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 .
Response to Amendment
The amendment filled on 09/25/2026 has been entered. Claims 1, 6-21 remain pending in the application.
Applicant’s arguments, see Pages 8-9, filed 09/25/2026, with respect to 35 U.S.C § 103 have been fully considered and are persuasive. Accordingly, the claim rejection of 35 U.S.C § 103 of Claims 1-4 and 6-12 have been withdrawn.
Response to Arguments
Applicant's arguments under 35 U.S.C § 101:
In pages 7-8, applicant argues that “The claims now recite the steps of measuring the transmission amount (I) of the particle containing body and measuring the transmission amount (Io) of the corresponding non-particle-containing body, and then evaluating hiding power based on these active steps of measuring these values. Applicant notes that these steps are not routinely performed by a computer. Thus, these steps are not directed to a mathematical concept. The claims are not directed to an abstract idea.
By doing so, the hiding power evaluation method of the claims ensures that factors other than the particles to be evaluated - such as the resin forming the coating film, the substrate, and film-forming conditions - are aligned between the particle-containing body and the non-particle-containing body. This feature allows the method to stably extract only the influence of the particles to be evaluated.
Noted is that a feature of claim 1 is that (Io) is not merely the transmission amount of the base material alone. Rather, in claim 1, (Io) is the transmission amount measured with a non-particle-containing body formed on the base material, the non-particle-containing body having the same composition as the particle-containing body except for the absence of the particles. Such a measurement and its use are not abstract steps.
Regarding claim 14, the particle-containing body has been formed by kneading the particles into the base material. A feature is that (Io) is the measured value for the transmission amount of a non-particle-containing body, which is formed within or by the base material with the same composition except for the absence of the particles. Such a measurement and its use are not abstract steps in this claim either.
Furthermore, regarding both independent claims 1 and 14, the use of the data, e.g., in at least by Equation (4), is an undisputed use that is not conventional, i.e., note that there is no prior art rejection of this claim, which indicates that it was unconventional.
Thus, the collection of the data as recited in the claims and its processing, including by Equation ( 4 ), for all claims represent an unconventional way to achieve the evaluating hiding power of particles in a particle-containing body, and as such, amounts to significantly more and thereby provides a practical application that satisfies the requirements of section 101.”.
Examiner response to arguments under 35 U.S.C § 101:
In response to applicant’s arguments mention above, the examiner respectfully disagrees since even though the amended claim 1 comprise the step of measuring transmission amount of electromagnetic waves, these steps are just data gathering. Such as getting data from an interface which is considered obtaining data necessary for the abstract mental steps, see MPEP 2106.05(g)). Additionally, there is not any limitation of how the measurement is performed and/or what device is used/configured to perform the steps of gathering data. Moreover, is well-established Federal Circuit precedent (e.g., Electric Power Group v. Alstom) dictates that routine, conventional data collection ("measuring a transmission amount"), (see MPEP, 2106.04(a)(2), III-A), does not transform an abstract calculation into a patent-eligible application. Therefore, without any meaningfully claimed limitation as to how the data is obtained, provided and how the transmission amount is determined, it is not possible for the claim abstract idea to be integrated into a judicial exception. Thus, it is not seen that the claims as a whole integrates the metal process or mathematic formula into a practical application.
The claim is directed to an abstract idea of a mathematical/algorithmic concept of performing calculations of absorbance of particles, including data gathering and a mathematical equations and data manipulation steps. These steps are just gathering raw data inputs needed to feed equations 1,2,3 and 4, and thus are considered an abstract mathematical concept. Such as the claim does not tie the result of the equations to a physical process.
The step of calculating of a transmission amount of a non-particle-containing body formed in the claim is not a positively recited step of measuring because it's past tense and the claimed method doesn't require an active step of measuring. Moreover, the formation of the particle-containing body is not a physical process perform during the measurement and it’s not performed by the device performing the measurement. This limitation just describe the composition of the base material.
Regarding claim 14, comprises another limitation as “the particle-containing body has been formed by kneading the particles into the base material”, however, these limitations just describe the composition of the base material. Therefore, these steps of claim 14 as in claim 1 are just gathering raw data inputs needed to feed equations 1,2,3 and 4, and thus are considered an abstract mathematical concept. Such as the claim does not tie the result of the equations to a physical process.
Even though there is no prior art rejection of claims 1 and 14, An inventive concept must provide a specific technical improvement to technology or a non-conventional practical application, rather than just relying on novelty. Such as the claim perform data manipulation without a specific, unconventional technical process to achieve it, the claim is treated as an abstract idea.
Therefore, the rejection is maintained.
Claim Objections
Claim 19 is objected to because of the following informalities:
In claim 19, line 3, “14and” should be changed to —14 and—.
Appropriate correction is required.
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 and 6-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed an abstract idea without significantly more.
Regarding Claim 1, the claim recites a method for evaluating hiding power of a particle containing body which contains particles of a hiding power evaluation target. The method comprises steps of measuring a transmission amount of electronic waves and steps of calculating absorbance, thickness, concentration of particles.
As can be seen from the above description, the thrust of the claim invention is a gathering data as measuring transmission amount of electromagnetic waves, these steps are just data gathering. Such as getting data from an interface which is considered obtaining data necessary for the abstract mental steps, see MPEP 2106.05(g)). Additionally, there is not any limitation of how the measurement is performed and/or what device is used/configured to perform the steps of gathering data. Moreover, is well-established Federal Circuit precedent (e.g., Electric Power Group v. Alstom) dictates that routine, conventional data collection ("measuring a transmission amount"), (see MPEP, 2106.04(a)(2), III-A), does not transform an abstract calculation into a patent-eligible application. Also, a mathematical/algorithmic concept of performing calculations of absorbance of particles. The limitations drawn to steps of calculating absorbance using an equation is “mathematical/algorithmic” concept of collecting multiple data points and combining them to generate information which can be carried out by a computer or can be performed in the human mind, or by a human using a pen and paper. Such process is considered an abstract idea. Additionally, even if the claimed abstract idea was performed on a special purpose computer, it has also been held that using a computer as a tool to perform mathematical/algorithmic concept is not significantly more than the judicial exception when the steps of the process are recited at a high level of generality and merely use computers as a tool to perform the process. See Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018). This is fundamentally a data collection, aggregate results and derive output information. Further, the abstract idea does not amount to significantly more because it is not tied to a particular machine, specifically: “No particular apparatus”. The claim recites generic “step of calculating” without specifying particular machines, apparatus, or technical structure. The claim does not describe how the measurements are combined or processed in a non-conventional way. The claim reads as applying an abstract data collection and processing concept to any measurement scenario without technological specificity. Summary: Under Alice Corp. v. CLS Bank and Mayo v. Prometheus, this claim fails the two-step test. While it recites measurement steps, it is directed to the abstract idea of collecting and combining multiple data points to generate information. The claim lacks sufficient integration with a particular technological solution or apparatus.
Claim 1 do not recite any additional elements. There are no significant steps as to how the transmission amount is provided and/or determined. Therefore, without any meaningfully claimed limitation as to how the data is obtained, provided and how the transmission amount is determined, it is not possible for the claim abstract idea to be integrated into a judicial exception. . Such as getting data from an interface which is considered obtaining data necessary for the abstract mental steps, see MPEP 2106.05(g)). Additionally, there is not any limitation of how the measurement is performed and/or what device is used/configured to perform the steps of gathering data. Thus, it is not seen that the claims as a whole integrates the mathematical/algorithmic concept or mathematic formula into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for similar reasons as set forth above as to why the claim is not integrated into a practical application. There do not appear to be any additional limitations in the claim other than the abstract idea of gathering data and determining information about absorbance. As there are no additional limitations, it is not possible for the claim to include additional elements that are sufficient to amount to significantly more than the judicial exception.
As a result, claim 1 is rejected under 35 USC 101 as being directed to an abstract idea without significantly more.
The following dependent claims 6-13 are rejected as being directed to an abstract idea without significantly more for the following reasons:
Regarding Claims 6-7, 9, the claims further limits the properties of the particles been evaluated.
Regarding Claims 8 and 10, the claims further limits the type of electromagnetic waves. However, the claims do not comprise steps/structures that generates electromagnetic waves.
Regarding Claims 11-12, the claim further limit the abstract idea of controlling quality and assuring quality of product. These steps are mathematical/algorithmic concept without additional elements that integrated the abstract idea into a practical application.
Regarding claim 13, the claim recite an additional element as “spectrophotometric colorimeter”. This limitation in the claim are not a positively recited step of measuring because it's past tense and the claimed method doesn't require an active step of measuring. Therefore, the limitations do not explain how the data is acquired, so it fails to integrate the abstract idea into a judicial exception or claim significantly more than the abstract idea.
Regarding Claim 14, the claim recites a method for evaluating hiding power of a particle containing body which contains particles of a hiding power evaluation target. The method comprises steps of measuring a transmission amount of electronic waves and steps of calculating absorbance, thickness, concentration of particles.
As can be seen from the above description, the thrust of the claim invention is a gathering data as measuring transmission amount of electromagnetic waves, these steps are just data gathering. Such as getting data from an interface which is considered obtaining data necessary for the abstract mental steps, see MPEP 2106.05(g)). Additionally, there is not any limitation of how the measurement is performed and/or what device is used/configured to perform the steps of gathering data. Moreover, is well-established Federal Circuit precedent (e.g., Electric Power Group v. Alstom) dictates that routine, conventional data collection ("measuring a transmission amount"), (see MPEP, 2106.04(a)(2), III-A), does not transform an abstract calculation into a patent-eligible application. Also, a mathematical/algorithmic concept of performing calculations of absorbance of particles. The limitations drawn to steps of calculating absorbance using an equation is “mathematical/algorithmic” concept of collecting multiple data points and combining them to generate information which can be carried out by a computer or can be performed in the human mind, or by a human using a pen and paper. Such process is considered an abstract idea. Additionally, even if the claimed abstract idea was performed on a special purpose computer, it has also been held that using a computer as a tool to perform mathematical/algorithmic concept is not significantly more than the judicial exception when the steps of the process are recited at a high level of generality and merely use computers as a tool to perform the process. See Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018). This is fundamentally a data collection, aggregate results and derive output information. Further, the abstract idea does not amount to significantly more because it is not tied to a particular machine, specifically: “No particular apparatus”. The claim recites generic “step of calculating” without specifying particular machines, apparatus, or technical structure. The claim does not describe how the measurements are combined or processed in a non-conventional way. The claim reads as applying an abstract data collection and processing concept to any measurement scenario without technological specificity. Summary: Under Alice Corp. v. CLS Bank and Mayo v. Prometheus, this claim fails the two-step test. While it recites measurement steps, it is directed to the abstract idea of collecting and combining multiple data points to generate information. The claim lacks sufficient integration with a particular technological solution or apparatus.
Claim 14 do not recite any additional elements. There are no significant steps as to how the transmission amount is provided and/or determined. Therefore, without any meaningfully claimed limitation as to how the data is obtained, provided and how the transmission amount is determined, it is not possible for the claim abstract idea to be integrated into a judicial exception. . Such as getting data from an interface which is considered obtaining data necessary for the abstract mental steps, see MPEP 2106.05(g)). Additionally, there is not any limitation of how the measurement is performed and/or what device is used/configured to perform the steps of gathering data. Thus, it is not seen that the claims as a whole integrates the mathematical/algorithmic concept or mathematic formula into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for similar reasons as set forth above as to why the claim is not integrated into a practical application. There do not appear to be any additional limitations in the claim other than the abstract idea of gathering data and determining information about absorbance. As there are no additional limitations, it is not possible for the claim to include additional elements that are sufficient to amount to significantly more than the judicial exception.
As a result, claim 14 is rejected under 35 USC 101 as being directed to an abstract idea without significantly more.
The following dependent claims 15-21 are rejected as being directed to an abstract idea without significantly more for the following reasons:
Regarding Claims 15, the claims further limits the properties of the particles been evaluated.
Regarding Claims 16-18, the claims further limits the type of electromagnetic waves. However, the claims do not comprise steps/structures that generates electromagnetic waves.
Regarding Claims 19-20, the claim further limit the abstract idea of controlling quality and assuring quality of product. These steps are mathematical/algorithmic concept without additional elements that integrated the abstract idea into a practical application.
Regarding claim 21, the claim recite an additional element as “spectrophotometric colorimeter”. This limitation in the claim are not a positively recited step of measuring because it's past tense and the claimed method doesn't require an active step of measuring. Therefore, the limitations do not explain how the data is acquired, so it fails to integrate the abstract idea into a judicial exception or claim significantly more than the abstract idea.
Allowable Subject Matter
Claims 1 and 6-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Regarding Claims 1, the prior art of record, taken either alone or in combination, fails to disclose, teach, or suggest or render obvious “A method for evaluating hiding power of particles in a particle-containing a particle containing body which contains particles of a hiding power evaluation target, the method including a step of measuring a transmission amount (I) of electromagnetic waves of the particle- containing body and a base material (i), a step of measuring a transmission amount (Io) of electromagnetic waves of a non-particle-containing body and a base material (ii), wherein the base materials (i) and (ii) are the same type of materials having the same characteristics, a step of calculating, on a basis of a transmission amount (I) of electromagnetic waves of the particle containing particle-containing body and a base the base material (and a transmission amount (Jo) of electromagnetic waves of a non-particle containing body and a base the base material (iil, absorbance (Abs) of electromagnetic waves by a below-mentioned Equation (1), the non-particle containing particle-containing body being formed on the base material (i) that does not contain the particles of the hiding power evaluation target, and the non- particle containing body having the same composition as the composition of the particle containing particle-containing body except that the non-particle containing body does not contain the particles of the hiding power evaluation target, Equation (1) Abs = -log(I/Io) a step of calculating a value of (the absorbance (Abs))/(a concentration (C) of the particles of the particle containing body), a step of calculating a thickness (L) of the particle containing body having desired hiding power on a basis of the absorbance (Abs) of the electromagnetic waves of the particle containing body, a concentration (C) of the particles, and an absorption coefficient (6) of electromagnetic waves of the particles by a below-mentioned Equation (2), Equation (2) L = Abs/(sxC) a step of calculating a concentration (C) of the particles of the particle containing body having desired hiding power on a basis of the absorbance (Abs) of the electromagnetic waves of the particle containing body, a thickness (L) of the particle containing body, and an absorption coefficient (6) of electromagnetic waves of the particles by a below-mentioned Equation (3), Equation (3) C = Abs/(sxL) a step of, on a basis of absorbance (Abs) of electromagnetic waves of the particle containing body having desired hiding power, absorbance (Absi) of electromagnetic waves of a first particle containing body which contains only first particles as particles, and absorbance (Abs2) of electromagnetic waves of a second particle containing body which contains only second particles as particles, calculating a weight ratio (X) of the first particles and a weight ratio (1-X) of the second particles in a mixed particle containing body, having the desired hiding power, which contains the first particles and the second particles by a below-mentioned Equation, Equation (4) AbsixX+Abs2x(1-X) = Abs (1).”, in the combination required by the claim.
Regarding Claims 6-13 are directly/indirectly dependent on claim 1 and are allowable based on their dependencies.
Regarding Claims 14, the prior art of record, taken either alone or in combination, fails to disclose, teach, or suggest or render obvious “ A method for evaluating hiding power of particles in a particle-containing body which contains particles of a hiding power evaluation target, the method including a step of a step of measuring a transmission amount (I) of electromagnetic waves of the particle- containing body, a step of measuring a transmission amount (Jo) of electromagnetic waves of a non-particle-containing body, calculating, on a basis of a transmission amount (I) of electromagnetic waves of the particle-containing body, and a transmission amount (Io) of electromagnetic waves of a non-particle-containing body, absorbance (Abs) of electromagnetic waves by a below-mentioned Equation (1), the particle-containing body being composed of a base material and the particles kneaded into the base material, and the non-particle-containing body having the same composition as the composition of the particle-containing body except that the non-particle-containing body does not contain the particles of the hiding power evaluation target, Equation (1) Abs = -log(I/O) a step of calculating a value of (the absorbance (Abs))/(a concentration (C) of the particles of the particle containing body),a step of calculating a thickness (L) of the particle containing body having desired hiding power on a basis of the absorbance (Abs) of the electromagnetic waves of the particle containing body, a concentration (C) of the particles, and an absorption coefficient (s) of electromagnetic waves of the particles by a below-mentioned Equation (2), Equation (2) L = Abs/(sxC) a step of calculating a concentration (C) of the particles of the particle containing body having desired hiding power on a basis of the absorbance (Abs) of the electromagnetic waves of the particle containing body, a thickness (L) of the particle containing body, and an absorption coefficient (s) of electromagnetic waves of the particles by a below-mentioned Equation (3), Equation (3) C = Abs/(sxL) a step of, on a basis of absorbance (Abs) of electromagnetic waves of the particle containing body having desired hiding power, absorbance (Absi) of electromagnetic waves of a first particle containing body which contains only first particles as particles, and absorbance (Abs2) of electromagnetic waves of a second particle containing body which contains only second particles as particles, calculating a weight ratio (X) of the first particles and a weight ratio (1-X) of the second particles in a mixed particle containing body, having the desired hiding power, which contains the first particles and the second particles by a below-mentioned Equation (4),Equation (4) AbsixX+Abs2x(1-X) = Abs 1).”, in the combination required by the claim.
Regarding Claims 15-21 are directly/indirectly dependent on claim 14 and are allowable based on their dependencies.
The closest art: Li et al. (US 2005/0154107 A1), discloses a method for evaluating hiding power of a particle containing body which contains particles of a hiding power evaluation target, (the device determine the pigment’s hiding power by assessing color, transparency, absorbance and visual appearance such as performing optical measurement of how a material interacts with light [0042, 0046, 0047] (Fig. 10), the method including
a step of calculating, on a basis of a transmission amount (I) of electromagnetic waves, [0013] of the particle containing body (coating solution comprising pigments) and a base material (polyester sheet) and a transmission amount (Io) of electromagnetic waves of a non-particle containing body and a base material (a reference control sample comprise an uncoated polyester sheet and/or sheet coated with various unmodified finishes), [0046, 0065]), absorbance (Abs) of electromagnetic waves, the non-particle containing body having same composition as composition of the particle containing body except that the non-particle containing body does not contain the particles of the hiding power evaluation target, [0042, 0063],
Even though Li discloses determining the absorbance of electromagnetic waves of particles, Li fail to teach wherein determining the absorbance by the equation AbsixX+Abs2x(1-X) = Abs 1, comprises absorbance (Absi) of electromagnetic waves of a first particle containing body which contains only first particles as particles, and absorbance (Abs2) of electromagnetic waves of a second particle containing body which contains only second particles as particles, calculating a weight ratio (X) of the first particles and a weight ratio (1-X) of the second particles in a mixed particle containing body, having the desired hiding power, which contains the first particles and the second particles by the equation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Itagaki et al. (US 20190350822 A1), discloses ultraviolet-shielding particle coated with silicon oxide, and the steps of performing measurement to the particles by atomic absorption photometry.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TARIFUR R CHOWDHURY/ Supervisory Patent Examiner, Art Unit 2877
/CARLOS PEREZ-GUZMAN/ Examiner, Art Unit 2877
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