DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
This application seeks to reissue US Patent No. 8,204,717 (“the ‘717 patent”). Claims 22-23, 25-28, 31, 33-35, 37-38, 40-41, 43, and 45 are pending1.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 8,204,717 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant’s Response
37 C.F.R. § 1.173 Objection
The previous objections under Rule 1.173 is withdrawn.
§ 112 ¶ 1 Rejections
All claims were previously rejected in the non-final Office action (“NFOA”) under § 112 ¶12 because the specification fails to support the limitation “the second portion of data is excluded from the real-time control functions.” NFOA at 12-13. The applicant responds by citing, without elaboration, passages of the ‘717 patent at 3:64-4:6 and 4:34-44. Remarks at 11. This is not persuasive. These portions of the specification provide no discussion of the second portion of data being excluded from the real-time control functions. The examiner maintains that this claim limitation does not find support in the specification, for reasons given below and in the NFOA. This rejection is maintained.
§ 112 ¶ 2 Rejections
Claim 22 and its dependents were rejected for including, in an apparatus claim, language describing the intended result of a limitation. NFOA at 14. The applicant submits that the claim has been amended “to only recite the structural limitations.” Remarks at 11. But claim 22 still includes the intended result language. See the §112 ¶ 2 rejection below.
§ 103 Rejections
The prior art rejections are withdrawn in view of the claim amendments.
The examiner notes that the applicant’s arguments do not accurately reflect the scope of the claims. The applicant submits in multiple passages of the Remarks that the prior art does not teach or suggest training non-real-time functions. See Remarks at 13-14. However, as is explained in the §112 rejections below, this is not disclosed in the specification. In addition, this is not required in claim 34, which recites training real-time functions, not training non-real-time functions. While this language in claim 22 is indefinite, it will be interpreted in this Office action as if requiring that the cloud employs non-real-time operations to train the real-time control functions that are performed by the local processing unit.
Claim Rejections - 35 USC § 112 ¶1
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22-23, 25-28, 31, 33-35, 37-38, 40-41, 43, and 45 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 22 and 34 recite that “the second portion of data is excluded from the real-time control functions.” This is not described in the ‘717 patent. The only discussion in the ‘717 patent that relates to first and second portions of data that are obtained at a first and second sampling frequency is reproduced below:
The information to be stored in the local environment 202 and the computing cloud 108 (as opposed to that which is stored only in the computing cloud 108) may be determined based upon what information is anticipated to be needed by the local environment 202. For instance, the local environment 202 may take readings every 10 seconds but only require readings every minute. Each of the readings may be stored in the computing cloud 108 for enhanced analysis, but only one reading a minute may need to be stored in the local environment 202
‘717 patent at 6:36-45. This shows that the “second portion of data” that is delivered to the cloud includes each of the readings that are taken every 10 seconds, while the locally-stored “first portion of data” contains a subset of these readings. That is, some of the readings that are in the second portion of data are also in the first portion of data, and the first portion of data is used for real-time control functions. Therefore, some of the readings in the second portion of data are used for the real-time control functions.
This contradicts the claim limitation requiring that the second portion of data is excluded from the control functions. The term “excluded” in this context would ordinarily be understood to mean “prevent[ed] from being included3.” This would mean that none of the readings in the second portion of data are used in the real time control functions. But this is not the case in the specification, which shows that some of the second portion of data readings are, in fact, used in the real-time control function. Therefore the scope of the claim covers something that is not disclosed in the specification.
Claim 22 recites “training one or more non-real time functions to form the real-time control functions that are performed by the at least one local processing unit.” This is not described in the ‘717 patent. The specification of the ‘717 patent only includes the following passage describing “training”: “Non-real time functions are functions that may be used to form the real-time functions. Examples of non-real-time functions are those functions used to train the real time functions and simulations of the products created by the non-real-time functions.” See the ‘717 patent at 4:21-26. This passage describes training real-time functions. But the claim now recites training the non-real-time function, not training real-time functions. Claims 23, 25-28, 31, and 33 depend from claim 22 and inherit this issue. In contrast, claim 34 recites “training one or more real-time functions.” This limitation in claim 34 finds support in the passage of the specification that is quoted above, and claim 34 is not rejected under §112 ¶1 for this reason.
Claim Rejections - 35 USC § 112 ¶ 2
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 22-23, 25-28, 31, 33-35, 37-38, 40-41, 43, and 45 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 22 and its dependents recite “obtain, through the at least one sensor, data, wherein the data comprises sensor readings describing one or more operating parameters of the at least one industrial automation unit.” The claim includes later limitations referring to “data,” without directly referring to the data that was gathered in this “obtain” limitation. For example, the claim recites “store, in the local storage unit, a first portion of data.” It is not clear if this and other language describing the various forms of “data” refers to the sensor data that is described in this “obtain” limitation, or if the later claim language describes different data. Therefore the scope of this claim cannot be accurately determined.
Claim 22 and its dependents recite storing the first portion of data “to ensure availability of data for real-time control functions.” This language in claim 22 only describes what is intended to occur as a result of storing the first portion of data locally. It is not clear what, if any, structural limitation this places on the claim in addition to merely requiring that the data be stored in the local storage unit. Claim language is indefinite when it describes an “intended result and does not provide a clear cut indication of scope because it impose[s] no structural limits” on the claimed apparatus. MPEP 2173.05(g).
Claim 34 includes the following language: “storing the first portion of data at a local storage unit of the client device to ensure availability of data for performing based on the first portion of data wherein real-time control functions directly control operation of at least one industrial unit to perform real-time operations.” This language is indefinite for a variety of reasons.
Similar to the discussion with respect to claim 22 above, it is not clear what is actually required by the language “to ensure availability of data.” Because this is not a process step, but rather appears to describe what is intended to occur as a result of the “storing” step, this language does not appear to limit method claim 34. See MPEP 2111.04(I). In addition, what “data” this describes is not clear, because this language does not refer to the “first portion of data” that was previously introduced in the claim.
In addition, the language “to ensure availability of data for performing based on the first portion of data” is unclear. Even though this language appears to describe an intended result, it does not recite what is “performed.” The claim recites “performing based on the first portion of data” but does not recite “performing” any actual function. The scope of this language is unclear.
Furthermore, nothing in this language, or in the rest of claim 34, requires the “real-time operations” to actually be performed. There “wherein” clause of the limitation that is quoted above is not a process step; claim 34 does not positively recite that the real-time control functions, or real-time operations, are performed. Therefore this “wherein” clause appears to further describe a step that was never recited. It is not clear how, or whether, this limits method claim 34.
Claim 22 recites “training one or more non-real time functions to form the real-time control functions that are performed by the at least one local processing unit.” As described in the §112, ¶1 rejection above, this is not how the specification describes the “training.” In light of the specification, it is unclear what this limitation actually requires: does it require training the non-real-time functions, as the claim explicitly recites, or does it require training the real-time functions, as the specification discloses? Because this question cannot be answered with certainty, the scope of the claim is indefinite.
Claims 22 and 34 recite that the cloud performs training to “form” real-time control functions. The real-time control functions are understood to be operations that are performed by the at least one local processing unit. This is explicitly recited in claim 22. Claim 34, while indefinite for a variety of reasons, is understood to also require this.
The claims previously recite (in claim 22), or appear to intend to recite (in claim 34: see above), that the local processing unit performs the real-time control functions based on locally-acquired data. But the claim later recites that data describing “operating parameters” of the local unit is sent from the local unit to the cloud, and this data is used by the cloud to “form” the real-time control functions. This renders the claim scope indefinite.
It is not clear if “forming” the real-time control functions means generating the functions in their entirety, which would be one manner in which the word “form” is defined4. Alternative, it is not clear if this implies a feedback loop in which the real-time control functions are updated based on training that is performed in the cloud (which does not appear to be explicitly described in the specification). If forming the real-time control function means creating those functions, it is not clear if the claim intends to recite that the local unit does not perform those functions until the functions are received, in some unclaimed step, from the cloud. But the plain language of the claim does not require this. In addition, the “second portion of data” can only be obtained as a result of performing the real-time functions. Therefore, according to the claims, the real-time functions must be performed to generate the data that is used to create the real-time functions. This is inconsistent.
Claim 34 recites “training to form a real-time control function.” Because this limitation recites “a” real-time control function, it is not clear if this is intended to refer to the “real-time control functions” that were previously introduced in this claim.
Claim Rejections - 35 USC § 112 ¶ 4
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 45 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 45 depends from claim 44, which has been canceled. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections, 35 U.S.C. § 251 – New Matter
Claims 22-23, 25-28, 31, 33-35, 37-38, 40-41, 43, and 45 are rejected under § 251 for reciting subject matter that is not disclosed in the patent. See the § 112 ¶ 1 rejection above.
Allowable Subject Matter
Claims 22-23, 25-28, 31, 33-35, 37-38, 40-41, 43, and 45 are rejected above. However, these claims recite allowable subject matter.
The closest prior art is the combination of Karasawa, Furem, and Duchesneau that was described in the prior art rejections of the previous Office action. This combination fails to teach or suggest amended claims 22 and 34.
Claim 22 recites that first, low-frequency data is stored in the local storage unit; second, high-frequency data is delivered to a cloud resource; and each client device is configured to “perform, by at least one local processing unit, the real-time control functions based on the first portion of data wherein the real-time control functions directly control operation of the at least one industrial automation unit to perform real-time operations, wherein the first portion of data describes one or more real-time operating parameters of the at least one industrial automation unit.” Claim 22 also recites “perform the non-real time analytical processing on the second portion of data obtained at the second frequency based on at least empirical data sets of information obtained from one or more industrial automation units, wherein the non-real time analytical processing comprises at least training one or more non-real time functions to form the real-time control functions5 that are performed by the at least one local processing unit.” Claim 34 includes similar limitations. The prior art fails to teach or suggest these claim features.
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 ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
1 The applicant states that claims “22, 23, 25, 26, 27, 28, 32, 34, 37, 38, 40, 43, and 44 are pending.” See Remarks at 9. This is not accurate. It will be assumed that this is merely a typographical error, and not a representation of which claims the applicant wishes to be examined.
2 The applicant’s remarks refer to “112(a)” and “112(b)” rejections. See e.g. Remarks at 11. This application is governed by pre-AIA laws, and pre-AIA § 112 ¶¶ 1 and 2 are applied in this and previous Office actions. If the applicant believes that this application should instead be subject to provisions of the AIA , a showing must be made on the record of why this is so.
3 American Heritage Dictionary
4 “form: to make; to construct.” Collins English Dictionary – Complete and Unabridged, 12th Edition 2014.
5 As described in the §112 rejections above, this limitation is indefinite. However, the prior art fails to teach or suggest, in combination with the other elements of this claim, any reasonable interpretation of this language.
Prosecution Insights