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 .
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 and 11 are rejected under 35 U.S.C. 101 because:
Regarding to claims 1 and 11: The claims are simply directed to a method/device of/for checking the compliance of a workpiece by using the law of probability associated with a characteristic of the workpiece. This limitation as analyzed include concepts directed to “mathematical concepts” of abstract ideas performed using mathematical calculations (see MPEP 2106.04(a)(2), subsection I), such as the theory of probability. Thus, this limitation falls into the “mathematical concepts” grouping of abstract ideas. Furthermore, the additional step of verifying the estimated risk of non-compliance and redoing the measurement if needed is a conventional technique well known in the field of measuring and testing to obtain more data for the verification; as a result, this additional step does no more than adding insignificant extra-solution activity to the judicial exception. In other words, this additional step is insufficient to amount to significantly more than the judicial exception (Abstract idea) to transform the claimed subject matter into a patent-eligible application. Accordingly, the claims are not patent eligible.
Regarding to the method in claim 1: For a subject matter to be statutory, the claimed process must be limited to a practical application, and a claim is limited to a practical application when the method, as claimed, produces a concrete, tangible and useful result. In addition, a statutory process is one that requires the measurements of physical objects or activities to be transformed outside of the computer (MPEP 2106 IV 2. Statutory Subject Matter). In claim 1, the method stops short at updating the law of probability without physical objects or activities transformed to produce a concrete, tangible and useful result.
Claim Rejections - 35 USC § 112
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 1-4, 11-12 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding to claims 1, 11:
The Specification, as filed, even though discusses the estimation a risk of non-compliance of characteristic on the basis of a law of probability associated with the characteristic in theory, the Specification does not specific on how the estimation is carried in an application for a particular characteristic, such as the drill diameter and the drill position of the drill holes on the workpiece 2 (FIG. 4A), for example (Table 1, Specification). The Specification, paragraph [0063] (US 2024/0077857), simply states “the estimated risk of non-compliance TNCk is estimated on the basis of a law of probability associated with characteristic X”, but no further discusses on how the estimation is estimated associated with the drill diameter and the drill position of the drill holes.
Applicant’s Remark dated 10/31/2025 states “The Specification expressly defines the law of probability as the probability distribution associated with a measurable characteristic X”, but no explanation on the probability distribution regards to a particular characteristic, such as the drill diameter and the drill position of the drill holes, for a practical application.
In addition, regrading to the risk of non-compliance estimation TNCk (FIG. 1, step 14), the Specification does not have an explanation on how such estimation, takes in the characteristic, such as the drill diameter and the drill position of the drill holes, as an input and applies them to the law of probability, to output a quantity or number for further comparing it to the fixed threshold Fα and the threshold Vk,α in the verification step. The Specification, regarding to the criterion decision in the verification step, defines the criterion decision as the fixed threshold Fα and the threshold Vk,α, wherein Fα = m x α and Vk,α = m’ x k x α, while m/m’ seems to be a random number (as suggested in the Specification as “where m is a suitably chosen actual number”), the meaning of α is also unclear.
Furthermore, regarding to the measurement a value of the characteristic (FIG. 1, step 20), wherein such measurement is further used for updating the law of probability (FIG. 1, step 24), the Specification, even though in TABLE 2 shows the measurement operations including measurement of drill holes, measurement of cylinder B, and measurement of plane A, does not specify how a value of each measurement is used for updating the law of probability in practice. Applicant’s Remark, dated 10/31/2025, even though explains the updating mathematically, but not in practice of how apply to each value of the measurement of drill holes, the measurement of cylinder B, and the measurement of plane A.
In conclusion, the description of the Specification and Applicant’s Remark (10/31/25) are mainly theory and mathematic, with no clear instruction on how to implement for a practical application.
Claims 2-4 and 12 are rejected because they depend on claim 1.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive. Please see the 112 rejection addressed above for explanation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAM S NGUYEN whose telephone number is (571)272-2151.
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, DOUGLAS RODRIGUEZ, can be reached on 571-431-0716. The fax phone 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.
/LAM S NGUYEN/ Primary Examiner, Art Unit 2853