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 Appeal Brief
In view of the Appeal Brief filed on March 12, 2026, PROSECUTION IS HEREBY REOPNED. New grounds of rejections are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/BRIAN D KELLER/ Supervisory Patent Examiner, Art Unit 3723
Examiner sincerely regrets any inconvenience this may have caused the appellant.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 5 to 8 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.
In accordance with MPEP 2106.04, each of Claims 5 to 8 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of Claims 5 to 8 recites at least one step or instruction for reducing error during application of torque applied to an item having first and second portions, which is grouped as a mental process in MPEP 2106.04(a)(2)(III).
Accordingly, each of Claims 5 to 8 recites an abstract idea.
Specifically, independent Claim 5 recites a system for reducing error during application of torque applied to an item having first and second portions, the system comprising:
a processor (additional element); and
a memory storing instructions to be executed by the processor, to cause the processor to (additional element):
receive a first signal from the first tool in response to actuation of the switch to an ON position (observation or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) – alternatively an additional element, e.g., collecting data); and
determine whether the first tool was in use during application of torque to the second portion by a second tool (judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III)).
Further, dependent Claims 6 to 8 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the claimed functions/steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea as in MPEP 2106.04(a).
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract idea in independent Claim 5 (and its respective dependent Claims 6 to 8) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claim 5), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h). More specifically, the additional elements of processor and memory storing instructions to be executed by the processor are generically recited computer elements in independent Claim 5 (and its respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Even if receiving a first signal is considered to be an additional element, receiving or collecting data represents insignificant extra-solution activity according to MPEP 2106.05(g). The above-identified additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claim 5 (and its respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., the processor as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 5 (and its respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent Claim 5 (and its respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
None of Claims 5 to 8 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons.
These claims require the additional elements of: a processor and a memory storing instructions to be executed by the processor as recited in independent Claim 5 (and its respective dependent claims). Even if receiving a first signal is considered to be an additional element, receiving or collecting data represents insignificant extra-solution activity according to MPEP 2106.05(g).
The above-identified additional elements (i.e., processor and memory) are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, the controller 900 may be a computer, or other device in a network. In an example, the controller 900 includes a processor, communications circuitry (such as a transceiver and antenna), memory, storage, input and output devices (such as buttons, knobs, etc.), and a display screen, as known in the art (page 11, lines 14 to 17). Further, the torque wrench 1000 may also include a processor, communications circuitry (such as a transceiver and antenna), memory, storage, input and output devices (such as buttons, knobs, etc.), and torque and/or angle sensors, as known in the art (page 11, line 22 to page 12, line 1).
Accordingly, in light of Applicant’s specification, the claimed terms “processor” and “memory” are reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the processor. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in Claims 5 to 8 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the systems of Claims 5 to 8 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claim 5 (and its dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of the Claims 5 to 8 amounts to significantly more than the abstract idea itself. Accordingly, Claims 5 to 8 are not patent eligible and rejected under 35 U.S.C. 101.
Applicant’s argument that any alleged abstract idea/mental process is implemented with a physical structure defining the additional elements, i.e., a first tool having a head engaged with a first portion of an item, a first signal indicating that the first tool is in use in response to actuation of a switch to an ON position by a force being applied to a handle of the first tool in a direction towards the first portion of the item that causes the handle to move with respect to the head, defining the additional elements, is not persuasive.
One of ordinary skill in the art would have known, as further evident by the reference noted below, that additional elements required as recited in the claims, i.e., a handle, a head and a switch adapted to be actuated to an ON position by moving the handle towards the head, is old and well known and conventional.
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In the Examiner’s art of hand tools, artisans are aware of tools, e.g., conventional power nail guns, in which the movement of the handle of the tool towards the head causes a nose of the tool to engage with the workpiece and thus move a lever backward to push a switch to ON position by opening the lever/switch to allow passage of combustible gas to mix with air in the gun’s chamber. These additional elements, i.e., head, handle and movement of the handle initiating a switch to ON position, are routine and conventional as evident, e.g., by Ohmori. USP 7,918,373 granted to Ohmori for one of such tools, clearly discloses, in the background of the invention, these additional elements, handle 7, head 10 and switch 16, 50, 39 to be routine and conventional. Ohmori in describing these type of conventional combustion type power tools, discloses moving the handle 7 towards the head 10 causes the switch 16/50/30 to move into an ON position via a lever 12; and that these elements and feature are conventional and routine in the “Background/Summary” and Fig. 4.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al. (9,157,818 “Schultz”) in view of Shin (5,557,990).
Schultz meets all of the limitations of claim 5, i.e., a system portable torque measurement and notification system for reducing error during application of torque applied to an item workpiece 102 having first and second portions 104, 116, the system, comprising a processor 500 Fig. 5; and a memory storing instructions 506 to be executed by the processor; a first signal on signal from a first tool 102 when a head of the first tool is engaged with the first portion workpiece 104, wherein the first signal indicates that the first tool is in use turned on; and determine that the tool was in use in-situ monitoring and application of torque during application of the torque to a second portion of the item workpiece 116 by a second tool 118, Fig. 1, except for the processor to receive the first signal in response to actuation of a switch to an ON position by a force applied to the head in a direction towards the first portion of the item causing the handle to move with respect to the head.
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Push-start feature is well known in prior art in which by pressing the wrench head against the screw would initiate starting the motor by a relative movement between the workpiece engaging portion head relative to the body or the handle actuated by a force applied to the handle pushing force causing the handle move with respect to the head as evident and taught by Shin, Abstract. Shin teaches a power tool with a push-start feature. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the system of Schultz with the power tool and push-to start feature as taught by Shin to speed up the process and to facilitate operation and increase the efficiency.
Regarding claim 6, PA (prior art, Schultz modified by Shin) meets the limitations, i.e., pairing the tools Figs. 13, 14 (Schultz).
Regarding claims 7-8, PA meets the limitations, i.e., second signal to indicate the amount of torque applied Abstract; wherein the processor is configured to determine that the first tool was in use by receiving the first signal prior to, during, and after the application of the torque by the second tool in-situ monitoring.
Response to Arguments
Applicant's arguments filed March 12, 2026 have been fully considered, however the arguments regarding the 101 rejections, are not persuasive, since the step or receiving the signal and determining the use of a first tool are still considered an abstract idea according to MPEP 2106.05, See Ohmori cited above. The argument regarding the Shultz cannot be modified for a push-start feature is not persuasive, since this feature is old and conventional and since utilizing a power tool enhances the operation and well known.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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, Brian Keller can be reached on 571 272 8548. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Hadi Shakeri/
June 29, 2026 Primary Examiner, Art Unit 3723
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