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 § 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 1-4 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the case" in line 15. There is insufficient antecedent basis for this limitation in the claim. Claims 2-4 and 6 are also rejected for their dependency on claim 1.
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 7-10 and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to a system that is merely software. Claim 7 discloses a material search system and claim 10 discloses a program for implementing the material search system on a computer. According the applicant’s specification, paragraphs [0030] and [0053]-[0059] disclose a program for making the computer function as the material search system, and paragraph [0039] and [0040] disclose “As the arithmetic device 120, a CPU, a GPU. (Graphics Processing Unit), or the like can be used, for example. The control device 110 and the arithmetic device 120 may be achieved using a PLD (Programmable Logic Device) such as an FPGA (Field Programmable Gate Array) or an FPAA (Field Programmable Analog Array).” These paragraphs recite what articles/elements can be used as an arithmetic device, however, there is no language to definitively disclose if/what hardware is utilized in the arithmetic device/system. Therefore, the claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101. They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, the system is directed to software per se and the claims fail to fall within a statutory category.
Claims 1-4, 6-10 and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, independent claims 1 and 7 recite a method and a system, and are therefore statutory classes of invention.
At step 2A, prong one, the claim(s) recite(s):
identifying a plurality of second peak positions and intensities from the X-ray diffraction profile of a first material;
obtaining P second peak positions in descending order of a peak intensity from the plurality of second peak positions and intensities;
searching the first data set for a record comprising the first peak positions matching the P second peak positions;
search the first data set for the first peak positions matching the P second peak positions; and
determining the first material to be a same as a known material related to a record in the case where the record is found in the search step;
determine the first material to be a same as a known material related to the record in a case where the record is found in the search step.
These limitations, under their broadest reasonable interpretation, cover a process that could be performed mentally. That is, other than reciting a system to perform the steps, nothing in the claim elements preclude the steps from being performed mentally/by a human using pen and paper. For example, a user can review an X-ray diffraction profile and a first data set and mentally/with pen and paper identify a plurality of second peak positions and intensities from the X-ray diffraction profile of a first material; mentally/with pen and paper obtain P second peak positions in descending order of a peak intensity from the plurality of second peak positions and intensities; mentally/with pen and paper search the first data set for a record comprising the first peak positions matching the P second peak positions and search the first data set for the first peak positions matching the P second peak positions; and mentally/with pen and paper determine the first material to be a same as a known material related to a/the record in a/the case where the record is found in the search step. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite a mental process.
At step 2A, prong two, this judicial exception is not integrated into a practical application because the claims recite the additional elements of a system, an arithmetic device, and a processor to perform the steps. These claim elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component (see MPEP 2106.05(f)). These limitations can also be viewed as an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)). Accordingly, these limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
At step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the additional element of a system, an arithmetic device, and a processor amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The additional claim elements are:
using an X-ray diffraction profile and a first data set, wherein the first data set comprises a plurality of records each comprising R first peak positions extracted from each of a plurality of pieces of physical property data of known materials in descending order of a peak intensity;
wherein P is an integer greater than or equal to 2 and less than or equal to 10, and
wherein R is an integer greater than P.
The limitation “using an X-ray diffraction profile…wherein the first data set comprises a plurality of records…” is mere data storage and insignificant extra-solution activity and well-understood, routine, and conventional activity. The limitations “wherein P is an integer…,” and “wherein R is an integer…” are field of use limitations.
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity such as i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. See MPEP 2106.05(d) and 2106.05(g). Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) . See MPEP 2106.05(a). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48. See MPEP 2106.05(a) and MPEP 2106.05(f). Thus, the claims are not patent eligible.
Claims 2 and 8 do not recite any additional abstract ideas, but do recite the additional element of wherein R is less than or equal to 6 times P. This additional element is recited at a high level of generality, does not integrate the judicial exception into a practical application, does not amount to significantly more, and is a field of use limitation.
Claims 3 and 9 recite calculating a lattice constant of the first material determined to be the same as the known material using the first peak positions and the plane indices. As disclosed, this limitation is directed to a mental process. The claim recites the additional element of wherein the record comprises R plane indices corresponding to the R first peak positions. This additional element is recited at a high level of generality, does not integrate the judicial exception into a practical application, does not amount to significantly more, and is well-understood, routine, and conventional activity.
Claims 4 and 10 do not recite any additional abstract ideas, but do recite the additional elements of a program for executing the material search method on a computer, and a program for implementing the material search system on a computer. These additional elements are recited at a high level of generality, do not integrate the judicial exception into a practical application, do not amount to significantly more, and are well-understood, routine, and conventional activity.
Claims 6 and 12 do not recite any additional abstract ideas, but do recite the additional element of wherein the program is written in HyperText Markup Language. This additional element is recited at a high level of generality, does not integrate the judicial exception into a practical application, does not amount to significantly more, and is well-understood, routine, and conventional activity.
Allowable Subject Matter
Claims 1-4, 6-10 and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 101 as set forth in this Office action.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The preceding rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
On pages 7-11, the applicant argues that:
Regarding the 101 rejection, that “the amended claims are not directed towards mental processes because the claimed steps are not practically performed in the human mind or using pen/paper. See MPEP § 2106.04(a)(2)(III). For example, the claim 1, as amended, recites the specific step[s] of: identifying, by an arithmetic device, a plurality of second peak positions and intensities from the X-ray diffraction profile of a first material…These steps quite clearly require the use of a computing device and are not steps that can be performed in someone's mind or using pen/paper… the amended claims recite limitations that integrate any purported abstract idea into a practical application. See MPEP Q 2106.04(d). In that regard, the claimed approach is directed towards the practical application of using an arithmetic device that includes a processor to identify a plurality of second peak positions and intensities from the X-ray diffraction profile of a first material, obtain P second peak positions in descending order of a peak intensity from the plurality of second peak positions and intensities, search the first data set for a record comprising the first peak positions matching the P second peak positions, and determine the first material to be a same as a known material related to a record in the case where the record is found in the search step… independent claims 1 and 7, as amended, are integrated into a practical application of searching for materials without specialized advanced knowledge, such as, for example, in instances of a lithium-ion battery where an electrode with an active material, a conductive additive and a binder are mixed and applied to a current collector and then pressed and used. The system and method use an arithmetic device that includes a processor to identify and match the material, such as the electrode mixture in the example provided, to a material in the database of materials by the peak position and the range of the peak. Through this practical application, the claimed approach imparts the technological improvement of enabling accurate material identification from X-Ray diffraction profiles without requiring advanced expertise in crystallography, while reducing the number of candidate materials and improving search efficiency and accuracy. Through this practical application, the claimed approach imparts the technological improvement of searching a wide database of materials and performing analysis efficiently without having advanced specialized knowledge, thus reducing time and cost associated with analysis.
The examiner respectfully disagrees because:
The identifying, obtaining, searching and determining steps fall under the mental processes grouping of abstract ideas as a person can mentally perform these steps. The claims recite the additional elements of a system, an arithmetic device, and a processor to perform the steps of the claims. These claim elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component (see MPEP 2106.05(f)). These limitations can also be viewed as an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)). Accordingly, these limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The additional claim elements are mere data storage and insignificant extra-solution activity and well-understood, routine, and conventional activity, and field of use limitations. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity such as i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; Selecting a particular data source or type of data to be manipulated: iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(d) and 2106.05(g). Examples of limitations that the courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception include: vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). Employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. See MPEP 2106.05(h). Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) . See MPEP 2106.05(a). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48. See MPEP 2106.05(a) and MPEP 2106.05(f). Thus, the claims are not patent eligible.
Support for Amendments and Newly Added Claims
Applicants are respectfully requested, in the event of an amendment to claims or submission of new claims, that such claims and their limitations be directly mapped to the specification, which provides support for the subject matter. This will assist in expediting compact prosecution and reducing potential 35 USC § 112(a) or 35 USC § 112, 1st paragraph issues that can arise when claims are amended. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.121(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as “Applicants believe no new matter has been introduced” may be deemed insufficient. The examiner thanks the Applicant in advance for providing support for any amendments or newly added claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIEDRA M MCQUITERY whose telephone number is (571)272-9607. The examiner can normally be reached Monday - Thursday, 8 am - 6 pm (C.S.T.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sanjiv Shah can be reached at (571)272-4098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Diedra McQuitery/Primary Examiner, Art Unit 2166
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