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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-12 in the reply filed on 11/05/2025 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2022-101884, filed on 06/24/2022 and parent Application No. JP2022-114169, filed on 07/15/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: the claims disclose “XRD” and this acronym should be spelled out within the claims. Appropriate correction is required.
Claims 6 and 12 are objected to because of the following informalities: the claims disclose “html” and this acronym should be spelled out within the claims. Appropriate correction is required.
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 1-12 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 record" in line 10. There is insufficient antecedent basis for this limitation in the claim as the claim recites a plurality of records. Claims 2-6 are also rejected for their dependency on claim 1.
Claims 1 and 7 recite the limitation "the" in lines 12 and 15, respectively. There is insufficient antecedent basis for this limitation in the claims. Claims 2-6 and 8-12 are also rejected for their dependency on claims 1 and 7, respectively.
Claims 1 and 7 recite the limitation "the" in lines 12 and 15, respectively. There is insufficient antecedent basis for this limitation in the claims as the claims recite known materials. Claims 2-6 and 8-12 are also rejected for their dependency on claims 1 and 7, respectively,
Claims 1 and 7 recite the limitation "the " in lines 13 and 15, respectively. There is insufficient antecedent basis for this limitation in the claims. Claims 2-6 and 8-12 are also rejected for their dependency on claims 1 and 7, respectively.
Claims 1 and 7 recite the limitation "the matched record" in lines 13 and 16, respectively. There is insufficient antecedent basis for this limitation in the claims. Claims 2-6 and 8-12 are also rejected for their dependency on claims 1 and 7, respectively.
Claims 3 and 9 recite the limitation "the same" in lines 5 and 5, respectively. There is insufficient antecedent basis for this limitation in the claims.
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 5 and 11 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 signals per se. Claims 6 and 11 are directed to a computer-readable recording medium comprising a program. As described by the applicant’s specification, paragraphs [0030] and [0047] do not expressly and unambiguously limit the medium to solely non-transitory forms such that the claimed computer-readable recording medium encompasses transitory forms and is ineligible. Claims 5 and 11 therefore fail to clearly and definitely recite a medium that is non-transitory. The examiner suggests amending the claims to include non-transitory.
Claims 7-12 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. 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 1-12 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 XRD 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 the 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 the same as the known material related to the record in the case where the matched record is found.
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 XRD profile and a first data set and mentally/with pen and paper identify a plurality of second peak positions and intensities from the XRD 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 the 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 the same as the known material related to the record in the case where the matched record is found. 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. This claim element is recited at a high-level of generality such that it amounts 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 amounts 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 XRD 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 XRD profile…wherein the first data set comprises a plurality of records…” is more 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 5 and 11 do not recite any additional abstract ideas, but do recite the additional element of a computer-readable recording medium comprising the program. 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 6 and 12 do not recite any additional abstract ideas, but do recite the additional element of wherein the program is written in html. 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 1-12 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.
The following is a statement of reasons for the indication of allowable subject matter: Prior art Raich (US 2006/0015265) is directed to toward measuring X-ray powder diffraction patterns of a set of materials and applying hierarchical clustering analysis to determine clusters of X-ray powder diffraction patterns that are similar. Raich discloses an XRD 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, wherein the material search method comprises: identifying a plurality of second peak positions and intensities from the XRD profile of a first material; searching the first data set for the record comprising the first peak positions matching the P second peak positions; and determining the first material to be the same as the known material related to the record in the case where the matched record is found, but fails to disclose 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, obtaining P second peak positions in descending order of a peak intensity from the plurality of second peak positions and intensities; 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. Prior art Reddy (US 2005/0020608) is directed toward a crystalline form of Cetirizine monohydrochloride that has an X-ray diffraction pattern, expressed in terms of 2.theta. angles and obtained with a diffractometer, wherein said X-ray powder diffraction pattern includes five or more peaks. Reddy discloses peak positions extracted from each of a plurality of pieces of physical property data of known materials in descending order of a peak intensity, and obtaining second peak positions in descending order of a peak intensity from the plurality of second peak positions and intensities, but fails to disclose R first peak positions, P second peak positions, 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. Prior art Glover (US 2018/0044366) is directed toward crystalline forms and solvates that may be characterized by their X-ray powder diffraction patterns. Glover discloses that peaks can be an amount/number from two, three, four, five, six, seven, eight, nine, or ten, but fails to explicitly disclose 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.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Glover (US 2018/0044366), Ivanisevic (US 2004/0103130), Raich (US 2006/0015265), and Reddy (US 2005/0020608).
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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/Diedra McQuitery/Primary Examiner, Art Unit 2166