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
Applicant' s amendment and response filed 8/3/2026 has been entered and made record. This application contains 18 pending claims.
Claims 1, 9, and 17 have been amended.
Claims 3 and 15 have been cancelled.
Response to Arguments
Applicant’s arguments filed 8/3/2026 regarding claims rejections under 35 U.S.C. 101 in claim 1-20 have been fully considered but they are not persuasive.
The applicant argues on pages 6-12 of the remark filed on 8/3/2026 that “… The claim does not recite an abstract idea. … The Office Action further indicates that these sub-claims indicate a mental process and a mathematical concept. Applicant respectfully disagrees. … As a whole, Applicant respectfully submits that claim 1, under its broadest reasonable interpretation, is directed to an improved method and system of spectrometry using an AI module and not an abstract idea as alleged. Thus, the claimed invention does not recite mathematical concepts, mental processes, or any other abstract ideas and thus does not recite a judicial exception. Therefore, Applicant respectfully submits that the claimed invention is not directed to a judicial exception, thus rendering the claim as eligible under Step 2A: Prong One and 35 U.S.C. 101.”
The Examiner respectfully disagrees applicant’s argument. The step of “develop characteristic profiles for a plurality of training samples” is a mental process, therefore, it is considered to be an abstract idea. The step of “utilize the plurality of measured spectral graphs and the experimental data to determine the plurality of unknown elements, unknown molecules and/or unknown mixtures in the sample” is a combination of a mathematical concept and a mental processes, therefore, it is considered to be an abstract idea. Thus, the claims are directed to an abstract idea.
The applicant argues on pages 12-23 of the remark filed that “… The Office Action further alleges on page 10 that "an AI module" is not sufficient to integrate the abstract idea into a practical application because it is considered a generic computer element." Applicant respectfully disagrees. … Like the claimed invention at issue in CardioNet, LLC, this represents claims that focus on improvement in computers and other technologies as tools, specifically, an improvement for spectroscopy. … Thus, the one or more spectrometers or chemical analysis devices, the AI module, the testing spectrometer, the at least one reactor, use of EMR, and solving linear programming all play a significant part in permitting the claimed invention to be performed. As such, although the claim allegedly involves abstract ideas, the claimed invention should be found directed to patent eligible subject matter because the invention does not include a generic device or computer and is integrated into a practical application based on the non-generic spectrometers, at least one reactor, and non-thermal plasma source. However, assuming, arguendo, that the claim is not integrated into a practical application, the additional elements recited identify at least an inventive concept under Step 2B, thus, rendering the claim as eligible under 35 U.S.C. 101.”
The Examiner respectfully disagrees applicant’s argument. Practical application can be demonstrated by additional elements that are sufficient to integrate the judicial exception into a practical application. The additional elements “one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices”, and “wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample” are considered necessary data gathering and thus, not sufficient to integrate the abstract idea into a practical application. As recited in MPEP section 2106.05(g), necessary data gathering (i.e., receiving data) is considered extra solution activity in light of Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
The additional elements “at least one reactor; and an Al module on the one or more devices”; “wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures”; “wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures”; “wherein at least some of the EMR transmits through the sample”; and “thereby creating experimental data; and wherein the Al module is operable to solve a linear programming” are not sufficient to integrate the abstract idea into a practical application. The alleged improvement for spectroscopy relates to improvement to the abstract idea itself. Therefore, the current claims do not recite additional elements that are indicative of integration of an abstract idea into a practical application.
Moreover, simply reciting an off-the-shelf or broad "AI module" without further technical detail is typically treated as a generic computer or mathematical component implementing an abstract idea.
The applicant argues on pages 23-24 of the remark filed that “… The claimed invention recites an AI-based system comprising at least one reactor, wherein the reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths through an unknown sample in order to determine the molecules that make up that sample as well as transmittible data to create spectral graphs depicting contents of a sample. These components create a meaningful limit on the scope of the claim, as they are essential to the operation of the claimed invention and play a significant part in permitting the claimed invention to be performed. … .”
The Examiner respectfully disagrees applicant’s argument. Significantly more can be demonstrated by additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application. However, the claim does not recite them. The additional elements “wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures”; “wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures”; “wherein at least some of the EMR transmits through the sample”; and “thereby creating experimental data; and wherein the Al module is operable to solve a linear programming” are routine in identifying what chemicals or molecules are in a sample by reading its spectrum using an AI-assisted spectroscopy system; and are well-understood and conventional. Therefore, the claim 1 does not contain additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application.
Claims 9 and 17 recite subject matter that are similar to that of claim 1, and therefore, the claims are also patent ineligible.
Dependent claims 2-8, 10-16, and 18-20 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application. Therefore, claims 2-8, 10-16, and 18-20 are also patent ineligible.
Hence, the Examiner submits that the rejections of Claims 1-20 are proper.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claims limitation is “AI module” in claims 1, 2, 6, 8, 12, 16, 17, and 18. The claims describe the module in functional terms of what they do, rather than how they do it. Under 35 USC 112(f), the Specification must identify a specific and readily-identifiable algorithm in the Specification associated with the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. For example, [0064] discloses “ … In yet another embodiment, the present invention is directed to an artificial intelligence (AI)-based system for automatically identifying elements, molecules, and/or mixtures in a sample, including one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices, at least one reactor, and an AI module on the one or more devices configured to automatically develop characteristic profiles for a plurality of training samples, wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures, wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample, wherein one or more spectrometers and/or chemical analysis devices is operable to measure an intensity of emitted EMR emitted from the sample at each of the plurality of wavelengths, thereby creating experimental data, wherein the sample comprises a plurality of unknown elements, unknown molecules, and/or unknown mixtures, and wherein the AI module is operable to utilize the plurality of measured spectral graphs and the experimental data to determine the plurality of unknown elements, unknown molecules and/or unknown mixtures in the sample, wherein the AI module automatically generates updated characteristic profiles based on a combination of stored training data and new training data when the new training data is received from the one or more spectrometers or chemical analysis devices,”.
In order to exam the merit, Examiner interprets the above mentioned limitations performed by a generic computer.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-2, 4-14, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As to claim 1, the claim recites “An artificial intelligence (AI)-based system for automatically identifying elements, molecules, and/or mixtures in a sample, comprising:
one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices;
at least one reactor; and
an Al module on the one or more devices configured to automatically develop characteristic profiles for a plurality of training samples;
wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures;
wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures;
wherein at least some of the EMR transmits through the sample;
wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample, thereby creating experimental data; and
wherein the Al module is operable to solve a linear programming model and utilize the plurality of measured spectral graphs and the experimental data to determine the plurality of unknown elements, unknown molecules and/or unknown mixtures in the sample.”
Under the Step 1 of the eligibility analysis, we determine whether the claim is directed to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (apparatus for claim 1).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the bold type portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and mental processes (concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions).
The step of “develop characteristic profiles for a plurality of training samples” is a mental process, therefore, it is considered to be an abstract idea. The step of “utilize the plurality of measured spectral graphs and the experimental data to determine the plurality of unknown elements, unknown molecules and/or unknown mixtures in the sample” is a combination of a mathematical concept and a mental processes, therefore, it is considered to be an abstract idea.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claim comprises the following additional elements:
one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices; at least one reactor; and an Al module on the one or more devices; wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures; wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures; wherein at least some of the EMR transmits through the sample; wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample, thereby creating experimental data; and
wherein the Al module is operable to solve a linear programming.
The additional elements “one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices”, and “wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample” represent necessary data gathering and do not integrate the limitations into a practical application. The additional elements “at least one reactor; and an Al module on the one or more devices”; “wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures”; “wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures”; “wherein at least some of the EMR transmits through the sample”; and “thereby creating experimental data; and wherein the Al module is operable to solve a linear programming” are not sufficient to integrate the abstract idea into a practical application because they only add insignificant extra-solution activities to the judicial exception. In addition, a generic processor and a generic memory are generally recited and therefore, not qualified as a particular machine.
The additional element “an Al module” is not sufficient to integrate the abstract idea into a practical application because it is considered a generic computer element. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
In conclusion, the above additional elements, considered individually and in combination with the other claims elements do not reflect an improvement to other technology or technical field, do not reflect improvements to the functioning of the computer itself, do not recite a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claim is directed to a judicial exception and require further analysis under the Step 2B.
The above claim, does not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are generically recited and are well-understood/conventional in a relevant art as evidenced by the prior art of record (Step 2B analysis).
For example, “one or more devices, comprising a processor and a memory, configured to receive training data from one or more spectrometers or chemical analysis devices”, and “wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample” are considered necessary data gathering. As recited in MPEP section 2106.05(g), necessary data gathering (i.e., receiving data) is considered extra solution activity in light of Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
For example, the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures is disclosed by “Gesley US 20180365535”, [0001], [0047], [0054], [0061], [0070], [0117]); and "Sohn US 11449708B2", Abstract; Col. 1, Lines 56-67 to Col. 2, Lines 1-4; Col. 7, Lines 38-47.
The claim, therefore, is not patent eligible.
Independent claims 9 and 17 recite subject matter that is similar or analogous to that of claim 1, and therefore, the claim is also patent ineligible.
With regards to the dependent claims, claims 2, 4-8, 10-14, 16, and 18-20 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application.
The dependent claims are, therefore, also not patent eligible.
Examiner' s Note
Regarding Claims 1-2, 4-14, and 16-20, the most pertinent prior arts are "Hsiung US 20170059480", "Perkins US 20200030794", "Gesley US 20180365535", “Geshwind WO 2005086890A2”, “Sohn US 11449708B2”, "Martins US 20210020276, "Miao US 20220036976", "Daly US 20230245872", and "Brook US 20240280481".
As to claims 1, 9, and 17, Hsiung teaches one or more devices, comprising a processor and a memory (FIG. 3, processor 320 and memory 330), configured to receive training data from one or more spectrometers or chemical analysis devices (Hsiung , [0045]).
Perkins teaches at least one reactor (FIG. 85, reactor 215); and
wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample (Perkins, [0270], [0272], [0654], [658], [0673]);
wherein at least some of the EMR transmits through the sample (Perkins, [0619], [0631]).
Geshwind teaches wherein one or more spectrometers and/or chemical analysis devices are operable to measure, at each of the plurality of wavelengths, an intensity of the EMR transmitted through the sample, thereby creating experimental data (Geshwind, [0002], [0003], [0044], [0061], [0073]).
Gesley teaches an Al module on the one or more devices configured to automatically develop characteristic profiles for a plurality of training samples (Gesley, [0074], [0245]);
wherein the training data comprises a plurality of measured spectral graphs corresponding with the training samples of known elements, known molecules, and/or known mixtures (Gesley, [0001], [0047], [0054], [0061], [0070], [0117]).
However, the prior arts of record, alone or in combination, do not fairly teach or suggest “wherein the at least one reactor is operable to focus electromagnetic radiation (EMR) of a plurality of wavelengths onto a sample comprising a plurality of unknown elements, unknown molecules, and/or unknown mixtures”; and
“wherein the Al module is operable to solve a linear programming model and
utilize the plurality of measured spectral graphs and the experimental data to determine the plurality of unknown elements, unknown molecules and/or unknown mixtures in the sample” including all limitations as claimed.
Dependent claims 2, 4-8, 10-14, 16, and 18-20 are also distinguish over the prior art for at least the same reason as claims 1, 9, and 17.
Examiner notes, however, that claims 1-2, 4-14, and 16-20 are rejected under 35 U.S.C. 101, and therefore, not patent eligible.
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.
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/LAL CE MANG/Primary Examiner, Art Unit 2857
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