DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The following FINAL office action is in response to Applicant communication filed on 07/21/2026 regarding application 18/591,334. Claims 1-2, 5, 9 and 12 has been amended. Claims 1-12 are pending and have been rejected.
Response to Amendments
2. Applicant’s amendment filed on 07/21/2026 necessitated new grounds of rejection in this office action.
Foreign Priority
3. The Examiner has noted the Applicants claiming Priority from Foreign Priority Application JP2023-091481 filed on 06/02/2023. Foreign Priority Receipt is acknowledged of papers submitted under 35 U.S.C. § 119(a)-(d), which papers have been placed of record in the file.
Response to 35 U.S.C. § 101 Arguments
4. Applicant’s 35 U.S.C. § 101 arguments, filed with respect to Claims 1-12 have been fully considered, but they are found not persuasive (see Applicant Remarks, Pages 10-84 dated 07/21/2026). Examiner respectfully disagrees.
Argument #1:
(A). Applicant argues that Claims 1-12 do not recite an abstract idea, law of nature of natural phenomenon under revised step 2a prong one of the 35 U.S.C § 101 analysis (see Applicant Remarks, Pages 30-51 dated 07/21/2026). Examiner respectfully disagrees.
Applicant argues that Independent Claims 1 and 12 are not directed to an abstract idea because it recites a particular materials-development protocol, particular simultaneous and individual merging/branching symbols, forward and backward duplication removal, and calculation of an evaluation value. Applicant further argues that the claim is not merely a mathematical operation, mental process, data gathering operation, or method of organizing human activity. These arguments are not persuasive.
These claims, when considered as a whole, recites an abstract information-processing concept comprising identifying and representing relationships among elements of a process procedure, identifying and removing duplicate elements according to those relationships, assigning evaluation values to the remaining elements, and calculating an overall evaluation value from those values. The limitation requiring “calculating an overall evaluation value” based on individual evaluation values is a mathematical calculation and therefore falls within the mathematical-concepts grouping of abstract ideas. The claim need not recite a particular mathematical equation to constitute a mathematical calculation.
These claims also recite a mental process because the claimed creation and duplication-removal operations encompass identifying, distinguishing, comparing, and evaluating relationships among elements of the protocol and determining which elements are duplicates and which elements remain. These are observations, evaluations, and judgments concerning information that can practically be performed in the human mind, with or without paper-and-pencil assistance. The fact that the claimed information concerns a materials-development experiment does not remove the recited operations from the judicial-exception analysis. A particular field of use does not transform an otherwise abstract information-processing operation into a non-abstract concept. Applicant's contention that the claim is not a “certain method of organizing human activity” is therefore not dispositive. The rejection does not depend upon that category alone. The mathematical-concept and mental-process groupings independently support the identification of a judicial exception.
With respect to “Mental Processes” category, Examiner refers Applicant to MPEP § 2106.04 (a) (2) (III) (C): “Claims can recite a mental process even if they are claimed as being performed on a computer. The Examiner has reviewed Applicant’s Specification and determined that the claimed invention is described as concepts that are performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer (e.g., see Applicant’s Specification ¶ [0044-0045].), or 2) in a computer environment (e.g., see Applicant’s Specification ¶ [0051]: “Respective functions illustrated in FIG. 2 may be implemented by dedicated hardware configured with an application specific integrated circuit (ASIC), a field-programmable gate array (FPGA), or the like, or may be implemented by software running on the processor 2. In the following, a case will be described in which the protocol evaluation support apparatus 1 is a computer, and the computer functions as each functional block by executing the program stored in the storage device 4.”), or 3) is merely using a computer as a tool.
Additionally, according to MPEP § 2106.04 (a) (2) (III) (B): “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, 839 F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper").” Examiner maintains the rejection under 35 U.S.C. 101 Step 2A, Prong 1 that certain/particular limitations of Independent Claims 1 and 12 still recite “Mental Processes”. Applicant argues that these claims are eligible because it cannot practically be performed in the mind. The Federal Circuit has clarified that a claim recites a Mental Process if it describes a type of intellectual activity that can be performed in the human mind, even if a computer can perform it faster or more accurately (e.g., CyberSource Corp. v. Retail Decisions, Inc.). The steps of "identifying branches," "removing duplicates," and "calculating values" are fundamental logical operations. A scientist drafting an experimental flowchart performs these exact deduplication and evaluation steps mentally. The fact that the protocol may be complex does not change the qualitative nature of the steps as mental logic.
Also, Examiner refers Applicant to MPEP § 2106.04 (a) (2) II which states that: “the sub-groupings encompass both activity of a single person and activity that involves multiple people, and thus, certain activity between a person and a computer may fall within the "Certain Methods of Organizing Human Activities" groupings. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.” Therefore, these claim limitations for Independent Claims 1 and 12 fall under managing personal behavior (including teachings or following rules or instructions) which pertains to the “Certain Methods of Organizing Human Activities” grouping for step 2a prong 1.
Lastly, some of these claim limitations recited above for Independent Claims 1 and 12 (such as e.g., “a calculation step of making each of individual evaluation values correspond to each of the remaining of the plurality of elements after the removal step….”) can be performed as “Mathematical Concepts” which pertains to mathematical calculations or mathematical relationships. With respect to “Mathematical Concepts” category, Examiner refers Applicant to MPEP § 2106.04 (a) (2) (I) (C): “A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping.” “It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea).” Furthermore, see MPEP § 2106.05 (c): “For data, mere "manipulation of basic mathematical constructs [i.e.,] 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)).”
Accordingly, Applicant has not persuasively rebutted the Step 2A, Prong One finding. In conclusion, therefore, at step 2a prong 1, Claims 1-12 are directed to the abstract idea and recited judicial exceptions under “Certain Methods of Organizing Human Activities” category or “Mental Processes” category or “Mathematical Concepts” category.
Claims 1-12 are maintained as being patient ineligible under 35 U.S.C. § 101 step 2a prong 1.
Argument #2:
(B). Applicant argues that the amendments provide a “particular arrangement” consisting of forward duplication removal, backward duplication removal, and calculation based on the remaining elements and paths. Applicant further argues that the particular arrangement distinguishes the claim from merely automating a manual process.
The argument is not persuasive because specificity does not, by itself, establish eligibility. The question is whether the additional specificity changes the nature of what the claim is directed to. Here, the additional limitations specify how information constituting the protocol is organized, reduced, and evaluated. Forward duplication removal identifies duplicate elements occurring after a specified merging relationship; backward duplication removal identifies duplicate elements occurring before a specified branching relationship; and the calculation operation assigns values to the remaining elements and calculates an overall value.
Thus, the added limitations further define the particular implementation of the information-processing concept, but remain directed to information organization, evaluation, and mathematical calculation. The claim's recitation of four types of symbols likewise specifies representations of relationships among protocol elements. The symbols do not themselves constitute a technological improvement to the processing device; they represent information concerning the protocol.
Accordingly, the amendments add specificity to the abstract information-processing scheme but do not remove the claim from the judicial-exception category.
Argument #3:
(C). Applicant argues that Claims 1-12 recite additional elements that integrate the judicial exception into a practical application under revised step 2a prong two of the 35 U.S.C. § 101 analysis (see Applicant Remarks, Pages 51-70 dated 07/21/2026). Examiner respectfully disagrees.
Applicant argues that the claimed operations are integrated into a practical application because they provide increased accuracy in the overall evaluation value and increased database-storage efficiency. Applicant further argues that the claim is directed to an improvement in “protocol evaluation technology” in the field of materials research.
These arguments are not persuasive. The claimed “increased accuracy” is an improvement in the result of the evaluation, rather than a claimed improvement in the functioning of the computer or another technology. The claims achieve the stated result by removing duplicate information before assigning evaluation values and calculating an overall evaluation value. The claims do not recite a particular technological mechanism by which the processor itself operates differently or more efficiently. Likewise, the claimed “increased database storage efficiency” results from having fewer protocol elements to store. The claim does not recite a particular database architecture, storage architecture, memory-management technique, data-compression technique, indexing technique, or other modification to the operation of computer storage. In other words, the claim reduces the amount of information represented, but does not claim a technological improvement in how the computer stores or processes information. The distinction is material. Merely obtaining a desirable result through information manipulation is not equivalent to claiming an improvement in computer functionality. Applicant's statement that the claimed protocol evaluation is “more efficient and accurate than conventional techniques” is likewise insufficient, standing alone, to establish a technological improvement. The claim must itself reflect the technological improvement relied upon, and the specification must provide sufficient technical detail such that the asserted improvement would be apparent to a person of ordinary skill in the art.
Examiner notes for Independent Claims 1 and 12, these claims as a whole is directed to the recited abstract idea because the additional elements do not integrate the abstract idea into a practical application. The claimed “processing device” is recited at a high level of generality and merely performs the claimed information-processing operations. The limitation to a “materials development experiment protocol” merely identifies the field in which the abstract evaluation is performed and does not require the processing device to control a physical materials-development process or otherwise effect a transformation of a material. Further, the recited benefits of “increased accuracy” in the overall evaluation value and “increased database storage efficiency” do not, without more, establish an improvement in computer functionality or another technology. The claim does not recite a particular database architecture, data structure, memory arrangement, processor architecture, or other technical mechanism that produces such an improvement. This distinguishes the claim from cases and USPTO guidance recognizing eligibility where the claim itself reflects an improvement to computer functionality or another technological field. Accordingly, these claims do not integrate the abstract evaluation, data-reduction, and mathematical calculation into a practical application, and the analysis proceeds to Step 2B.
Accordingly, the claims do not integrate the abstract evaluation, data-reduction, and mathematical calculation into a practical application, and the analysis proceeds to Step 2B. Here, the claims do not recite a particular computer architecture or storage technology that is improved by the duplication-removal operations. Instead, the claimed operations remain directed to manipulating and evaluating protocol information. The claims do not meaningfully limit the judicial exception through an improvement to computer technology, a particular machine integral to the claimed process, a transformation, or another meaningful technological application. Therefore, the judicial exception is not integrated into a practical application under Step 2A, Prong Two.
Claims 1-12 are maintained as being patient ineligible under 35 U.S.C. § 101 step 2a prong 2 as not reciting additional elements to integrate the judicial exception into a practical application.
Argument #4:
(D). Applicant relies extensively on Ex parte Desjardins and argues that the Office should not narrowly limit that decision to machine-learning applications or to “catastrophic forgetting.”
The argument is not persuasive. The relevant principle from Desjardins is not that any reduction in storage or system complexity constitutes a technological improvement. Rather, the decision concerned claims that reflected an improvement in how the machine-learning model itself operated, and the specification explained the technical mechanism by which the claimed training approach addressed the technical problem of catastrophic forgetting.
The present claims are materially different.
Claims 1 and 12 do not claim an improved computer-storage architecture or an improved computational model. It does not alter how a processor stores information, how a database indexes information, how memory is allocated, or how a computational model operates. Instead, the claims identify duplicate protocol elements and removes them so that fewer elements are represented and subsequently evaluated. Thus, the claimed reduction in storage is a consequence of removing redundant protocol information, not an improvement to the underlying storage technology. Similarly, the claimed increased accuracy is a consequence of the claimed evaluation methodology, not an improvement to the operation of a computer or other machine.
Accordingly, Desjardins does not compel a finding of eligibility merely because both cases mention reduced storage or improved efficiency.
Argument #5:
(E). Applicant points to an example in which the claimed representation allegedly requires approximately ten nodes and corresponding edges, whereas a conventional representation allegedly requires approximately thirty-three nodes and twenty-four edges.
This argument does not alter the § 101 analysis. Even assuming that the claimed representation requires fewer stored elements, that fact demonstrates that the claimed process stores less protocol information. It does not, without more, demonstrate that the computer, database, memory architecture, or storage technology itself has been improved.
The asserted improvement is therefore an improvement in the organization and quantity of information being processed, not necessarily an improvement in the technology used to process or store that information.
Moreover, the claims do not require the particular numerical node/edge arrangement described in Applicant's example. The claims instead generically requires removing duplicate elements and calculating an overall evaluation value from the remaining elements. The asserted numerical example therefore does not supply a technical limitation that is absent from the claims.
Argument #6:
(F). Applicant argues that Claim 1 does not merely say “apply it” using a computer and therefore differs from cases involving generic computer implementation.
The Office does not rely solely upon an “apply it” rationale. The rejection recognizes the specific operations recited by Claim 1. Nevertheless, those operations themselves constitute the identified abstract information-processing concept. The processing device merely performs those operations. Thus, the issue is not whether Claim 1 literally says “apply it.” The issue is whether the claimed computer implementation transforms the abstract information-processing concept into a practical application. Because the claimed processing device does not perform a claimed improvement to computer functionality or another technological field, merely specifying that the abstract operations are performed by a processing device does not integrate the exception into a practical application.
Argument #7:
(G). Applicant argues that Claim 1 does not merely recite insignificant extra-solution activity such as data gathering, relying on CyberSource.
The argument attacks a characterization that is not necessary to the rejection. The Office does not characterize the entirety of Claim 1 as mere data gathering. Rather, the rejection is based on the substantive information-processing operations themselves—representing protocol relationships, identifying duplicate elements, removing those elements, assigning evaluation values, and calculating an overall evaluation value. Thus, even accepting Applicant's assertion that the claim performs more than data gathering, the claim remains directed to an abstract information-processing concept. The absence of mere data gathering does not establish eligibility where the substantive operations themselves recite a judicial exception.
Argument #8:
(H). Applicant relies on Thales Visionix to support the proposition that the claimed invention provides a technological improvement.
Thales Visionix does not establish that every claim producing a more efficient or accurate result is necessarily eligible. The relevant inquiry is whether the claimed arrangement improves the functioning of a computer or another technology in a manner reflected in the claims. Here, the claimed operations do not improve the operation of the processing device. Instead, they manipulate the representation of a materials-development protocol by removing redundant elements and then mathematically evaluating the remaining information. The claimed result—fewer elements, increased storage efficiency, and an allegedly more accurate evaluation—is achieved by manipulating the information being processed. The claim does not recite a new computer architecture, new storage architecture, or other technical mechanism analogous to the technological improvement recognized in Thales Visionix.
Accordingly, Thales Visionix does not render Claim 1 eligible.
Argument #9:
(I). Applicant emphasizes that the claim is specifically directed to a “materials development experiment protocol” and argues that this provides a technological field and a meaningful limitation.
The limitation is acknowledged, but it does not alter the analysis. The claimed apparatus does not manufacture, synthesize, test, measure, or physically modify a material. Nor does it control a laboratory instrument or modify an experimental process parameter. Instead, the claimed processing device evaluates a representation of a protocol. Thus, the materials-development limitation identifies the subject matter of the information being processed, but does not transform the claimed information processing into a physical materials-development operation. Accordingly, the field-of-use limitation does not integrate the judicial exception into a practical application.
Argument #10:
(J). Applicant argues that Claims 1-12 recite additional elements that amount to significantly more than the recited judicial exceptions under revised step 2B of the 35 U.S.C. § 101 analysis (see Applicant Remarks, Pages 70-84 dated 07/21/2026). Examiner respectfully disagrees.
Applicant argues that the claims cannot be found ineligible under Step 2B because the claimed operations are not shown to be well-understood, routine, and conventional, relying on Berkheimer. Applicant's argument does not overcome the rejection.
First, the determination that a claim recites an abstract idea and fails to integrate that idea into a practical application is distinct from the determination of whether additional elements are well-understood, routine, and conventional. The Office's Step 2B analysis must therefore not be conflated with the Step 2A inquiry.
Second, to the extent the Step 2B rejection relies on the conventionality of additional elements, the relevant additional element here is principally the processing device and its generic computer implementation. The claims do not recite an unconventional processor architecture, memory architecture, database architecture, or other specialized computer component.
Third, Applicant's asserted novelty of the particular information-processing sequence does not establish that the claim contains significantly more than the judicial exception. A claim can contain a particular arrangement of abstract operations while remaining directed to the abstract idea itself.
Thus, even if the precise claimed protocol-evaluation sequence were not shown to be independently conventional, that circumstance would not necessarily establish an inventive concept where the purported “additional” limitations are themselves part of the abstract idea.
Moreover, Examiner refers Applicant to Examiner’s 35 U.S.C. 101 analysis section (e.g., Claim Rejections - 35 U.S.C. § 101 section shown below) shown for step 2B particularly for Independent Claims 1 and 12. The claims do not recite additional elements that amount to significantly more than the recited judicial exceptions, because they are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exceptions. The limitations are directed to limitations referenced in MPEP § 2106.05I.A. that are not enough to qualify as significantly more when recited in these claims with the abstract idea which include: (1) adding the words “apply it” (or an equivalent) with the judicial exception, (2) or mere instructions to implement an abstract idea on a computer and providing the results to the user on a computer, and (3) generally linking the use of the judicial exception to a particular technological environment or field of use.
Examiner also cites BSG Tech LLC v. Buyseasons Inc. decision (Aug. 15, 2018) court case noting that: “But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine. At Step two, we “search for an ‘inventive concept’… that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355 (internal quotation marks omitted) (quoting Mayo, 566 U.S. at 72-73). But this simply restates what we have already determined is an abstract idea. At Alice step two, it is irrelevant whether considering historical usage information while inputting data may have been non-routine or unconventional as a factual matter. As a matter of law, narrowing or reformulating an abstract idea does not add “significantly more” to it. See SAP Am., Inc. v. InvestPic, LLC. No. 2017-2081, slip op. at 14 (Fed. Cir. 2018). Applicant’s suggestion that specific limitations (or the claimed invention as a whole) must be shown to be well-understood, routine, and conventional to support the conclusion of subject matter ineligibility is not persuasive.
For Independent Claims 1 and 12, Examiner notes that for the claimed invention, which involves a processing device for managing and evaluating process protocols using simultaneous merging/branching symbols and duplication removal, is found patent ineligible at Step 2B because the additional elements, when viewed in combination, do not amount to "significantly more" than an abstract idea. MPEP § 2106.05(f) - Mere Instructions to Apply an Exception: This section addresses claims that merely append routine, conventional computer implementation to an abstract idea. The claim recites a "processing device configured to execute" the steps. The mere instruction to perform the abstract processes (creating symbols, developing protocols, removing duplication, calculating evaluation values) on a generic processing device does not add a meaningful limitation or integrate the exception into a practical application in a non-conventional way. The processing device is used in an expected manner for executing software instructions. MPEP § 2106.05(h) - Field of Use and Technological Environment: This section states that mere field of use or technological environment limitations do not make an otherwise ineligible claim patentable. While the claim is limited to the technological environment of "protocol" processing and the use of "simultaneous merging/branching symbols," these limitations are tied to the abstract concept itself and do not integrate the idea into a non-conventional, specific practical application similar to the eligible claim in Diamond v. Diehr (which involved an integrated, specific rubber molding process). The limitations are essentially a "field of use" for the abstract process management logic. The claim does not improve the functioning of the computer itself or any other technical field in a non-abstract way beyond the generic application of an abstract idea on a computer.
Argument #11:
(K). Applicant argues that because the claims have been indicated as allowable over the prior art, the claims should also be considered to contain an inventive concept under § 101.
This argument is not persuasive. Patent eligibility under § 101 and patentability under §§ 102 and 103 are separate inquiries. A claim may contain novel or nonobvious subject matter and nevertheless be directed to a judicial exception without significantly more. Accordingly, an indication that the claim is allowable over the prior art does not establish eligibility under § 101 and does not, by itself, establish an inventive concept under Step 2B.
Argument #12:
(L). Applicant argues that the ordered combination of creation processing, development processing, forward duplication removal, backward duplication removal, and calculation processing is itself sufficiently particular to establish eligibility.
The argument is not persuasive. The ordered combination remains an arrangement for:
representing process relationships; (2) identifying redundant information; (3) removing redundant information; and (4) calculating an evaluation from the remaining information.
The combination does not specify an unconventional computer architecture or a technological mechanism that causes the computer to operate in a fundamentally improved manner.
Accordingly, considering the limitations individually and in combination does not change the conclusion that the claims remain directed to the identified abstract information-processing concept.
Conclusion: For the foregoing reasons, Applicant's arguments do not establish that Claims 1 and 12 are outside the judicial-exception framework at Step 2A, Prong One, do not establish that the claim integrates the judicial exception into a practical application at Step 2A, Prong Two, and do not establish that the additional elements amount to significantly more under Step 2B. In particular, the claimed reduction in the number of protocol elements and corresponding storage efficiency represents a reduction in the amount of information being represented and processed, rather than a claimed improvement to computer functionality or storage technology (emphasis added). Likewise, the asserted increase in evaluation accuracy is an improvement in the result of the claimed information analysis rather than a claimed technological improvement to the computer. Furthermore, Examiner points out that the Desjardins case credited reduced storage because the claimed ML technique changed how the ML model itself operated; here, duplicate removal changes the amount/content of protocol information represented, but Claims 1 and 12 do not recite an improvement to the operation of the computer, database, memory, or storage technology itself. Also, for Independent Claims 1 and 12 for example; the duplication-removal/calculation limitations are part of the identified abstract idea, while the generic processing device is the principal additional element.
Accordingly, the rejection of Claims 1-12 under 35 U.S.C. § 101 are maintained.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1-12 are each focused to a statutory category namely, an “apparatus” or a “system” (Claims 1-11) and a “method” or a “process” (Claim 12).
Step 2A Prong One: Independent Claims 1 and 12 recite limitations that set forth the abstract idea(s), namely (see in bold except where strikethrough):
“that supports an evaluation of a materials development protocol in which a process procedure including a plurality of paths that connect a first plurality of elements is expressed, comprising” (see Independent Claim 1);
“that supports an evaluation of a materials development protocol in which a process procedure including a plurality of paths that connect a plurality of elements is expressed, the materials development protocol evaluation support method comprising” (see Independent Claim 12);
“” (see Independent Claim 1);
“” (see Independent Claim 12);
“creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the first plurality of the elements simultaneously merge into one element, creating an individual merging symbol that specifies individually margining at a portion in the materials development protocol where one of the plurality of elements individually merges into one element, creating a simultaneous branching symbol that specifies simultaneous branching at a portion in the materials development protocol where one element simultaneously branches to the first plurality of the elements, and creating an individual branching symbol that specifies individual branching at a portion in the materials development protocol where one element individually branches to one of the first plurality of the elements” (see Independent Claim 1);
“development processing for developing the materials development protocol after being subjected to the creation processing for each of the paths included in the process procedure” (see Independent Claim 1);
“forward duplication removal processing comprising removing all duplicate elements of the first plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol” (see Independent Claim 1);
“backward duplication removal processing comprising removing all duplicate elements of the first plurality of elements that are duplicated in a process before the simultaneous branching symbol for the materials development protocol after being subjected to the development processing” (see Independent Claim 1);
“calculation processing for making each of individual evaluation values correspond to each of the remaining of the first plurality of elements and calculating an overall evaluation value of the materials development protocol based on the individual evaluation values made to correspond to a second plurality of elements consisting of the remaining elements and paths of the first plurality of elements for the materials development protocol after being subjected to the forward duplication removal processing and the backward duplication removal processing” (see Independent Claim 1);
“wherein a number of the second plurality of elements is less than a number of the first plurality of elements to provide an increased accuracy in the overall evaluation value due to the removal processing and to provide an increased efficiency due to the forward duplication removal processing and the backward duplication removal processing” (see Independent Claim 1);
“wherein the materials development protocol is a materials development experiment protocol in which the merging and branching operations comprise both individual merging and branching operations and simultaneous merging and branching operations” (see Independent Claim 1);
“a creation step of creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the first plurality of the elements simultaneously merge into one element, creating an individual merging symbol that specifies individual merging at a portion in the materials development protocol where one of the first plurality of the elements individually merges into one element, creating a simultaneous branching symbol that specifies simultaneous branching at a portion in the materials development protocol wherein one element simultaneously branches to the first plurality of the elements, and creating an individual branching symbol that specifies individually branching at a portion in the materials development protocol where one element individually branches to one of the first plurality of the elements” (see Independent Claim 12);
“a development step of developing the materials development protocol for each of the paths included in the process procedure” (see Independent Claim 12);
“a forward duplication removal step of removing all duplicate elements of the first plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol” (see Independent Claim 12);
“a backward duplication removal step of removing all duplicate elements of the first plurality of elements that are duplicated in a process before the simultaneous branching symbol for the materials development protocol developed in the development step” (see Independent Claim 12);
“a calculation step of making each of individual evaluation values correspond to each of the remaining of the first plurality of elements after the removal step, and calculating an overall evaluation value of the materials development protocol based on the individual evaluation values made to correspond to a second plurality of elements consisting of the remaining elements and paths of the first plurality of elements for the materials development protocol after being subjected to the forward duplication removal processing and the backward duplication removal processing” (see Independent Claim 12);
“wherein a number of the second plurality of elements is less than a number of the first plurality of elements to provide an increased accuracy in the overall evaluation value due to the removal processing and to provide an increased efficiency due to the forward duplication removal processing and the backward duplication removal processing” (see Independent Claim 12);
“wherein the materials development protocol is a materials development experiment protocol in which the merging and branching operations comprise both individual merging and branching operations and simultaneous merging and branching operations” (see Independent Claim 12).
Here, the claim limitations for Independent Claims 1 and 12 recite the abstract idea of evaluating a materials development experiment protocol by representing relationships among protocol elements, identifying and removing duplicate elements associated with merge and branch relationships, assigning individual evaluation values to remaining elements, and calculating an overall evaluation value based on those individual evaluation values in a materials development protocol. The limitation requiring “calculating an overall evaluation value” based on individual evaluation values constitutes a mathematical calculation and therefore falls within the mathematical concepts grouping of abstract ideas under MPEP § 2106.04(a)(2)(I). The limitations requiring identification and evaluation of merging/branching relationships and duplicate elements further constitute mental processes, because they encompass observations, evaluations, and determinations concerning information that can practically be performed by a human using observation and reasoning. The claims therefore recites at least mathematical concepts and mental processes.
The steps specify "calculation processing for making each of individual evaluation values correspond to..." and "calculating an overall evaluation value... based on the individual evaluation values." Under USPTO guidance (PEG), mathematical calculations and evaluations/identifications of data relationships represent abstract ideas (mental processes and mathematical concepts). The character of these claims as a whole focus on mathematical computation and logical filtering (duplication removal) applied to a model of a development protocol, rather than improving computer functionality itself.
The “Creation Processing” (Symbol Generation) step recites “Mental Processes” because identifying points in a protocol and assigning symbols (merging/branching) describes an evaluation or judgment that can be performed in the human mind. It also involves “Certain Methods of Organizing Human Activities” by managing how a protocol is structured. The “Development Processing” (Path Execution) step recites “Certain Methods of Organizing Human Activities” because developing paths within a protocol is a foundational method of managing a workflow or process procedure, which falls under the “Organizing Human Activity” grouping. The “Forward & Backward Duplication Removal” steps recite “Mathematical Concepts” or “Mental Processes”. For example; removing duplicated elements is essentially a filtering algorithm (mathematical relationship) and a logical comparison that can be performed mentally. The “Calculation Processing” (Evaluation Values) recites “Mathematical Concepts” or “Mental Processes”. Calculating individual and overall evaluation values explicitly recites “Mathematical Concepts” such as mathematical relationships or mathematical calculations. It also recites “Mental Processes” as it involves evaluating and calculating data which can alternatively be performed using pen to paper as a physical aid.
Calculation processing and evaluating values: Mathematical Concepts (calculations, mathematical relationships/formulas) and Mental Processes (evaluating results, data processing that can be performed in the human mind or via generic logic).
Forward and backward duplication removal processing: Mental Processes / Certain Methods of Organizing Human Activities (managing rules, organizing information steps, and filtering redundant workflow items).
The “wherein” clause recites managing personal behavior or relationships or interactions between people, which includes teachings or following rules or instructions. Even though it refers to a “materials development experiment,” the language defines a high-level organizational structure (rules for merging and branching) for carrying out that experiment. This limitation describes a way of structuring a workflow by categorizing operations into “individual” vs “simultaneous” merging and branching. Because the distinction between “individual” and “simultaneous” operations can be performed as a series of logical observations or mental categorizations, this recites a mental process.
Thus, these abstract idea limitations (as identified above in bold), under their broadest reasonable interpretation of the claims as a whole, cover performance of their limitations as “Mental Processes” which pertains to (1) concepts performed in the human mind (including observations or evaluations or judgments) or (2) using pen and paper as a physical aid, which in order to help perform these mental steps does not negate the mental nature of these limitations. The use of "physical aids" in implementing the abstract mental process, does not preclude the claim from reciting an abstract idea. See MPEP § 2106.04(a) III C.
Additionally, or alternatively, these abstract idea limitations (as identified above in bold), under their broadest reasonable interpretation of the claims as a whole, cover performance of their limitations as “Certain Methods of Organizing Human Activities” which pertains to (3) managing personal behavior (including teachings or following rules or instructions) and additionally or alternatively, these abstract idea limitations (as identified above in bold), under their broadest reasonable interpretation of the claims as a whole, cover performance of their limitations as “Mathematical Concepts” which pertains to (4) mathematical calculations.
That is, other than reciting (e.g., “a processing device” & “a computer” & “the protocol support apparatus” & “database storage”), nothing in the claim elements precludes the steps from being performed as “Mental Processes” which pertains to (1) concepts performed in the human mind (including observations or evaluations or judgments) or (2) using pen and paper as a physical aid and additionally or alternatively as “Certain Methods of Organizing Human Activities” which pertains to (3) managing personal behavior (including teachings or following rules or instructions) and additionally or alternatively as “Mathematical Concepts” which pertains to (4) mathematical calculations.
Therefore, at step 2a prong 1, Yes, Claims 1-12 recite an abstract idea. We proceed onto analyzing the claims at step 2a prong 2.
Step 2A Prong Two: With respect to Step 2A Prong Two of the eligibility inquiry (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Independent Claim 1 recites additional elements directed to: (e.g., “the protocol evaluation support apparatus” & “a processing device” & “database storage”). Independent Claim 12 recites additional elements directed to: (e.g., “a computer” & “database storage”). These additional elements have been considered individually and in combination, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment. See MPEP § 2106.05(f) and MPEP § 2106.05(h). In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Examiner notes for Independent Claims 1 and 12, these claims as a whole is directed to the recited abstract idea because the additional elements do not integrate the abstract idea into a practical application. The claimed “processing device” is recited at a high level of generality and merely performs the claimed information-processing operations. The limitation to a “materials development experiment protocol” merely identifies the field in which the abstract evaluation is performed and does not require the processing device to control a physical materials-development process or otherwise effect a transformation of a material. Further, the recited benefits of “increased accuracy” in the overall evaluation value and “increased database storage efficiency” do not, without more, establish an improvement in computer functionality or another technology. The claim does not recite a particular database architecture, data structure, memory arrangement, processor architecture, or other technical mechanism that produces such an improvement. This distinguishes the claim from cases and USPTO guidance recognizing eligibility where the claim itself reflects an improvement to computer functionality or another technological field. Accordingly, these claims do not integrate the abstract evaluation, data-reduction, and mathematical calculation into a practical application, and the analysis proceeds to Step 2B.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception. Therefore, at step 2a prong 2, Claims 1-12 are directed to the abstract idea and do not recite additional elements that integrate into a practical application.
Step 2B: (As explained in MPEP § 2106.05), it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Independent Claim 1 recites additional elements directed to: (e.g., “the protocol evaluation support apparatus” & “a processing device” & “database storage”). Independent Claim 12 recites additional elements directed to: (e.g., “a computer” & “database storage”). These elements have been considered individually and in combination, but fail to add significantly more to the claims because they amount to using computing elements or instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (computing environment) and does not amount to significantly more than the abstract idea itself. See MPEP § 2106.05(f) and MPEP § 2106.05(h). Notably, Applicant’s Specification suggests that the claimed invention relies on nothing more than a general-purpose computer executing the instructions to implement the invention (see at least Applicant’s Specification ¶ [0045]: “The memory 3 stores the program executed by the processor 2 and the interim progress of operation processing. The storage device 4 is a device that stores the program executed by the processor 2 and data necessary for executing the program, and specifically, includes a hard disk drive (HDD), a solid state drive (SSD), and the like. The network adapter 5 is for connecting the protocol evaluation support apparatus 1 to the network 9 such as a local area network (LAN), a telephone line, or the Internet.”
Independent Claims 1 and 12: With respect to reliance on “the protocol evaluation support apparatus” (see Independent Claim 1) & “a processing device” (see Independent Claim 1) & “a computer” (see Independent Claim 12) & “database storage” (see Independent Claims 1 and 12) as additional elements shown in Independent Claims 1 and 12, when considered in view of the claim limitations both individually and as an ordered combination (as a whole) do not amount to significantly more than the judicial exceptions under step 2B due to: (1) reciting mere instructions to implement an abstract idea on a computer or using a computer as a tool to “apply” the recited judicial exceptions (see MPEP § 2106.05(f)) or (2) the claims as a whole are limited to a particular field of use or technological environment pertaining to supporting an evaluation of a protocol in which a process procedure including a plurality of paths connect a plurality of elements is expressed in a workflow process environment (see MPEP § 2106.05 (h)).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
Dependent Claims 2-11 recite additional elements directed to: (e.g., “storage unit” (Claim 4) & “display device” (Claims 6-9)), and when considered individually and as an ordered combination (as a whole) with the limitations recite the same abstract idea(s) as shown in Independent Claims 1 and 12 along with further steps/details that could be performed as “Mental Processes” which pertains to (1) concepts performed in the human mind (including observations or evaluations or judgments) or (2) using pen and paper as a physical aid and additionally or alternatively as “Certain Methods of Organizing Human Activities” which pertains to (3) managing personal behavior (including teachings or following rules or instructions) and additionally or alternatively as “Mathematical Concepts” which pertains to (4) mathematical calculations.
With respect to Dependent Claims 2-3, 5 and 10-11 further narrows the abstract ideas as previously identified for Independent Claims 1 and 12, and are therefore still ineligible for the reasons previously provided in Steps 2A Prong 2 and Step 2B. Dependent Claims 4 and 6-9: With respect to reliance on the additional elements of (e.g., “storage unit” (Claim 4) & “display device” (Claims 6-9)), when considered in view of these claim limitations both individually and as an ordered combination (as a whole), these additional elements do not integrate the abstract idea into a practical application under step 2a prong 2 and also do not amount to significantly more than the judicial exceptions under step 2B due to: (1) reciting mere instructions to implement an abstract idea on a computer or using a computer as a tool to “apply” the recited judicial exceptions (see MPEP § 2106.05(f)) or (2) the claims as a whole are limited to a particular field of use or technological environment pertaining to supporting an evaluation of a protocol in which a process procedure including a plurality of paths connect a plurality of elements is expressed in a workflow process environment (see MPEP § 2106.05 (h)).
The ordered combination of elements in the Dependent Claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the subject matter encompassed by the dependent claims fails to amount to a practical application or significantly more than the abstract idea itself. Therefore, under Step 2B, Claims 1-12 do not include additional elements that are sufficient to amount to significantly more than the recited judicial exceptions.
Thus, Claims 1-12 are ineligible with respect to the 35 U.S.C. § 101 analysis.
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 DERICK HOLZMACHER whose telephone number is (571) 270-7853. The examiner can normally be reached on Monday-Friday 9:00 AM – 6:30 PM EST.
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/DERICK J HOLZMACHER/Patent Examiner, Art Unit 3625A
/BRIAN M EPSTEIN/Supervisory Patent Examiner, Art Unit 3625
