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 . Claims 22-41 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 2/23/26 has been entered.
Claim Objections
Claims 22-41 are objected to because of the following informalities.
In claims 22-41, applicant recites “a user interface and/or a user device” after introducing said user interface and user device. For purposes of consistency, subsequent recitations should use “the” or “said.”
Similarly, applicant recites “a sensor” after introducing said sensor, where subsequent recitations should use “the” or “said.”
These are not matters of indefiniteness, given the metes and bounds are clear, and the inconsistencies don’t materially impact claim interpretation.
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 22-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03.
Per Step 1, claims 22 and 32 are to a method (i.e., a process) and therefore pass Step 1. However, the claims are rejected under 35 U.S.C. 101 because they are directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application or are significantly more.
The analysis proceeds to Step 2A Prong 1.
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claims 22 and 32 is (claim 22 being representative, bolded language applicable to claim 32 only):
[receiving] usage data for at least one piece of equipment, store the usage data, process the usage data, and implement an adaptive preventative maintenance process;
determining a first maintenance interval estimate associated with the equipment, wherein the first maintenance interval estimate comprises an elapsed usage at which the equipment is estimated to require replacement or maintenance;
receiving a replacement indication reflecting a replacement of the equipment, and storing the replacement indication;
determining a second maintenance interval estimate associated with the equipment in response to the replacement indication, wherein the second maintenance interval estimate comprises an elapsed usage at which the equipment is estimated to require replacement or maintenance;
receiving an adjustment parameter that comprises a failure parameter value associated with a detected failure of the equipment or a preventative parameter value associated with a preventive maintenance of the equipment, and receiving the failure parameter value and/or the preventative parameter value from a user;
adjusting the second maintenance interval estimate based on the failure parameter value and/or the preventative parameter value;
receiving the usage data, storing the usage data, and the usage data comprising a time of operation of the equipment, a number of actuation cycles of the equipment, a number of operational cycles of the equipment, a number of objects processed by the equipment, a quantity of material processed by the equipment, and/or an operating temperature of the equipment;
automatically updating the elapsed usage of the equipment, based on the usage data received, and storing the elapsed usage;
automatically determining when the elapsed usage exceeds the second maintenance interval estimate; and
generating and transmitting a notification associated with the equipment, the notification indicating the elapsed usage exceeds the second maintenance interval estimate, wherein the notification informs the user to replace the equipment or perform maintenance on the equipment,
wherein the adjusting the second maintenance interval estimate based on the failure parameter value and/or the preventative parameter value, further comprises:
adjusting the second maintenance interval estimate to a degree based on the failure parameter value; or
adjusting the second maintenance interval estimate to another degree based on the preventative parameter value.
The limitations above constitute a process that is comparable to following rules or instructions relating to determining a degree to which a maintenance interval estimate is adjusted or determining an adjusted maintenance schedule. This is supported by applicant’s specification, as seen in para. [0002] to [0004]. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations of social activities, teaching, following rules or instructions, then it falls within the Certain Methods of Organizing Human Activity – Managing Personal Behavior or Relationships or Interactions Between People grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the steps above could be performed mentally and/or with pen and paper. In this case, an individual, acting as an administrator, could accomplish the italicized limitations above relating to determining a degree to which a maintenance interval estimate is adjusted or determining an adjusted maintenance schedule. For example, an administrator might revise a planned maintenance schedule based on an “adjustment parameter,” e.g., the particular time of day when maintenance staff are available. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
Claims 22 and 32 include the following additional elements: implementing a computer system configured to; by the computer system; in a [the] database; the usage data being generated by at least one sensor, a counter, and/or a measurement device; the replacement indication being provided by a sensor, the at least one sensor, the counter, the measurement device, a user input via a user interface, and/or another system; via the user interface and/or a user device; from the at least one sensor, the counter, and/or the measurement device associated with the equipment; to a user interface and/or a user device of a user.
These elements are recited at a high level of generality and are simply being used to apply the abstract idea. This does not integrate the abstract idea into practical application, per MPEP 2106.05(f). Applicant’s own specification describes a generic computer in para. [0094]. The elements in combination are simply a generic computer system that receives data.
Therefore, per Step 2A Prong Two, it is concluded that the additional claim elements, alone and in combination, do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
(While examiner has interpreted the additional elements as merely facilitating the tasks of the abstract idea (MPEP 2106.05(f)), some of the additional elements (e.g., the usage data being generated by at least one sensor, a counter, and/or a measurement device; from the at least one sensor, the counter, and/or the measurement device associated with the equipment), alternatively, do no more than generally link the use of a judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). This does not integrate the abstract idea into practical application, when these elements are viewed alone or in combination with the other additional elements highlighted previously.)
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B of the eligibility analysis concludes that the claim does not include additional elements that amount to significantly more. Examiner proceeds by carrying over the conclusions from Step 2A Prong 2, i.e. the additional elements are recited at a high level of generality, where these generic computing elements are simply being used to apply the abstract idea (see MPEP 2106.05(f)). Applicant’s own specification describes a generic computer in para. [0094]. The elements in combination are simply a generic computer system that receives data. These elements are not “significantly more,” when viewed alone or in combination.
Therefore, per Step 2B, it is concluded that the additional claim elements, alone and in combination, do not amount to significantly more. The claims are not patent eligible.
(While examiner has interpreted the additional elements as merely facilitating the tasks of the abstract idea (MPEP 2106.05(f)), some of the additional elements (e.g., the usage data being generated by at least one sensor, a counter, and/or a measurement device; from the at least one sensor, the counter, and/or the measurement device associated with the equipment), alternatively, do no more than generally link the use of a judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). This is not significantly more, when these elements are viewed alone or in combination with the other additional elements highlighted previously.)
The analysis takes into consideration all dependent claims as well:
Dependent claims 23-31 and 33-41 merely narrow the abstract idea with additional steps and/or information and would fall into the same grouping as set forth above. Further, some of the dependent claims recite further additional elements, beyond those highlighted above:
Claims 23 and 33: an email message, a text message, an automatic phone message, and/or a communication presented on the user interface; wherein the equipment is implemented in a liquid dispensing system.
Claims 24 and 34: a sensor.
Claims 26 and 36: to a user interface and/or a user device.
Claims 29 and 39: an email message, a text message, an automatic phone message, and/or a communication presented on the user interface.
Similar to above, these further additional elements are generic computing elements applied to the tasks of the narrowed abstract idea (see MPEP 2106.05(f)) and/or generally linking the narrowed abstract idea to a particular technological environment or field of use (e.g., wherein the equipment is implemented in a liquid dispensing system; see MPEP 2106.05(h)). Whether viewed alone or in combination with the previously highlighted additional elements, this does not integrate the narrowed abstract idea into practical application and/or add significantly more.
Accordingly, claims 22-41 are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant’s arguments filed 2/23/26 have been fully considered.
Claim Rejections - 35 U.S.C. § 101
Applicant offers, regarding the rejections under 35 U.S.C. § 101 (citations to specification, which are omitted for purposes of brevity, indicated in brackets):
However, in order to expedite prosecution, Applicant provides the following initial remarks for consideration by the Examiner. In this regard, Applicant asserts that the claims are directed to a novel, non-obvious, and unconventional method of determining a maintenance interval estimate that adapts to changes affecting equipment utilizing a computer system in concert with a number of devices as recited by independent claims 22 and 32.
Applicant asserts that the claimed computer system is not a general-purpose computing system. On the contrary, Applicant asserts that the computer system operates with a number of special-purpose devices and accordingly, the computer system recited by the claimed method relates to "[0094]... special purpose computing system environments or configurations."
Applicant asserts that the claims have subject matter eligibility consistent with Enfish v. Microsoft Corp., 2015-1244 (Fed. Cir. May 12, 2016).
The Examiner determined that the previous claims were directed to a novel, non- obvious, and unconventional method of operation. Applicant asserts that the new claims are likewise directed to a novel, non-obvious, and unconventional method of operation of a special-purpose computer system.
Thus, the claims are not (1) "simply adding conventional computer components to well-known business practices;" (2) mathematical formulas performed on any general purpose computer; or (3) "generalized steps performed on a computer using conventional computer activity." Id. at 17.
Applicant asserts the claims are directed to a practical application and as such the claimed invention is thus not directed to a judicial exception.
As set forth by the disclosure: […]
Applicant asserts that this is a practical application and as such the claimed invention is thus not directed to a judicial exception.
In view of the Board decision from 12/23/25, applicant’s remarks are unpersuasive. Applicant’s present amendments and remarks do not address the concerns raised by the Board on pages 11 and 13:
The methods may be performed on general purpose or special purpose computer systems, environments, and configurations including personal computers, server computers, laptop devices, and multiprocessor systems including set top boxes, programmable consumer electronics, network PCs, minicomputers, mainframe computers, and distributed computing environments of any of these devices that Appellant does not purport to have invented or improved. See Spec. ' 94.
Such a "wholly generic computer implementation is not generally the sort of 'additional featur[e]' that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself. Alice, 573 U.S. at 223-24 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."); Trinity, 72 4th at 1362 (performing an abstract idea on a handheld device, web servers, and database did not make it eligible); Killian, 45 F.4th at 1382-83 (a generic computer implementation is not sufficient); BSG Tech LLC BuySeasons, Inc., 899 F.3d 1281, 1286 (Fed. Cir. 2018) ("[C]laims are not saved from abstraction merely because they recite components more specific than a generic computer."); Two-Way Media Ltd. V. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir. 2017) (carrying out abstract ideas on generic computers is insufficient); Affinity Labs of Tex., LLC V. Amazon.com, 838 F.3d 1266, 1271 (Fed. Cir. 2016) (finding a customized user interface was abstract); TLI, 823 F.3d at 613 (using a mobile telephone system did not make the claims non-abstract); Intellectual Ventures I LLC V. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (finding an interactive interface that tailored web pages to a specific individual was a generic computer element).
[…]
"Software can make non-abstract improvements to computer technology just as hardware improvements can, and the improvements can be accomplished through either route." Enfish, 822 F.3d at 1335. "[T]o be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC V. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020); Interval Licensing LLC V. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (ineligible software "did not recite any assertedly inventive technology for improving computers as tools and/or because the elements of the asserted invention were so result-based that they amounted to patenting the patent-ineligible concept itself"). Here, the claims do not recite adaptive maintenance system technical configurations. Cf. Appeal Br. 8-11. Even if the method proves accuracy or efficiency, such benefits result from a generic computer implementation. See Univ. of Fla. Research Found., Inc. V. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (data synthesis technology was abstract even if it produced "life altering consequences"); In re Elbaum, No. 2023-1418, 2023 WL 8794636, at *2 (Fed. Cir. Dec. 20, 2023) (the abstract idea's usefulness or tax benefits did not confer eligibility); In re Smith, No. 2022-1310, 2022 WL 4112730, at *3 (Fed. Cir. Sept. 9, 2022) ("[U]tility is not the test for patent eligibility under the Supreme Court's cases.")); In re Mohapatra, 842 F. App'x 635, 638 (Fed. Cir. 2021) ("[T]he fact that an abstract idea may have beneficial uses does not mean that claims embodying the abstract idea are rendered patent eligible."); Tenstreet, LLCv. DriverReach, LLC, 826 F. App'x 925, 926 (Fed. Cir. 2020) ("The test for patent-eligible subject matter is not whether the claims are advantageous over the previous method.").
Though applicant has amended the claims, examiner maintains the position articulated in the Board’s decision is still relevant: the claims do not recite adaptive maintenance system technical configurations, and even if the method proves accuracy or efficiency, such benefits result from a generic computer implementation.
Lastly, examiner notes that novelty is not equivalent to eligibility, per MPEP 2106. Applicant may very well arrive at a novel claim that is still directed to an abstract idea.
Therefore, examiner maintains the rejections under 35 U.S.C. § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
“Cost Optimization of Periodic Preventive Maintenance” (NPL attached), which teaches: Most preventive maintenance(PM) models assume that the hazard function of a system after each PM occurrence is restored to like new or to some specified level. Thus, there is no provision for system degradation with time. Operation of many systems causes stress which results in system degradation and hence an increase in the level of the hazard function with time. PM is assumed to relieve stress temporarily and hence slow the rate of system degradation. However, this type of activity does not reverse degradation; so the hazard function is monotone. A hazard function is developed in this paper consistent with this concept of PM effect. The special case for which PM reduces the operational stress to that of a new system is considered in greater detail (e.g., a new system begins operation with the full benefit of a PM activity; each subsequent PM completely restores the benefits). It is shown for this case that the hazard function under PM is approximately a 2-parameter Weibull with shape parameter 2 for systems with strictly increasing hazard without PM. Cost optimization of the PM intervention interval is obtained by determining the average cost-rate of system operation. When the hazard function without PM is unknown, optimization may be achieved through an iterative process. This avoids the necessity of estimating system failure characteristics without PM; such testing can be destructive or use expensive equipment.
US 20120143564, which teaches: A method and system for accurately predicting the remaining useful life of devices and device components based on rigorous statistical analysis data to reduce service costs by implementing condition-based maintenance is disclosed. One such rigorous statistical model is the general degradation path model. The General Path Model is used to generate simulated data that shares similar data characteristics of historical field failure data. This generated data can be used in a reliability study based on Monte Carlo techniques for RUL prediction. The study can be used to investigate the effects of influential factors such as suspension percentage and heavy-tailed behavior. The remaining useful life prediction is based on both the fixed-time predictors (such as the market segment) and the time-dependent covariates (e.g., dark decay, printing rate, etc.). The Random Forest Model can also be used for accurately predicting remaining useful life based on both fixed-time predictors and time-dependent covariates, which are both contained in the field data of a component. A relationship between component failure and amount of degradation makes it possible to use degradation models for accurate predictions of failure time.
US 20140163936, which teaches: Systems and methods for failure prediction and maintenance planning are provided. A system for failure prediction and maintenance planning, comprises a statistical modeling module comprising a periodic impact evaluation module capable of identifying periodic effects on the failure risk, a balance equation systems module capable of constructing balance equations with respect to phases of failure times, and an initial phase estimation module capable of estimating an unknown initial phase, wherein one or more of the modules are implemented on a computer system comprising a memory and at least one processor coupled to the memory.
US 20160076976, which teaches: An automated prognostics system includes a sensor system configured to obtain measurement data by monitoring one or more parameters at one or more locations on each of one or more movable components of an object when the object is subjected to a first mode of operation. The system also includes a computing device having an input interface and a processor. The input interface receives input information such as spatial coordinates information associated with the one or more locations, the measurement data obtained by the sensor system, operational data associated with the first mode of operation, and structural data associated with the object. The processor processes the input information and generates a prognostics report on at least a first component of the one or more movable components, the prognostics report including at least one of a failure prognostic or a likelihood-of-failure prognostic of the first component.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SAMUEL WASAFF whose telephone number is (571)270-5091. The examiner can normally be reached Monday through Friday 8:00 am to 6:00 pm.
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, SARAH MONFELDT can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN SAMUEL WASAFF
Primary Examiner
Art Unit 3629
/JOHN S. WASAFF/Primary Examiner, Art Unit 3629