DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is final.
This action is in response to the amendments filed on correspondence filed on 12/18/2025.
Claim 8 has been canceled.
Claims 1-7, and 9 are pending and have been considered.
Claims 1-5, 7, and 9 have been amended.
Claims 1-7, and 9 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter, a judicial exception, an abstract idea (mental process and mathematical concept), without significantly more.
The rejection of claims 1-7, and 9 under 35 USC 103 is hereby withdrawn. Claims 1-7, and 9 are considered allowable over the prior art of record.
Response to Amendments/Arguments
The Examiner thanks the Applicant for the Amendments and Arguments filed on 12/18/2025, which have been considered and which help clarifying the claimed invention and advance prosecution.
Regarding the 35 USC 101 rejection, the applicant brings good arguments in showing that the specification indicates improvements over the state of the art.
For example, the applicant’s remarks point out for example to reducing the number of experiments for acquiring information. The Examiner agrees. However, in order for improvements to result in a practical application, the improvements must be recited in the claim, and furthermore, the improvement must be recited part of limitations of additional elements. The improvement should not recited part of the judicial exception, since such an improvement does not integrate the judicial exception into a practical application.
Another modality is to have additional elements that indicate a control – and the specification does ([para 0054]) discloses that acquisition unit may control experimental equipment during machining experiments. Such disclosure indicates the system is capable of controlling physical equipment. However, the claims do not recite any such control.
Regarding 103 rejection. The argument that WU does not teach the plurality of
mathematically distinct solutions has not been found persuasive. Wu teaches equations in which both surface weld width and interface weld width are functions of laser velocity, gap and power.
Thus, these equations would in fact parametric as a function of power, that is for different values of power (say in a basic unit u) of 1u, and 2u, and 3u, for example, there will be different equations characterized by different parameters, thus with mathematically distinct solutions. However no obvious combination of references teach all limitations of the amended claims and as such
the rejection of the claims under 35 USC 103 is withdrawn.
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 1-7, and 9 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter, a judicial exception (abstract idea, mental process and/or mathematical concept) not integrated into a practical application, and without significantly more.
(S1) Claims 1-9 are each directed to a statutory category of invention: process (Claims 1-7 directed to a method) and machines (claims 9 directed to a system).
(S2A1) Claims are analyzed to identify abstract ideas (highlighted in bold font) and additional elements. Paraphrasing is used for simplifying referencing. Claims which have similar limitations, even if not verbatim identical, share the same rationale when analyzed as to being directed to non-statutory subject matter, as follows.
Claim 1, representative for claim 9, recites:
performing an experiment of machining a device to acquire first-type information and second- type information each indicating conditions of the experiment of machining and third-type and fourth-type information each indicating a result of the experiment of machining; (“acquiring data from an experiment, data on conditions of machining and the result” ) [ an additional element, data gathering, adding insignificant extra-solution to activity to the judicial exception; see MPEP 2106.04(d), 2106.05(g)]
wherein the machining is laser welding, the first type information includes a gap width between plates to be welded in the laser welding, the second type information includes a laser scanning speed in the laser welding, the third type information includes a surface welding width of a laser welded portion in the laser welding, and the fourth type information includes an interface welding width of the laser welded portion in the laser welding; (limits to a field-of use)
deriving a first expression and a second expressions, wherein the first expression receives the first-type and the second-type information as inputs and outputs the third-type information as a plurality of mathematically distinct solutions, and the second expression receives the first-type information and the second-type information as inputs and outputs the fourth-type information; (deriving an expression which outputs an information based on an input information) [ recites a mental process (see MPEP 2106.04(a)(2) III) including an “evaluation and judgement in determining a relationship between pieces of information”. For example a person can determine in the mind, or with the help or pen and paper, receiving as first information values height from which an object is falling and the gravitational constant, and determine the time of fall from various heights and the velocity at reaching the ground, and derive the expression of time and velocity, furthermore expressions roots, e.g. square roots, have a plurality of solutions. Plurality of mathematically distinct solutions recites a mathematical concept.
deriving a plurality of third expressions from the first expression, wherein each of the plurality of third expressions corresponds to a different one of the plurality of mathematically distinct solutions of the first expression, and wherein each of the plurality of third expressions receives the second-type and third-type information as inputs and outputs the first-type information; (deriving an expression which outputs an information based on an input information) [ similar as the limitation above it recites a mental process, including an evaluation and judgement in determining a relationship between pieces of information; also mathematical concept for mathematically distinct solutions.
and receiving measured second-type information and measured third-type information each measured in machining the device as inputs and outputting estimated fourth-type information indicating a result of machining the device by (i) obtaining the first-type information by inputting the measured second-type information and the measured third-type information to the plurality of third expressions and (ii) obtaining the estimated fourth-type information by inputting the obtained first-type information and the measured second-type information to the second expression; (deriving an expression which outputs an information based on an input information) [ similar as the limitation above it recites a mental process, including an evaluation and judgement in determining a relationship between pieces of information. Nothing stops the process from being performed in the mind.
determining whether or not the estimated fourth type information conforms to a predetermined determination condition; and (making an evaluation, judgement - mental process)
when the estimated fourth type information conforms to the predetermined determination condition, outputting first quality information indicating lack of a defect, and when the estimated fourth type information does not conform to the predetermined determination condition, outputting second quality information indicating a defect. (Mental evaluation of a condition followed by data output.
Thus, claims 1,9 recite limitations reciting mental steps and mathematical concepts . In broadest reasonable interpretation and in view of the application specification as well as the guidance from MPEP 2106.04 II. B, the limitations are considered together as a single abstract idea for further analysis, as a process aimed at: “determining relationships between pieces of information (in welding) and estimate an outcome (presence or absence of a defect) (in welding) and estimate an outcome (presence or absence of a defect)”.
Regarding the claim element “by a processor”, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. (Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2) III).
Claim 9 recites similar limitations. The units recited in relation with the mental process, including the derivation, generation, estimation units are implemented on a general purpose computer.
Accordingly, claims 1, 9 recite an abstract idea.
(S2A2) The additional elements, individually and in combination, fail integrate the recited judicial exception into a practical application when evaluated using the considerations in MPEP §§ 2106.04(d), 2106.05(a)-(c), (e)-(h) because it does not impose any meaningful limits on practicing the abstract idea. The additional steps in the claims, recite acquiring data from an experiment, data on conditions of machining. When considered individually or in combination they amount to nothing more than data gathering, an insignificant extra solution activity.
(S2B) Claims 1, 9 do not include additional elements, which individually or in combination amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application. As analyzed in S2A2 the additional elements recite acquiring data from an experiment, data on conditions of machining amounting to nothing more than data gathering, an insignificant extra solution activity. The data gathering is recited at high level of generality. Recited at high level of generality, data gathering was found to be WURC. (see MPEP § 2106.05(d)(ll)). Limitations of field of use also are not able to integrate into a practical application or provide significantly more.
When considered as a whole the additional elements elaborate on the identified abstract idea. It does not practically or significantly alter how the identified abstract idea would be performed. There is no inventive concept beyond the judicial exception, and thus the claim as a whole does not amount to significantly more than the judicial exception itself.
Therefore, it is concluded that claims 1, 9. are ineligible.
Dependent claim 2: recites further limitations analyzed as follows:
the outputting of the estimated fourth-type information includes: selecting single first-type information from a plurality of pieces of first-type information indicating conditions of machining the device having been output from the plurality of third expressions; (a mental process and
outputting the estimated fourth-type information indicating the result of machining the device using the single first-type information having been selected.
The process of selecting a piece of information from a plurality of pieces of information is a mental process, similar to those routinely performed in the mind, for example. in various mathematical or IQ tests, the person tested need to choose from multiple option responses the one better matching a model from data, for example which of the answers better matches, 1) a+b, 2) 2a+b; 3) 102*a*b. and makes a selection in the mind or using pen and paper. The limitation recites a mental process These type of limitations fall under the Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2) III). The claim recites an abstract idea.
The additional elements of the claim are mere Instructions To Apply An Exception MPEP 2106.05(f). When considered individually or in combination, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “determining relationships between pieces of information (in welding) and estimate an outcome (presence or absence of a defect)”. The dependent claim elements have the same relationship to the underlying abstract idea as outlined in the independent claims analysis above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea.
Therefore, claim 2 is deemed ineligible.
Claim 3, dependent on claim 2, further recites
deriving a fourth expression, wherein the fourth expression receives the first-type information and second-type information as inputs, outputs the third-type information, and is a linear expression in the third-type information; and deriving a fifth expression from the fourth expression, wherein the fifth expression receives the second-type information and the third-type information as inputs and outputs new first-type information, wherein the outputting of the estimated fourth-type information includes: selecting the first-type information as the single first-type information from the plurality of pieces of first-type information indicating conditions of machining the device output from the plurality of third expressions, the selected first-type information having least difference from the new first-type information having been output using the fifth expression with the measured second-type information and the measured third-type information measured in machining the device as inputs.
Claim 3 continues to recite the abstract idea of claim 1 and 2, and further recites mental processes (bolded) and mathematical concepts (in bold italics) above. The claim further specifies the derivation of the expressions, which, as analyzed in the claims from which claim 3 depends, involves evaluation and judgement and can be performed in the mind. The same rationale as in Claims 1 and claim 2 applies to the Alice/Mayo analysis. In addition the mental processes, mathematical concepts are recited, describing the expression as a linear expression, and the selection being with least difference, which implies substraction (difference) and comparison(s) (least). There are no additional elements to integrate into a practical application or to add significantly more; the claim continues to be directed to the abstract idea of “determining relationships between pieces of information (in welding) and estimate an outcome (presence or absence of a defect)”
Thus claim 3 is ineligible.
Claim 4, similar to claim 3, 3 continues to recite the abstract idea of claim 1 and 2, and further recites mental processes (bolded) and mathematical concepts (in bold italics) below:
wherein the outputting of the fourth-type information includes: selecting the first-type information from the plurality of pieces of first-type information indicating conditions of machining the device having been output from the plurality of third expressions, the selected first-type information being within a normal range; and outputting the estimated fourth-type information using the first-type information having been selected.
The same reasoning as in claims 1 and 2 applies for identifying the mental process of selection from a plurality, while selection being within a normal range is a mental process that also recites a mathematical concept of being within a range, which in the broadest reasonable interpretation means larger than lower limit and smaller than the upper limit of the range.
The claim thus recites mental process both amental process and mathematical concepts. Similar to the reasoning in the analysis for claims 1 and 2 the outputting of selected data is simply ‘apply it’ and can not change the nature of the abstract idea, the claim remaining directed to the abstract idea of “determining relationships between pieces of information (in welding) and estimate an outcome (presence or absence of a defect)”.
Claim 4 is thus found ineligible.
Claim 5, depending on claim 2, recites wherein the outputting of the estimated fourth-type information includes: if the plurality of pieces of first-type information indicating conditions of machining the device having been output from the plurality of third expressions is an imaginary number, deleting an imaginary part of the imaginary number; and outputting the estimated fourth-type information using the first-type information the imaginary part of which has been deleted.
A person can mentally perform the step of deleting the imaginary part of an ”imaginary number” In BRI and in view of the specification this is interpreted as deleting the imaginary part of a complex number since this is the only way the claim makes sense. The imaginary part and imaginary (complex) number are mathematical concepts. Thus the claim recites abstract ideas. There are no additional elements to further integrate the abstract idea into a practical application or any inventive concept to provide “significantly more” than the judicial exception.
Thus, claim 5 remains directed to a judicial exception and is ineligible.
Claim 6, dependent on claim 1, continues to recite the abstract idea of claim 1, and further recites mental processes (bolded) and mathematical concepts (in bold italics) below:
wherein the deriving of the plurality of third expressions includes: determining whether or not the first expression is a quadratic or higher polynomial expression on the third-type information and is a polynomial expression that cannot be expressed by an n-th power of (a*x+b), x being the third-type information; and if the first expression is determined as the polynomial expression, deriving the plurality of third expressions.
A person can mentally perform the step of determining whether or not the first expression is a quadratic or higher polynomial (by observation/evaluation/judgement) as well as the polynomial and nth power of an expression. Polynomial, power, x as unknown are recitations of mathematical concepts. Thus the claim recites abstract ideas. There are no additional elements to further integrate the abstract idea into a practical application or any inventive concept to provide “significantly more” than the judicial exception.
Thus, claim 6 remains directed to an judicial exception and is ineligible.
Dependent Claim 7 reciter further limitations analyzed as follows:
wherein the first-type information and the fourth-type information is predetermined information as information not measured in the machining, and the second-type information and the third-type information is predetermined information as information measured in the machining.
These further elements in the dependent claim do not perform any claimed method steps. The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment. They describe the nature, structure and/or content of other claim elements first, second, third and fourth type of information– and as such, cannot change the nature of the identified abstract idea (“determining relationships between pieces of information (in welding) and estimate an outcome (presence or absence of a defect) I”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07).
Therefore, claim 7 is deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claim, considered individually, or as a as a whole, as an ordered combination, does not amount to significantly more (see MPEP 2106.07(a)II).
Therefore claim 7 is deemed ineligible.
35 USC § 103
Claims 1-7 and 9 are considered allowable over the prior art of record.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.S./Examiner, Art Unit 2188
/RYAN F PITARO/Supervisory Patent Examiner, Art Unit 2188