the composition or if some other instrument observes the composition which is then obtained by the electron microscope. It appears this is intended to mean “observing with an electron microscope an elastomer composition…to obtain an image” 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.
Claims 2-5 are vague and indefinite by virtue of their dependencies on rejected claim 1.
Claims 2-5 additionally define “a recovered carbon black”, however it is not clear whether this is an additional recovered carbon black or the recovered carbon black defined in claim 1.
Claim 5 is further vague and indefinite for reciting “wherein the discriminating whether or not the carbon black is a recovered carbon black comprises elemental analysis using an electron microscope image and examining the presence of an inorganic substance on or near a surface of the carbon black.” Specifically, it is not clear whether the “an electron microscope image” is the same or different from the image of claim 1 (i.e. an image with an electron microscope). Similarly it is not clear whether a recovered carbon black is the same carbon black or different from the carbon black of 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 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 art1. 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). It is noted that the extent that the process must occur in a computer, 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
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 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.
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