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 .
Status of Claims
2. Claims 1-12 are currently pending. Claims 1-12 have been amended. Claims 1-12 have been rejected.
Status of the Application
3. Claims 1-12 are currently pending and have been examined in this application. This communication is the first action on the merits.
Response to Amendments
4. Applicant’s amendment filed on 02/16/2026 necessitated new grounds of rejection in this office action.
Continued Examination under 37 CFR 1.114
5. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/16/2026 has been entered.
Foreign Priority
6. 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 Arguments
7. Applicant’s arguments, see pages 68-92 filed on 02/16/2026, with respect to the 35 U.S.C. § 103 Claim Rejections for Claims 1-12 have been fully considered and are found to be persuasive. Therefore, the 35 U.S.C. § 103 Claim Rejections for Claims 1-12 have been fully considered and are found to be persuasive. Therefore, the 35 U.S.C. § 103 Claim Rejections for Claims 1-12 have been withdrawn. See Examining Claims with Respect to Prior Art Section shown below.
Response to 35 U.S.C. § 101 Arguments
8. 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 9-68, dated 02/16/2026). 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, Page 23-39, dated 02/16/2026). Examiner respectfully disagrees.
Applicant argues that based on the claim amendments to Independent Claims 1 and 12, these steps do not recite “Certain Methods of Organizing Human Activities” Grouping. Examiner respectfully disagrees (see Applicant Remarks, Pages 29-33, dated 02/16/2026). Examiner respectfully disagrees.
The Examiner is correct that the claims recite a method of organizing human activity because they focus on managing personal behavior or interactions through following rules or instructions. A "materials development protocol" is essentially a set of instructions for a human researcher or a robotic surrogate to follow. By creating "symbols" (rules) that dictate when to "merge" or "branch" and when to "remove duplicates," the claim is setting up a regulatory framework for human activity. The MPEP § 2106.04(a)(2)(III) explicitly identifies "following rules or instructions" as a sub-category of organizing human activity. Whether those instructions involve making a sandwich or conducting a materials experiment, the act of structuring a workflow based on a set of logical rules is an abstract idea. Second Point: The Claims Do Not Need to be only limited to “Commercial” or “Legal”. The Applicant’s argument that "Certain Methods of Organizing Human Activity" is limited to advertising, marketing, or sales is legally incorrect. While MPEP § 2106.04(a)(2)(II) does list commercial and legal interactions, the USPTO Guidance is clear that these are non-exhaustive examples. The Supreme Court in Alice and Bilski did not limit "abstract ideas" to the world of finance or commerce. Courts have consistently found that "fundamental principles" of organization—including scientific protocols, data collection rules, and logical workflows—fall under this grouping regardless of whether money is changing hands. The core of the exception is the organization of the activity itself, not the specific industry (like sales) in which that activity occurs.
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.
Reason #3: The Steps Remain Patent Ineligible. Even though the claims are not about "selling," they remain ineligible because they recite a mental/logical framework for organizing tasks: Administrative/Organizational Character: The "duplication removal" and "symbol creation" are administrative cleaning tasks applied to a plan. They represent the mental logic of "efficiency." Just as a manager might organize a schedule to avoid redundant shifts, this protocol organizes an experiment to avoid redundant steps. This is a foundational method of organization that humans have used long before the advent of computers. Overlapping Exception (Mental Processes): Furthermore, these steps simultaneously recite Mental Processes. The determination that an element is "duplicated" and should be "removed" is a logical conclusion that can be performed entirely in the human mind. Because the claim can be performed through "mental logic" or by "following a set of instructions" (rules), it squarely fits the definition of an abstract idea. Failure to Shift the Nature of the Claim: Simply moving the "rules" from a sales floor to a materials lab does not change the fact that the claim is directed to the rules themselves. The "materials development" context is a field-of-use limitation that does not move the claim out of the "organizing human activity" grouping.
Applicant argues that based on the claim amendments to Independent Claims 1 and 12, these steps do not recite “Mental Processes” Grouping. Examiner respectfully disagrees (see Applicant Remarks, Pages 33-37, dated 02/16/2026). Examiner respectfully disagrees.
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.
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").”
Dispute Reason #2: Reliance on McRO v. Bandai Namco. Applicant argues that these claims do not preempt the entire concept and are therefore eligible under McRO. The McRO decision hinged on the fact that the claims recited a specific, rule-based mathematical transform that produced a technical result (lip-sync automation) in a way that replaced a previous subjective manual process with a specific technical one. In contrast, the current claims recite "removing all elements that are duplicated" and "creating symbols" at a high level of generality. Unlike McRO, these claims do not recite a specific, limited mathematical formula; they recite the broad result of deduplication. Therefore, they do not provide the specific technical constraints that saved the claims in McRO.
Applicant argues that based on the claim amendments to Independent Claims 1 and 12, these steps do not recite “Mathematical Concepts” Grouping. Examiner respectfully disagrees (see Applicant Remarks, Pages 37-39, dated 02/16/2026). Examiner respectfully disagrees.
Applicant asserts that these claims only "involve" math and do not "recite" a mathematical concept under Thales Visionix. In Thales Visionix, the claims were eligible because they were directed to a physical configuration of sensors that happened to use math to calculate position. Here, the "calculation processing" step explicitly recites "calculating an overall evaluation value... based on the individual evaluation values." This is not a physical arrangement; it is a mathematical relationship (a formula or algorithm) used to process data. Because the "evaluation" is the core of the step, it recites a mathematical concept rather than merely using one to improve a physical system.
Additionally, or alternatively, 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)).”
Dispute Reason #2: Preemption and "Insignificant Extra-Solution Activity". Applicant argues that these claims do not preempt the field and include significant activity. Under the current USPTO guidance, the preemption analysis is conducted through the Step 2A/2B framework, not as a standalone test. Even if a claim does not preempt the entire field, it is still ineligible if it is directed to an abstract idea without integration into a practical application. The "creation of symbols" and "calculation of values" are insignificant extra-solution activities because they merely provide the markers and the output for the underlying abstract logic of deduplication. They do not transform the abstract nature of the "removal processing."
In summary, Claims 1-12 are maintained as recite an abstract idea because they are directed to the logical organization of data (certain methods of organizing human activity), the mathematical calculation of scores (mathematical concepts), and the deduplication of protocol steps (mental processes). By combining these exceptions without a specific technical implementation that improves the processing device itself, the claims remain squarely within the judicial exceptions. Therefore, in conclusion, Examiner maintains that Claims 1-12 are directed to abstract ideas under “Mental Processes” or “Certain Methods of Organizing Human Activities” or “Mathematical Concepts” Groupings under 35 U.S.C. § 101 Step 2A Prong 1.
Argument #2:
(B). 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 39-56, dated 02/16/2026). Examiner respectfully disagrees.
First, specifically, Applicant appears to argue that based on the claim amendments to Independent Claims 1 and 12 that the claims are patent eligible due to these claims integrating the recited judicial exception into a practical application which applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort designed to monopolize the judicial exception (see MPEP § 2106.05 (e)). Examiner respectfully disagrees.
In response to Applicant’s comments here, Examiner focuses on the lack of a “technological” improvement and the presentence of “insignificant extra-solution activities” for Independent Claims 1 and 12. The Applicant argues that the “materials development” context imposes a meaningful limit. However, the steps of creating symbols, removing duplicates, and calculating values are merely data management tasks applied to a specific field. Simply limiting an abstract idea to a particular technological environment (e.g., “materials development”) does not integrate the idea into a practical application. Under Alice, field-of-use restrictions do not transform an abstract process into a patent-eligible one. The “symbols” and “removals” are just administrative cleanup of a protocol, not a technical improvement to the material itself. For the claims to be integrated, it must typically improve the functioning of a computer or another technology. These steps do not improve how a processing device works (e.g., they don’t make the computer faster or more memory-efficient). Instead, they use a computer as a tool to automate the logic of protocol design. The “duplication removal” is a standard logical operation (deduplication) in a data processing. It does not provide a technological solution to a technological problem; it provides a logical solution to a workflow problem. Thirdly, there is no physical transformation or control. Integration often requires that the judicial exception be used to control a physical process or effect a transformation. These claims shown in Independent Claims 1 and 12 are directed to a “processing device” performing calculations and symbol generation. There is no recitation of physical equipment being controlled or a physical material being transformed by these symbols. Without a link to a physical execution (e.g., specific robotic movements or chemical reactions), the “evaluation values” are merely information for human consumption, which remains in the realm of the abstract.
The Applicant claims that Independent Claims 1 and 12 are more than a “drafting effort to monopolize”. Because the steps are defined so broadly – “removing all duplicated elements” – these claims effectively preempt the basic logic of efficiency in any materials protocol. If any scientist were to sit down with a pen and paper and cross out a redundant step in a branching experiment, they would be performing the “backwards duplication removal processing”. This confirms that the claims are, in fact, a drafting effort to monopolize a fundamental mental process and mathematical filtering technique. Moreover, the calculation is “end-of-process” information. The “calculation processing” step is typical “extra-solution activity”. Collecting data and calculating a score is a classic abstract idea. Merely stating that the claim is base don the “remaining elements” does not add a practical application; it is simply the final output of the abstract mathematical concept.
Secondly, specifically, Applicant appears to argue that based on the claim amendments to Independent Claims 1 and 12 that the claims are patent eligible due to the inclusion of a well-understood, routine, and conventional activity may still be sufficient to integrate a judicial exception into a practical application. Examiner respectfully disagrees.
In response to Applicant’s comments here, the addition of well-understood, routine, or conventional activity does not integrate an abstract idea if those elements do nothing more than provide mere instructions to implement the idea on a computer. The steps of “creating symbols” and “removing duplicates” are just ways of labeling and filtering data. Using a processing device to execute these steps are essentially a “applying it on a computer” instruction. Without a specific improvement to the hardware’s own functioning, these steps remain “mere instructions” rather than a practical application. Second Reason is due to a Lack of Technological Improvement. A primary way to show integration is a technological improvement to the computer or another technical field. While the Applicant argues the conventional steps are a “practical application,” they do not provide a technological solution to a technological problem. Removing duplicate steps in a protocol is a logical optimization of a process, not a technical improvement to materials science itself. Because the “advancement” is in the logic of the experiment’s design rather than a new way of manipulating physical matter, it fails to achieve integration.
Even conventional steps are insufficient if they only add insignificant extra-solution activities. The “calculation processing” and “evaluation values” are classic examples of extra-solution activities – they occur after the abstract idea’s core logic has been performed. Collecting data and calculating a score is a data-processing output that does not meaningfully limit the abstract idea or transform it into a practical application. Applicant may argue that “materials development protocol” context is a meaningful limit. However, generally linking an abstract idea to a particular technological environment (field-of-use) is not integration. Deduplication (the backward/forward removal) is a fundamental logic concept. Limiting the concept to “materials protocols” is a drafting effort to monopolize a logical tool within that specific industry, which the Supreme Court specifically prohibited in Alice. Lastly, the most critical test for integration is whether the elements impose a meaningful limit such that the claims are more than a monopoly on the idea. Because these steps describe the abstract logic of any branching/merging protocol at a high level of generality (“removing all duplicated elements”), they do not impose a “meaningful limit”. They are so broad that they would cover any computerized method of cleaning up an experimental workflow, which is exactly the type of “drafting effort to monopolize” that fails Step 2A.
Thirdly, specifically, Applicant appears to argue that based on the claim amendments to Independent Claims 1 and 12 that the claims are patent eligible under 35 U.S.C. § 101 step 2a prong 2 and analogous to the Ex parte Desjardins, Appeal No. 2024-000567 (PTAB ARP Decision, September 26, 2025). Examiner respectfully disagrees.
Examiner notes that in the Ex parte Desjardins case dealt with “catastrophic forgetting” – a specific, inherent failure of neural networks where learning new information causes the loss of previously learned data. Examiner breakdowns reasons why the claim limitations of Independent Claims 1 and 12 are unlike the Ex parte Desjardins case’s claims are maintained as still patent ineligible under 35 U.S.C. § 101 step 2a prong 2. First reason is due to Technical Problem vs Logical Redundancy. “Catastrophic Forgetting” is a hardware-agnostic, technical breakdown of a machine learning model’s internal weights. Desjardins found eligibility because the claims provided a specific technical fix to ensure the AI’s “memory” remained stable. In contrast, the current claims address logical redundancy in an experimental protocol. “Removing duplicated elements” is not a technical fix for a failing computer system; it is a business or administrative efficiency move. There is no “failure” of the computer being corrected here; the computer is simply being used to clean up a human-designed flowchart. Second Reason: Improvement to Computer Functionality vs. Workflow Optimization. The Desjardins decision hinged on the fact that the solution improved the functionality of the computer (the AI model) itself. Independent Claims 1 and 12 of the instant application do not make the “processing device” work better. The device executes the “removal processing” using standard logic. While the result (a cleaner protocol) might be useful to a scientist, it does not represent an improvement to the technological capabilities of the processing device. It is a “workflow optimization” rather than a “technical improvement”. Third Reason: Mathematical Logic vs. Non-Conventional AI Architectures. The Desjardins claims involved a specific method of managing data cross nodes to prevent a specific AI error. The “forward” and “backward” duplication removal steps in the current claims are mathematical/logical operations. Unlike the specific anti-forgetting measures in Desjardins, “removing duplicates” is a foundational logic principle. Applying a basic logic rule to a “materials development protocol” is a field-of-use limitation, not a technical integration. Reason #4: Preemption of Basic Reasoning. Preventing catastrophic forgetting requires complex, non-obvious algorithmic intervention. The logic of removing a duplicate element after a merge is a mental process that any human would perform when refining a procedure. If the “simultaneous merging symbol” tells a human two paths have joined, the human naturally knows they don’t need to do the same task twice. By claiming this logic, the Applicant is monopolizing a basic mental shortcut, whereas Desjardins claimed a specific technical solution to a problem humans cannot solve mentally. Reason #5: Lack of a “Practical Application” in the Materials Field. In Desjardins, the application was integrated because it ensured the AI could actually perform its tasks. Here, the “calculation processing” and “symbols” are merely pre-and post-processing of data. They do not “integrate” the idea into the physical act of material synthesis. Without a link to a physical change or a specific technical improvement in how materials are handled, the claims remain a “drafting effort” to patent the logic of efficiency.
Fourth, specifically, Applicant appears to argue that based on the claim amendments to Independent Claims 1 and 12 that the above-noted elements are integrated into a practical application of the judicial exception that applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, and/or provides an improvement in the functioning of a computer, or an improvement to other technology or a technical field, or an improvement to machine learning technology (see Applicant Remarks, Page 48, dated 02/16/2026). Examiner respectfully disagrees.
There is a distinction between applying a rule to a field versus improving the field’s underlying technology. Applicant’s assertion that the claims are “integrating the application… with the particular technology” is a classic field-of-use restriction. Limit the abstract idea of “deduplication” or “symbolic labeling” to the field of “materials development protocols” does not transform the idea into a practical application. Under Alice and the MPEP, a claim that simply says “perform this abstract logic in this specific industry” remains ineligible because it does not provide a technical solution to a problem inherent in that technology. Moreover, while the Applicant claims an improvement in “machine learning” or other technology, the specification fails to show how the computer or the material synthesis is technically improved, plus there is no mentioning in any of these steps for Independent Claims 1 and 12 the use of “machine learning”. Removing redundant steps in a protocol is a logical optimization (improving the “plan”). It is an administrative or “human-centric” improvement to a workflow, similar to a business process optimization. It does not improve the hardware of the processing device, nor does it describe a new physical method for manipulating matter. Thirdly, there is a failure to impose a “meaningful limit”. The “removal processing” is described at a high level of generality (e.g., “removing all… that are duplicated”). Because the claims cover any and all ways of removing duplicates within this protocol, it lacks the “specific implementation” details required to impose a meaningful limit. Instead of a narrow technical fix, the claims seek to monopolize the basic logic of efficiency within the materials science field, which is exactly what Step 2A is designed to prevent. The “creation processing” (labeling with symbols) and “calculation processing” (scoring) are extra-solution activities. Labeling data points before a pross and calculating a value after a process are data-handling steps. They do not “use” the judicial exception to achieve a technical result; they merely provide the inputs and outputs for the abstract logic. Last Reason: Distinguishing from Desjardins case: Unlike Desjardins, where the invention solved the technical problem of “catastrophic forgetting” in neural network weights, the current claims address “redundancy” in a flowchart. Redundancy is a human-perceivable logic flaw, not a technical failure of a computer system. Therefore, the “improvement” here is not to the functioning of a computer or machine learning technology, but rather to the clarity of the instructions being fed into it.
Fifth, specifically, Applicant appears to argue that Claims 1 and 12 are not directed to merely to automation of manual processes, and does not merely recite insignificant extra0solution activities to a judicial exception, e.g., mere data fathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process. Also Applicant argues that Claims 1 and 12 are not merely reciting a transformation of an intangible concept such as a mental judgment, nor is it reciting no more than an idea of a solution or outcome or use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (see Applicant Remarks, Pages 52-56, dated 02/16/2026). Examiner respectfully disagrees.
In response to Applicant’s comments here, the following remarks dispute Applicant’s assertions by focusing on the distinction between technical improvements (eligible) and logical/administrative optimizations (ineligible). Dispute Reason #1: Automation of Manual Processes. The steps of “identifying branches”, “removing duplicates”, and “calculating values” are fundamental logical operations that can be – and often are – performed manually by scientists when designing flowcharts. Simply automating these mental or pen-and-paper shortcuts on a processing device does not transform them into a patent-eligible practical application. Unlike Ex parte Desjardins, where the invention solved a machine-specific failure (“catastrophic forgetting”), these claims solve a human-perceived redundancy in a workflow, which is the definition of automating a manual/mental process. Dispute Reason #2: Insignificant Extra-Solution Activity. The “creation processing” (labeling paths with symbols) and “calculation processing” (scoring the protocol) are classic examples of extra-solution activities. Labeling data points before a process and calculating a score after the logic Is performed are data-handling steps. These steps do not “use” the judicial exception to achieve a technical result; they merely provide the administrative wrapper for the abstract logic of deduplication. Dispute Reason #3: Transformation of Intangible Concepts. The core of these claims are the “removal processing” of duplicated elements” based on these “symbols”. This is a purely logical transformation of a protocol structure. Because the “materials development protocol” is described as a sequence of steps (an intangible plan) rather than a specific physical manipulation of tangible matter, the “removal” is a transformation of a mental judgment (e.g., the judgment that a step is redundant) into a different version of that same intangible plan. Dispute Reason #4: Ordinary Capacity of a Computer. The “processing device” is used here solely to receive, store and manipulate data (the elements of the protocol). The specification does not describe any non-conventional hardware or a new way for the processor to operate. Instead, the processor is functioning in its ordinary capacity to execute a logical algorithm. Using a generic computer to organize data for “materials development” is a “field-of-use” restriction, not a technological improvement to computer functionality. Dispute Reason #5: Improvement to Technology/Machine Learning. To satisfy Step 2A Prong 2, the improvement must be technical, not just a better outcome. In Desjardins, the improvement was to the stability of the AI model’s memory. Here, the “improvement” is a more efficient experiment plan. This is a procedural optimization in the field of materials science, not a technical improvement to “machine learning technology” or “computer functioning”. Without a technical solution to a technical problem inherent in the machine itself, the claims remain a “drafting effort to monopolize” an abstract idea.
Therefore, Examiner maintains that Claims 1-12 are "directed to" the judicial exception (an abstract idea) because it fails to integrate that idea into a practical application, and are found to be ineligible at Step 2A, Prong 2 of the analysis.
Argument #3:
(C). 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 57-68, dated 02/16/2026). Examiner respectfully disagrees.
Applicant argues that the amended claim limitations of Independent Claims 1 and 12 do not merely recite Well-Understood, Routine, Conventional Activity under MPEP 2106.05 (see Applicant Remarks, Page 57, dated 02/16/2026). Examiner respectfully disagrees.
In response to Applicant’s comments here, the following remarks dispute Applicant’s assertions. First, Individual Elements are conventional. Symbol Creation: Creating labels (symbols) to categorize data points (merging/branching) is a foundational data-structuring task. It is a conventional way to represent logic flows in computer science. Duplication Removal: “Deduplication” is a textbook algorithmic process. Whether done “forward” (after a merge) or “backward” (before a branch), the act of identifying and removing redundant data entries is a routine function of any standard processing device. Calculating Processing: Applying evaluation values to data and calculating an overall score is a basic mathematical operation. Using a computer to sum or average individual scores is the definition of using a computer in its “ordinary capacity”. The “Materials Development” Context is a Field-of-Use Limitation. Applicant may argue that applying these steps to “material development” is non-conventional. However, the Supreme Court in Alice and Mayo established that limiting an abstract to a particular technological field does not make it “significantly more”. If the underlying steps (filtering, labeling, calculating) are conventional in general data processing, applying them to material science protocols is a mere “field-of-use” restriction, which does not constitute an inventive concept. The Ordered Combination Adds No Inventive Concept. Even if the individual steps are conventional, the Applicant may argue the “ordered combination” is unique. The combination follows a standard logic sequence: (1) Label data, (2) Execute/Develop the plan, (3) Clean up redundancies, and (4) Score the result. This sequence is the natural logic progression of an optimization task. There is no “non-conventional” interaction between the steps that transforms the nature of the claims. The steps function exactly as expected – the symbols identify where the removals should happen, and the calculation happens at the end. This is “well-ordered” logic, not an “inventive” technical synergy. Failure to Improve the Machine or Technology. To be “significantly more”, the claims, must improve the functioning of the computer itself or a technical field. These steps do not make the “processing device” faster or more efficient in a technical sense they only make the resulting protocol more efficient for a human user. This a procedural or administrative improvement, not a technological one. Unlike Desjardins, which solved a technical machine-learning error (“catastrophic forgetting”), these claims solve a human-perceivable redundancy that does not require a non-conventional computer implementation. Mere Automation of Mental Steps. An inventive concept cannot be found in the mere automation of a mental process. An inventive concept cannot be found in the mere automation of a mental process. The logic of “if I mere two paths, I should remove the duplicates” is a fundamental principle of human reasoning. Providing a computer to do this faster or more accurately does not provide “significantly more” than the mental process itself. It is simply a “generic computer implementation” of a well-known logical shortcut.
In response, 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.
Moreover, Examiner refers Applicant to 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.
Secondly, specifically, Applicant appears to argue that Claims 1 and 12 under the Ex Parte Desjardins case, Applicant notes that the above-noted elements provide an improvement in the functioning of a computer, or an improvement to other technology or a technical field, or an improvement to machine learning technology (see Applicant Remarks, Pages 61-63, dated 02/16/2026). Examiner respectfully disagrees.
To dispute the Applicant’s reliance on Ex parte Desjardins under Step 2B, the primary argument is that the “improvement” in the current claims is logical and administrative, whereas the improvement in Desjardins was technical and algorithmic. First, Technical Solution vs. Logical Cleanup. In Desjardins, "catastrophic forgetting" is a technical failure of neural network weights that prevents the machine from functioning. The solution was a specific, non-conventional algorithm that allowed the computer to retain data. The current claims address "redundancy" in a protocol. Redundancy is not a technical failure of the "processing device"; it is a design inefficiency in the user's workflow. Removing duplicates is a logical cleanup that a human can perform mentally. Improving the "logic" of an experiment is a procedural optimization, not a technical improvement to the computer's own functionality or to machine learning technology.
Reason #2: Improvement to “Protocol Evaluation” is not a Technical Field: Desjardins improved the field of Machine Learning by fixing a machine-specific error. Applicant’s claim that they improve "materials research protocol evaluation technology" is merely a description of a more efficient business/scientific workflow. Under Alice, improving a "method of organizing human activity" (even in a scientific context) is not a technical improvement. The "technology" of protocol evaluation, as described in the claims, is simply the automation of logical rules (deduplication). Reason #3: Lack of a "Specific Implementation" (Step 2B "Significantly More"). Desjardins provided "significantly more" because it recited a specific, non-conventional path for data management to resolve the forgetting problem. The current claims use high-level functional language ("removing all... that are duplicated") without reciting the specific technical code or unconventional hardware architecture required to perform it. Using a generic processor to execute "deduplication" is the most conventional use of a computer possible. It lacks the "inventive concept" because it doesn't solve a problem caused by the computer; it just uses the computer to solve a human organizational problem. Reason #4: Field-of-Use vs. Inventive Concept. Applicant asserts that being "directed to materials research" provides the inventive concept. However, Supreme Court precedent (Mayo) dictates that field-of-use limitations cannot provide "significantly more." If the steps (labeling, filtering, and scoring) are conventional in general data processing, they do not become "inventive" simply because they are used by a materials scientist rather than a banker. Reason #5: No Improvement to Machine Learning Technology. Unlike Desjardins, these claims do not modify how a machine learning model learns, stores weights, or processes neurons. They merely clean up the input data (the protocol). Improving the quality of the data fed into a computer is not the same as improving the functioning of the computer itself.
Thirdly, specifically, Applicant appears to argue that Claims 1 and 12 are directed to a technological solution to a technical problem, and the specification sets forth an improvement to technology or a technical field, and therefore the claim limitations should not be dismissed as additional elements are mere generic computer components without considering whether such elements confer a technological improvement to a technical problem especially as to improvements to computer components or the computer system. Applicant also submits hat the claims are directed to a technological solution to a technical problem, and that the claimed invention provides an improvement to materials research protocol evaluation technology as enumerated in the specification, and in which the related art cannot deal with this point.Furthermore, Applicant submits that that Applicant is not merely claiming a generic computer structure. The claims do not merely recite “apply it” using a computer as a tool to perform a list of functions. It also apparent that Claim 1 is not merely reciting receiving or transmitting data over a network. Thus, as is apparent, do not merely recite insignificant extra-solution activities to a judicial exception (see Applicant Remarks, Pages 63-68, dated 02/16/2026). Examiner respectfully disagrees.
To dispute these points, Examiner maintains the following arguments regarding that Applicant’s Independent Claims 1 and 12 of the instant invention do not provide a technical solution to a technical problem due to the alleged improvements are logical and administrative rather than technical. First, Applicant asserts that the claims solve a technical problem in "materials research protocol evaluation technology." However, while the Applicant characterizes the problem as technical, the "problem" being addressed is logical redundancy in a human-designed flowchart. Identifying where two paths merge and removing duplicate steps is a matter of administrative efficiency, not a technical failure of a computer system. Unlike a technical problem such as data latency or signal interference, "redundancy" is a human-perceivable logical flaw. Solving it via deduplication is a logical optimization of a process, which does not constitute a "technological solution" under Alice/Mayo. Second Point: Improvement to Technology vs. Logic. Applicant asserts that the specification sets forth an improvement to protocol evaluation technology. However, an "improvement" under Step 2B must be technological in nature—meaning it must improve the functioning of the computer itself or a technical field (e.g., MPEP 2106.05(a)). Here, the "improvement" is a more efficient experiment plan. This is a procedural advancement in the field of project management or materials science workflow. It does not improve the hardware's speed, the software's memory management, or the physical properties of the materials themselves. Therefore, it is a non-technical improvement that does not confer an inventive concept. Third Point: Reliance on Ex parte Desjardins (AI vs. Protocol Logic). Applicant asserts that the claims are analogous to the precedential Ex parte Desjardins case involving machine learning. Desjardins (Appeal 2024-000567) is fundamentally distinguished by the nature of the "improvement." In Desjardins, the invention addressed "catastrophic forgetting"—a specific, inherent technical failure of neural networks. The solution in that case modified the model's internal training architecture to preserve prior learning. In contrast, the current claims merely use a computer to clean up a list of tasks. There is no technical breakdown of the processing device being corrected; the computer is simply performing routine logical filtering. Consequently, the claims lack the machine-centric technical character found in Desjardins. Fourth Point: Apply It" and Ordinary Capacity. Applicant asserts that the claims do not merely recite "apply it" or use a computer in its ordinary capacity. However, the claims recite high-level functional steps such as "creating symbols," "removing elements," and "calculating values." These are the primary tools of a generic computer. Without reciting specific, non-conventional hardware or a unique software architecture that changes how the computer processes data (as opposed to what data it processes), the claim is exactly a "generic computer implementation." Simply adding the context of "materials research" to these routine functions is a field-of-use restriction, which Supreme Court precedent has repeatedly ruled does not provide "significantly more." Fifth Point: Insignificant Extra-Solution Activity. Applicant asserts that the steps shown in Independent Claims 1 and 12 are not insignificant extra-solution activities. However, the "calculation processing" (scoring) and "creation processing" (symbol labeling) are typical extra-solution activities. Labeling inputs before processing and calculating a sum or score at the end are conventional data-handling practices. These steps do not transform the abstract idea into an inventive application; they merely bookend the logical deduplication with standard administrative markers.
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. When considered individually and in combination, the additional elements (the specific steps of symbol creation/removal and the generic processing device) do not amount to significantly more than the abstract idea itself. Claims 1-12 remains directed to a judicial exception without providing an inventive concept and is patent ineligible under 35 U.S.C. § 101 analysis.
Claim Rejections - 35 USC § 101
9. 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.
10. 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 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 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 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 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 of the 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 of the 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 plurality of elements and calculating an overall evaluation value of the materials development protocol based on the individual evaluation values made to correspond to the remaining of the plurality of elements for the materials development protocol after being subjected to the 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 Claims 1 and 12);
“a creation step of creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the 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 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 a 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 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 of the 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 of the 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 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 the remaining of the plurality of elements” (see Independent Claim 12).
Here, the claim limitations for Independent Claims 1 and 12 are directed to organizing and streamlining data in a materials development protocol. 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. Lastly, 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.
Therefore, 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”), 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”). Independent Claim 12 recites additional elements directed to: (e.g., “a computer”). 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.
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”). Independent Claim 12 recites additional elements directed to: (e.g., “a computer”). 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) 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.
Examining Claims with Respect to Prior Art
11. Applicant’s arguments, see pages 68-92 filed on 02/16/2026, with respect to the 35 U.S.C. § 103 Claim Rejections for Claims 1-12 have been fully considered and are found to be persuasive. Therefore, Claims 1-12 are allowed over the prior art only. Please note that the following issues still remain: (1) 35 U.S.C. § 101 Claim Rejections for Claims 1-12.
Regarding Independent Claims 1 and 12, there is no disclosure in the existing prior art or any new art that either teaches and/or discloses the sequence operation of features either individually or in combination relating to:
- “creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the 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 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 plurality of the elements”;
- “forward duplication removal processing comprising removing all of the plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol”;
- “backward duplication removal processing comprising removing all of the 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”;
- “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”.
The closest prior arts are as follows:
#1) US PG Pub (US 2006/0047454 A1) – “Quality Control System for Manufacturing Industrial Products”, hereinafter Tamaki, et. al.;
#2) US Patent # (US 5,970,244 A1) – “Method of Performing a Reverse Analysis of a Program and Its Apparatus”, hereinafter Nagahashi, et. al.;
#3) US PG Pub (US 2011/0107335 A1) – “Method and Apparatus for Estimating a Task Process Structure”, hereinafter Nakazato, et. al.
Regarding the Tamaki reference, Tamaki teaches or suggests that the production line 1 shown in FIG. 1 represents a processing line and is expressed in a chain of serially-connected process. In the case of an assembly line, the assembly of parts is expressed by merging parallel process. The sequence of the process is changed or a specified process is omitted depending on the product type, and therefore the information expressed in the manufacturing BOM 40 is switched by the product type tags 40 a, 40 b, 40 c. A computer 940 implementing the causation analysis module of quality variation 142 searches the starting point column 63 and the final point column 64 of the quality variation causation graph data table 60 as a data operation to express a graph and thus extracts the edge No. 1 (441), the edge No. 2 (442) and the edge No. 3 (443) as edges containing process A431, as shown in FIG. 7A. Process A431, if included in the final point column 64, is replaced horizontally with the vertex name (process name) in the starting point column 63. Now, the causation direction is determined, and therefore the term “(provisional)” is deleted from the vertex name and a symbol indicating a directed graph with a definite causation direction is stored in the graph type column 62. Now, the causation direction is determined, and therefore the term “(provisional)” is deleted from the vertex name and a symbol indicating a directed graph with a definite causation direction is stored in the graph type column 62.
However, neither Tamaki, et. al and the other prior art of record do not reach or render obvious the sequence of limitations directed to:
- “creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the 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 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 plurality of the elements”;
- “forward duplication removal processing comprising removing all of the plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol”;
- “backward duplication removal processing comprising removing all of the 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”;
- “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”.
Regarding the Nagahashi, et. al. reference, Nagahashi, et. al teaches or suggests that a control flow is prepared by connecting blocks in an execution order, each block not including a branch and comprising a series of statement, based on a syntactical analysis of a program. A second control flow is prepared by cutting the first control flow at one portion and combining the cut result with a symbol designating a loop. A third control flow is prepared by expressing a portion of a loop, branch and merge in the second control flow and the second control flow in a hierarchical manner. The third control flow expresses a portion of a sequential execution other than the loop, branch and merge, a portion of the loop, and a portion of a branch and merge in a hierarchical order by using a symbol for a sequential execution. A specification of the program is extracted by using the third control flow. FIG. 15 shows a process of an order for combining data item assignment tables corresponding to basic blocks which are combined by the 2B-B elements in the control flow 2B, and preparing a single assignment table. In FIG. 15, when the process starts, the empty assignment table T is generated at step S80, and the 2B element is located at a lower position than the 2B-B element corresponding to the branch, the 2B element is obtained at step S81 and a process of generating an assignment table for the basic blocks located at a lower position is recursively performed at the step S82.
However, neither Nagahashi, et. al and the other prior art of record do not reach or render obvious the sequence of limitations directed to:
- “creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the 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 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 plurality of the elements”;
- “forward duplication removal processing comprising removing all of the plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol”;
- “backward duplication removal processing comprising removing all of the 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”;
- “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”.
Regarding the Nakazato, et. al. reference, Nakazato, et. al. teaches or suggests that supports an evaluation of a protocol in which a process procedure including a plurality of paths that connect a plurality of elements in expressed, the protocol evaluation support apparatus comprising (see at least Nakazato: Figs. 9-12 & ¶ [0108] & ¶ [0124]. Nakazato teaches that a determination is made as to whether or not the number of branchings (e.g., the number of branch points) on a path from the start point to the positions at which the events are to be placed is equal to the added-number attribute count. In this case, since the added-number attribute count is 2 and the number of branchings on the path from the start point to the placement position is 1, it is determined that the number of branchings is less than the added-number attribute count (e.g., the number of branchings<the added-number attribute count). In this case, the branch route is re-branched so that the number of branchings on the path from the start point to the placement position is equal to the added-number attribute count. More specifically, a branch route is set in accordance with the added-number attribute other than the added-number attribute(s) associated with the branch route(s) on the path from the start point to the placement position, thereby rebranching the branch route. See also Nakazato at Figs. 31-35.);
- a processing device (see at least Nakazato: ¶ [0068] & Fig. 12. Nakazato teaches the event placement processor 333 in Fig. 12 and the virtual-route data processor 332 in Fig. 12.) configured to execute:
- creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the protocol where the plurality of the elements simultaneously merge into one element, and creating a simultaneous branching symbol that specifies simultaneous branching at a portion in the protocol where one element simultaneously branches to the plurality of the elements (see at least Nakazato: Fig. 35 & ¶ [0050] & ¶ [0057] & ¶ [0078]. Nakazato teaches that after the route into which the route for the task E and the route for the tasks F and G merge together and the route for the tasks C and H merge together, a task D is executed. See also Nakazato at ¶ [0057]: The flow instance illustrated in FIG. 8 is substantially the same as the flow instance illustrated in FIG. 7. In the task process structure illustrated in FIG. 8, the diamond-shaped block with symbol “O” therein indicates a branch point at which one route is branched into n arbitrary routes. This task process structure is such that, after the routes are merged together, the route returns to the pre-branching point, as needed. See also Nakazato at ¶ [0078]: A start point, a branch point, a merge point, and an end point are placed, and a line coupling the start point and the branch point, four branch routes coupling the branch point and the merge point, and a line coupling the merge point and the end point are set to generate virtual route data as illustrated in FIG. 18. See also Nakazato at Fig. 3 & Fig. 9 & Fig. 27.)
- development processing for developing the protocol after being subjected to the creation processing for each of the paths included in the process procedure (see at least Nakazato: Fig. 9 & Figs. 31-35 & ¶ [0059-0064]. Nakazato teaches that the processing is performed on the events H and I whose added-number attribute counts are 1. Upon completion of the processing, the virtual route data becomes data as illustrated in FIG. 32. In the example of FIG. 32, the event H is placed on the branch route with the second added-number=a and the event I is placed on the branch route with the second added-number=b. See also Nakazato at ¶ [0063-0064]: Nakazato notes that it is assumed that the order system in company B is computerized with respect to an order placed with company B and specifications of the ordered product are to be checked before the delivery since it is a special order product. Thus, in the flow in FIG. 9, processing is performed according to the flow of estimate checking (7), specification checking (10), and delivery (12). After deliveries of the in-house and external orders are completed, receipt-and-inspection (13) is executed and the series of the order processing is completed. See also Nakazato at ¶ [0123].).
However, neither Nakazato, et. al and the other prior art of record do not reach or render obvious the sequence of limitations directed to:
- “creation processing for creating a simultaneous merging symbol that specifies simultaneous merging at a portion in the materials development protocol where the 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 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 plurality of the elements”;
- “forward duplication removal processing comprising removing all of the plurality of elements that are duplicated in a process after the simultaneous merging symbol for the materials development protocol”;
- “backward duplication removal processing comprising removing all of the 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”;
- “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”.
Therefore, when taken as a whole, the claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor do the available art suggest or otherwise render obvious further modification of the evidence at hand. Such modification would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Epstein can be reached on 571-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-270-8853.
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/DERICK J HOLZMACHER/Patent Examiner, Art Unit 3625A
/BRIAN M EPSTEIN/Supervisory Patent Examiner, Art Unit 3625
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