DETAILED ACTION
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 1-12 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.
Regarding claim 1, the instant application discloses modifying the contrast and intensity of either the first pattern or the second pattern, the modification depending on a relative property of the first and second patterns” (see paragraph [0022]). However, the specification does not clearly define how a person of ordinary skill in the art could discern to what degree a relative property of the first and second pattern is.
Regarding claim 7, the limitation “providing a metric-contrast correlation measure…between a relative property” is commensurate in scope with the limitation corresponding in claim 1 and is rejected for the reasons as stated above.
Claims 2-6 and 8-12 do not further describe the limitation “relative property” in such a way a person of ordinary skill in the art could discern to what degree a relative property of the first and second pattern is and are rejected under 35 USC 112(a).
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 1-12 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.
The term “relative property of the first and second patterns” in claim 1 is a relative term which renders the claim indefinite. The term “relative property of the first and second patterns” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, the limitation “the modification” which depends on the “relative property” is indefinite.
Claim 7 recites the same limitation “relative property” as claim 1 and is indefinite for the same reasons as stated above.
Claim 7 further recites the limitations “on the one hand” and “on the other hand”. The claim is generally narrative and indefinite, failing to conform with current U.S. practice. The claims appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. It is unclear if the claim requires
Claims 2-6 and 8-12 do not further define the indefinite limitations and are rejected under 35 USC 112(b) for being dependent from indefinite independent claims 1 and 7, respectively.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (e.g. mathematical concepts) without significantly more. MPEP 2106(III) provides the flow chart for determining whether a claim is subject matter eligible. The analysis that follows shows the claims fail to meet the eligibility requirement.
The broadest reasonable interpretation of claim 1 is as follows (citations taken from the instant application):
A method of processing a set of Kikuchi diffraction patterns acquired for a series of incident positions of an electron beam on a sample material (methods concerned with processing diffraction patterns obtained by electron microscopy measurements, see paragraph [0044] – however not significantly more as directed towards well understood routine and conventional activity, see paragraph [0005]), the method comprising the steps of:
identifying a first pattern in the set containing a matrix signal and suspected of additionally containing a secondary phase signal (identification of the first pattern can be done by considering the pattern quality index of a given pattern; patterns having an IQ value less than a predetermined threshold can be identified as target patterns containing a matrix signal and suspected of containing a secondary phase signal, see paragraph [0048]. This is a mathematical concept (i.e. detection of a pattern and comparing to a threshold).);
identifying a second pattern close to the first pattern, which contains a matrix signal without containing a secondary phase signal (a second pattern close to the first pattern is identified, which contains a matrix signal only, see paragraph [0077]. This is a mental process (i.e. determining a relative distance and realization of absence of secondary signal).);
modifying the contrast and intensity of either the first pattern or the second pattern, the modification depending on a relative property of the first and second patterns, resulting in a modified first or second pattern (contrast and intensity of either the first pattern or second pattern is modified, depending on a relative property of the first and second patterns, see paragraph [0053]. This is a mathematical concept (i.e. conversion of data is performed on a processor)); and
obtaining a secondary phase signal pattern by either i) if the first pattern was modified, subtracting the original second pattern from the modified first pattern; or ii) if the second pattern was modified, subtracting the modified second pattern from the original first pattern (secondary phase signal pattern is obtained, see paragraph [0061]. This is a mathematical concept (i.e. conversion of data is performed on a processor)).
The abstract ideas (e.g. mathematical concepts and mental processes) are not integrated into a practical application because the relationship to the components and operation of the electron microscope does not add significantly more.
“Identification of a first pattern in a set” does not add significantly more because the abstract idea does nothing to change or improve the electron microscope, or its effects, but rather acts as a comparison step for a user. Such a step cannot be considered a practical application, because it is simply a comparison to a predetermined threshold of an arbitrary limit. Furthermore, a comparison may be done as a mental process by a human, or by hand using a pen or paper (see MPEP 2106.04(a)(III)).
“Identifying a second pattern close to the first pattern” does not add significantly more because the abstract idea does not further change or improve the electron microscope, or its effects, as repeated for the first pattern above. Furthermore, the comparison of the second pattern to be “close” to a first pattern may be a mental process as discussed above.
“Modifying the contrast and intensity of either first or second pattern” does not add significantly more because conversion of data performed on a processor is not transformative. MPEP 2106.05(c) states: For data, mere “manipulation of basic mathematical constructs [i.e. subtraction] the paradigmatic ‘abstract idea,’" has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994)).
“Obtaining a secondary phase signal” does not add significantly more because the step is merely an extra-solution activity. MPEP 2106.05(b)(III) states: 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.
The dependent claims do not obviate the above issues. Claims 2-6 further recite limitations of the abstract ideas set for in claim 1 and not adding significantly more (e.g. mental processes of comparing relative distances, data manipulation, and comparison of a pattern quality index on a threshold).
Regarding claim 7, the analysis is similar in scope with claim 1 above and therefore rejected under 35 USC 101 for the same reasons as discussed above.
Dependent claims 8-12 do not further add significantly more to the abstract ideas set forth in independent claim 7 for the same reasons as stated for the dependent claims 2-6 as discussed above.
Regarding claim 13, the analysis is similar in scope with claim 1 above and therefore rejected under 35 USC 101 for the same reasons as discussed above.
Claim 14 does not further obviate the above issues set forth in independent claim 13.
Dependent claims 15-17 do not further add significantly more to the abstract ideas set forth in independent claim 13 for the same reasons as stated for the dependent claims 2-6 as discussed above.
Therefore, the independent claims 1, 7, and 13 fail to meet the patent eligibility requirements of 35 USC 101.
Claims 2-6, 8-12, and 14-17 all further limit the abstract idea of their respective independent claim and thus are not patent eligible under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANWAY CHANG whose telephone number is (571)270-5766. The examiner can normally be reached Monday - Friday 7:30 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia Epps can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HC/ Examiner, Art Unit 2878
/GEORGIA Y EPPS/ Supervisory Patent Examiner, Art Unit 2878