DETAILED ACTION
This Non-Final Office Action is in response to the arguments, amendments, and Request for Continued Examination filed January 7, 2026.
Claims 1 and 13 have been amended.
Claims 14-23 have been cancelled.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 7, 2026 has been entered.
Claim Rejections - 35 USC § 112(a)
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 1-13 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. Claim 1 is directed towards, “wherein the plurality of analytical apparatuses includes at least one election microscope”. The claim is directed towards an election microscope which is new matter. The specification describes an electron microscope. As such claim 1 is rejected for being directed towards new matter. Claims 2-13 are rejected for inheriting the deficiency of the parent claim 1. Therefore, claims 1-13 are rejected under 35 USC 112(a). In terms of compact prosecution, election microscope will be interpreted in light of the specification as electron microscope but appropriate correction is required with respect to consideration under the 35 USC 112 rejection.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards an abstract idea without additional elements that are significantly more or transformative into a practical application.
In terms of step 1, claims 1-13 are directed towards one of four categories of statutory subject matter.
In terms of step 2(a)(1), independent claims 1 is directed towards (as represented by claim 1), “read a set of apparatus signatures that pertain to one of the analytical apparatuses; and provide maintenance recommendations for, predict failure of and/or diagnose root causes of failure of said analytical apparatus, based on the set of apparatus signatures that pertain to said analytical apparatus, wherein the plurality of analytical apparatuses are located at a plurality of sites, wherein the plurality of analytical apparatuses includes at least one election microscope, submit parts orders to a warehouse, factory, or other parts vendor so that appropriate parts are available at the time of a service visit to one of the analytical apparatuses”. The claims are describing generating a set of information (apparatus signatures) for devices (apparatuses) that include an electron microscope, transmitting the information for each collection of data relating to the devices, and providing maintenance recommendations, diagnostics, or predictive failure. The claims are describing a collection, high level analysis, and display based on the analysis for device maintenance which falls into the abstract idea grouping of mental process. This consideration also takes into account that the process is performed in a computer environment in terms of the apparatus devices (including the electron microscope) are sending the information to a central location that provides the maintenance instruction.
The claims also describe an additional abstract idea under the certain method of organizing human activity grouping. The claims are describing a collection of predictive maintenance information to perform root cause/operation status and diagnostics to submit parts orders for availability for a service visit. The claims are describing a commercial activity/business relation in terms of parts availability and maintenance scheduling for equipment that falls under the abstract idea grouping of certain method of organizing human activity.
Step 2(a)(II) considers the additional elements in terms of being transformative into a practical application. The additional elements of claim 1 are, “A system comprising: one or more computers at a central location; computer storage media at the central location that is electronically coupled to the one or more computers and that comprises thereon: one or more databases comprising a plurality of sets of apparatus signatures, each set pertaining to a respective one of a plurality of analytical apparatuses and each apparatus signature of each set comprising a collection of data relating to the operation of the analytical apparatus to which it pertains at a time at which the said signature is generated; and computer readable instructions that, when executed, are operable to cause the one or more computers to: and wherein each site comprises a respective site computer system comprising program instructions operable to read a plurality of operational parameters from each analytical apparatus at the site and to generate and store a respective apparatus signature from each plurality of operational parameters; and wherein the computer readable instructions are further operable to”. The additional elements are described in the originally filed specification pg. 16 line 8 to pg. 17 line 7. The additional elements, specifically the computer aspects, are describing generic technology to implement the abstract idea. Specifically, in terms of the mental process grouping, the computers are generic computer elements that are collecting and analyzing maintenance information from devices that a person would be able to observe and analyze in machine repair and diagnostics. As such, the additional elements are merely generic technology to implement the abstract idea and are not transformative into a practical application. Refer to MPEP 2106.05(f).
Step 2(b) considers the additional elements of claim 1 with respect to being significantly more than the identified abstract idea. The additional elements of claim 1 are, “A system comprising: one or more computers at a central location; computer storage media at the central location that is electronically coupled to the one or more computers and that comprises thereon: one or more databases comprising a plurality of sets of apparatus signatures, each set pertaining to a respective one of a plurality of analytical apparatuses and each apparatus signature of each set comprising a collection of data relating to the operation of the analytical apparatus to which it pertains at a time at which the said signature is generated; and computer readable instructions that, when executed, are operable to cause the one or more computers to: and wherein each site comprises a respective site computer system comprising program instructions operable to read a plurality of operational parameters from each analytical apparatus at the site and to generate and store a respective apparatus signature from each plurality of operational parameters; and wherein the computer readable instructions are further operable to”. The additional elements are described in the originally filed specification pg. 16 line 8 to pg. 17 line 7. The additional elements, specifically the computer aspects, are describing generic technology to implement the abstract idea. Specifically, in terms of the mental process grouping, the computers are generic computer elements that are collecting and analyzing maintenance information from devices that a person would be able to observe and analyze in machine repair and diagnostics. As such, the additional elements are merely generic technology to implement the abstract idea and are not transformative significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
Dependent claim 2 is directed towards additional elements beyond those identified above. Claim 2 is directed towards, “wherein the plurality of analytical apparatuses further includes an analytical apparatus that is chosen from the group consisting of: a mass spectrometer, a liquid chromatograph mass spectrometer (LCMS) system, a gas chromatograph mass spectrometer (GCMS) system, a scanning electron microscope, an optical spectrometer, an X-Ray diffraction analyzer and an X-Ray fluorescence analyzer”. The claim is merely describing the type of apparatus that is providing the maintenance information described above. The additional elements are directed towards field of use in terms of limiting the type of device that the collection and analytic elements are directed towards. The additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(h).
Dependent claims 3-6 are directed towards additional elements beyond those identified above. Claims 3-6 are directed towards, “wherein each site computer system is further operable to store the plurality of apparatus signatures generated at the respective site and to transmit the stored apparatus signatures to the one or more computers at the central location”, “wherein each site computer system is operable to validate and encrypt the stored plurality of apparatus signatures prior to transmitting them to the one or more computers at the central location”, “wherein each transmitted apparatus signature is transmitted in in either JavaScript Object Notation (JSON) format or JavaScript Object Notation for Linked Data (JSON-LD) format”, and “wherein the signatures employ defined categories, properties, concepts, relations and entity definitions in accordance with one or more standard ontologies”. The additional elements are further describing aspects of the generation and storage at a central location, validating and encrypting the data, providing transmission according to JSON or JSON-LD format, and defining the data with respect to an ontology. The specification describes the additional elements in pg. 24 line 1 to pg. 25 line 26. The additional elements are merely describing generic technology to implement the abstract idea. Further, in terms of the ontology and JSON, these elements are utilizing technical elements that are “off-the-shelf” and developed by others, as admitted within the specification {pg. 6 line 4 to pg. 7 line 21}. The additional elements are using generic technology and are not directed towards a technical improvement. As such, the claims are not directed towards additional elements that are significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
Dependent claim 7 is further describing the abstract idea without additional elements beyond those identified above. The claim is directed towards, “wherein the one or more computers of the central location is in communication with a service database on which are stored records pertaining to at least one of the group consisting of: service labor hours, service ticket opening and closing, service costs incurred, parts ordered, and billing information”. The claim is describing storing records based on the maintenance information including service labor hours, service ticket, parts ordered, and billing. These describe aspects of the mental process that further describes the stored data for the maintenance elements. The database and contract location communication are directed towards additional elements considered above in terms of generic technology to implement the abstract idea. The additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
Dependent claim 8 is further describing the abstract idea with additional elements beyond those identified above. The claim is directed towards, “wherein the or more computers of the central location comprise a module that provides a user interface to research and development personnel that enables validation of the accuracy of data that is being received from one or more of the plurality of analytical apparatuses by the one or more computers of the central location”. The claim is describing a user interface to provide display elements to research and provide validation of accuracy. These describe aspects of the mental process that further describes the output elements based on the analysis for the maintenance process. The claim provides a user interface and module that are additional elements beyond those identified above. The user interface and computer elements are described in the originally filed specification {pages 24-26}. The additional elements are describing generic technology to implement the abstract idea. As such, the additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
Dependent claim 9 is further describing the abstract idea with additional elements beyond those identified above. The claim is directed towards, “wherein the or more computers of the central location comprise a module that provides a user interface to engineering and service personnel that enables said personnel to view one or more system signatures at a given point in time or at specific points in time”. The claim is describing a user interface to provide display elements to view the signature data at a given point in time. These describe aspects of the mental process that further describes the output elements based on the analysis for the maintenance process. The claim provides a user interface and module that are additional elements beyond those identified above. The user interface and computer elements are described in the originally filed specification {pages 24-26}. The additional elements are describing generic technology to implement the abstract idea. As such, the additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
Dependent claim 10 is further describing the abstract idea without additional elements beyond those identified above. The claim is directed towards, “wherein the module comprises computer readable instructions that enable service personnel to augment system signature data with in-the-field observations and root-cause-of-failure determinations”. The claim is further describing maintenance personnel providing observations (mental process) for the maintenance process. As such, the claim is further describing the abstract idea and the claim is not directed towards additional elements that are significantly more or transformative into a practical application.
Dependent claim 11 is further describing the abstract idea without additional elements beyond those identified above. The claim is directed towards, “wherein the one or more computers of the central location comprise a data analysis module that is configured to recognize trends in the signature data stored in the database”. The claim is further describing the high level analysis to recognize trends for the maintenance system. There is no specific algorithm or model to provide the analysis and recognizing trends can be performed mentally using observations and judgements with the aid of pen and paper. As such, the claim is further describing the mental process abstract idea. The claim is not directed towards additional elements that are significantly more or transformative into a practical application.
Dependent claim 12 is further describing the abstract idea with additional elements beyond those identified above. The claim is directed towards, “wherein the or more computers of the central location comprise a triage module that provides a user interface to engineering and service personnel that and provides said personnel with a list of most probable root causes of a fault in or failure of an analytical apparatus”. The claim is describing a user interface to provide display elements to view the most probably root cause analysis. These describe aspects of the mental process that further describes the output elements based on the root cause analysis for the maintenance process. The claim provides a user interface and module that are additional elements beyond those identified above. The user interface and computer elements are described in the originally filed specification {pages 24-26}. The additional elements are describing generic technology to implement the abstract idea. As such, the additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
Dependent claim 13 is further describing the abstract idea without additional elements beyond those identified above. The claim is directed towards, “wherein the triage module comprises computer readable instructions that are configured to provide a service technician or engineer with a list of appropriate tools that the technician or engineer should have at his/her disposal at the time of a service visit to the analytical apparatus at which the fault or failure occurred”. The claim is describing a user interface to provide display elements to view the list of appropriate parts and tools. These describe aspects of the mental process that further describes the output elements based on the analysis for the maintenance process. The claim provides a user interface and module that are additional elements beyond those identified above. The user interface and computer elements are described in the originally filed specification {pages 24-26}. The additional elements are describing generic technology to implement the abstract idea. As such, the additional elements are not significantly more or transformative into a practical application. Refer to MPEP 2106.05(f).
The claimed invention is describing an abstract idea without additional elements that are significantly more or transformative into a practical application. Therefore, claims 1-13 are rejected under 35 USC 101 rejection for being directed towards non-eligible subject matter.
Response to Arguments
In response to the arguments filed January 7, 2026 on page 6 regarding the 35 USC 112(a) rejection.
Examiner respectfully disagrees.
The arguments allege that the claims have been amended to include “at least one of the group consisting of a transmission electron microscope and a scanning electron microscope”. Examiner notes that no such amendment has been made. The amendments are currently, “wherein the plurality of analytical apparatuses includes at least one election microscope”. As such, the claim is still directed towards the rejected claim element of an election microscope. Therefore, lacking any further arguments, claim 1 is maintaining the 35 USC 112(a) rejection.
Lacking any further arguments, claims 1-13 are maintaining the 35 USC 112(a) rejection, as considered above in light of the amended claim limitations.
In response to the arguments filed January 7, 2026 on page 7-15 regarding the 35 USC 101 rejection, specifically that the claimed invention is directed towards eligible subject matter.
Examiner respectfully disagrees.
The arguments are with respect to the claim limitations regarding signatures from sensors of the one or more instruments that provide information for predictive trends of maintenance/diagnostics provide a technical improvement. The claims are providing a collection of information regarding equipment to determine maintenance information that further provides parts submissions and availability for a service visit for the equipment. The amended claim limitations are further describing the abstract idea. The newly amended claim limitation is not describing further additional elements. In terms of the consideration, the claim limitations were considered with respect to Step 2(a)(II) and 2(b) for the additional elements and the additional elements were found to be generic technology to implement the abstract idea. The claims are describing an abstract idea and the additional elements are not transformative into a practical application or significantly more than the identified abstract idea. The dependent claims were considered individually and as a whole/combination and the dependent claims were further describing the abstract idea and the considered additional elements are not transformative into a practical application or significantly more than the identified abstract idea. Therefore, claims 1-13 are maintaining the 35 USC 101 rejection, as considered above in light of the amended claim limitation.
Lacking any further arguments, claims 1-13 are maintaining the 35 USC 101 rejection, as considered above in light of the amended claim limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hadorn et al [2020/0411176] (lab equipment maintenance and anomaly detection);
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/ANDREW CHASE LAKHANI/Primary Examiner, Art Unit 3629