DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 6, 10, 17 are rejected under 35 U.S.C. 101 because:
Regarding to claims 1, 10, 17:
Eligibility Step 1 (MPEP 2106. 3, subsection II): The claims, after reviewing the entire application disclosure, considered as a whole, are determined to be directed to one of the statutory category (processes, machines, manufactures, and compositions of matter): A method/apparatus/system.
Eligibility Step 2A (MPEP 2106. 4, subsection II):
Prong One: The claims recite the limitations of calculating the joint probability functions and the likelihood score. These limitations are analyzed including concepts directed to “mathematical concepts” that falls within at least one of the groupings of abstract idea (MPEP 2106.04(a) Abstract Ideas: The enumerated groupings of abstract ideas: Mathematical concepts, Certain methods of organizing human activity, Mental processes). As a result, the claims recite a judicial exception.
Prong Two: The additional steps/actions/elements recited in the claims:
- selecting a set of oxidation state as a function of the likelihood score (Insignificant post solution activity (MPEP 2106.05(g))
When viewed in combination of as a whole, the recited additional steps/actions/elements do no more than add insignificant extra-solution to the judicial exception. As a result, these additional steps/actions/elements do not integrate the judicial exception into a practical application because they do not impose any meaningful limits on practicing the abstract idea. These claims are therefore directed to an abstract idea.
Eligibility Step 2B (MPEP 2106. 5: Whether a claim amounts to significantly more):
The additional step/action/element recited in the claims, selecting a set of oxidation state as a function of the likelihood score, does not result as a transformation/reduction to “a different state of thing”, “a different function or use”, or “a physical or tangible object or substance” to add an inventive concept to the claims; as a result, what it does is no more than adding insignificant pre-solution and post-solution activities to the judicial exception.
Regarding to claims 6, 10: The claim recites the limitations that using a trained machine learning model to calculate the joint probability functions. The claim language does not specify more about the one or more machine learning models, they are therefore considered as generic. As a result, the use of the one or more machine learning models as claimed is directed to the abstract idea of using a generic machine learning model/technique in a particular/new environment or to a particular field of use, with no invention concept (Recentive Analytics, Inc v. Fox Corp (Fed Cir, 2023-2437, 4/18/2025)).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding to claims 1-3, 9, 10-12, 15, 17-18: Regarding to the calculation of the joint probability functions for electronic chemical potential and oxidation states for ion types, the Specification regards to the expression:
Pm (µe, Sj | B)
In mathematics, such joint probability Pm is calculated by the multiplication of Pm (µe) and Pm (Sj | B). The Specification however is silent on how to obtain the probability of the electronic chemical potential Pm (µe), and the conditional probability of the oxidation state in conditioning with the oxidation state boundaries Pm (Sj | B). As a result, the Specification does not enable one of ordinary skill in the art to use/make the claimed invention.
Regarding to claims 6, 10, 17: Regarding to the calculation of the joint probability functions for electronic chemical potential and oxidation states for ion types, the Specification regards to using a machine learning model. The Specification however does not specifically teach how to build such machine learning model to perform the calculation; Particularly, how to obtain the probability of the electronic chemical potential and the conditional probability of the oxidation state in conditioning with the oxidation state boundaries and how to use these probabilities to train and evaluate a machine learning model.
Claims 4-5, 7-8, 13-14, 16, 19-20 are rejected because they indirectly depend on claim 1, 10, and 17.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 10, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are:
The claims recite the step of calculating joint probability functions for electronic chemical potential and oxidation states without defining how this step links to the other steps in the claim body.
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAM S NGUYEN whose telephone number is (571)272-2151.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DOUGLAS RODRIGUEZ, can be reached on 571-431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAM S NGUYEN/ Primary Examiner, Art Unit 2853
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