DETAILED ACTION
Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-12 are currently pending in this application.
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 5/28/2024 and 3/11/2025 have been received. The submission is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the information disclosure statement has being considered by the examiner.
Drawings
4. The drawings submitted on 5/28/2024 are in compliance with 37 CFR § 1.81 and 37 CFR § 1.83 and have been accepted by the examiner.
Claim Rejections - 35 USC § 101 Non-Statutory
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 non-statutory subject matter.
Specifically, representative Claim 1 recites:
A method of searching for a thermosetting epoxy resin composition executed by an information processor, the method comprising the steps of:
training a plurality of predictive models each corresponding to a target variable using actual data related to a thermosetting epoxy resin composition; and
searching for a thermosetting epoxy resin composition with a desired balance of physical properties by inverse analysis using the plurality of predictive models,
the actual data include a blend raw material and a blend ratio of the thermosetting epoxy resin composition, a polymer composition related to the blend raw material, and a structural formula related to the blend raw material, and the target variable includes tensile strength, fracture toughness, and a glass transition temperature.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements.”
Similar limitations comprise the abstract ideas of Claims 7-8.
Under Step 1 of the analysis, claim 1 does belong to a statutory category, namely it is a process claim. Likewise, claim 7 is a device claim and claim 8 a non-transitory computer readable medium claim.
Under Step 2A, prong 1, claim 1 is found to include at least one judicial exception, that being a mathematical concept and/or mental process. This can be seen in the claim limitations of “training a plurality of predictive models each corresponding to a target variable using actual data related to a thermosetting epoxy resin composition; and searching for a thermosetting epoxy resin composition with a desired balance of physical properties by inverse analysis using the plurality of predictive models, the actual data include a blend raw material and a blend ratio of the thermosetting epoxy resin composition, a polymer composition related to the blend raw material, and a structural formula related to the blend raw material, and the target variable includes tensile strength, fracture toughness, and a glass transition temperature.”, which is the judicial exception of a mental process and/or a mathematical concept because it is merely a data evaluation including calculations, and/or judgements capable of being performed mentally.
Similar limitations comprise the abstract ideas of Claims 7-8.
Step 2A, prong 2 of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
In addition to the abstract ideas recited in claim 1, the claimed method recites additional elements including a processor and/or computer” (claims 7-8) however the “processor” and “computer” are recited at a high level of generality, any generic computer and/or processor may be used, and merely amounts to the use of computer technology as a tool to apply the abstract idea (see MPEP 2106.05(f)) and/or the use of “computer” and/or “processor” to perform the predictions, that are otherwise abstract, is merely an attempt at limiting the abstract to a particular field of use (See MPEP 2106.05(h)).
The generic data gathering, processing, and output steps, and other elements, are recited so generically (no details whatsoever are provided) that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed system. For instance, nothing is done with the trained model.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use, and/or merely insignificant extra-solution activity (claims 1, 8, and 15). Such insignificant extra-solution activity, e.g. data gathering and output, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional as evidenced by MPEP 2106.05(d)(II) (describing conventional activities that include transmitting and receiving data over a network, electronic recordkeeping, storing and retrieving information from memory, and electronically scanning or extracting data from a physical document).
Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1, as well as claims 7-8, amount to significantly more than the abstract idea.
With regards to the dependent claims, claims 2-6 and 9-12, merely further expand upon the algorithm/abstract idea and do not set forth further additional elements therefore these claims are found ineligible for the reasons described for independent claims 1 and 7-8.
See Supreme court decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al.
Claim Rejections - 35 USC § 102
7. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
9. Claims 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujishima US PUB 2023/0252319.
With regards to claims 1, and 7-8 Fujishima US PUB 2023/0252319 teaches a method, a processor and a non-transitory computer medium causing a computer to search for a thermosetting epoxy resin composition executed by an information processor, the method comprising the steps of:
training a plurality of predictive models each corresponding to a target variable using actual data related to a thermosetting epoxy resin composition; (paragraph 0036-0037)and
searching for a thermosetting epoxy resin composition with a desired balance of physical properties by inverse analysis using the plurality of predictive models, (search condition; paragraph 0140)
the actual data include a blend raw material and a blend ratio of the thermosetting epoxy resin composition, a polymer composition related to the blend raw material, and a structural formula related to the blend raw material, and the target variable includes tensile strength, fracture toughness, and a glass transition temperature. (paragraph 0012, 0051-0053, 0104, 0106,0109, 0111)
With regards to claim 2, Fujishima US PUB 2023/0252319 teaches the step of training the plurality of predictive models, a feature value is calculated on the basis of the actual data and is used as an explanatory variable of the plurality of predictive models. (paragraph 0023)
With regards to claim 3, Fujishima US PUB 2023/0252319 teaches the plurality of predictive models include a predictive model to which the tensile strength is input, a predictive model to which the fracture toughness is input, and a predictive model to which the glass transition temperature is input. (paragraph 0008, 0012, 0051-0053, 0104, 0106,0109, 0111)
With regards to claim 4, Fujishima US PUB 2023/0252319 teaches the feature value includes at least one of a molecular fingerprint and a molecular descriptor. (paragraph 0058)
With regards to claim 5, Fujishima US PUB 2023/0252319 teaches the feature value further includes Log P related to a thermosetting epoxy resin composition. (paragraph 0095)
With regards to claim 6, Fujishima US PUB 2023/0252319 teaches the actual data include actual data of a thermosetting epoxy resin composition used for a predetermined application and actual data of a thermosetting epoxy resin composition used for an application other than the predetermined application, and the step of training the plurality of predictive models includes training the plurality of predictive models using the actual data of the thermosetting epoxy resin composition used for the application other than the predetermined application and then relearning the plurality of predictive models using the actual data of the thermosetting epoxy resin composition used for the predetermined application. (paragraph 0023)
With regards to claim 9-12, Fujishima US PUB 2023/0252319 teaches the actual data include actual data of a thermosetting epoxy resin composition used for a predetermined application and actual data of a thermosetting epoxy resin composition used for an application other than the predetermined application, and the step of training the plurality of predictive models includes training the plurality of predictive models using the actual data of the thermosetting epoxy resin composition used for the application other than the predetermined application and then relearning the plurality of predictive models using the actual data of the thermosetting epoxy resin composition used for the predetermined application. (paragraph 0014-0015)
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Merchant et al. US Pub # 2024/0286166 teaches an adhesive dispensing system and method.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADITYA S BHAT whose telephone number is (571)272-2270. The examiner can normally be reached on Monday-Friday 8 am-6pm.
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13. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby Turner can be reached on 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
14. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADITYA S BHAT/Primary Examiner, Art Unit 2857 September 18, 2026
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