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 Arguments
Applicant’s arguments, see pgs. 6-11, filed December 2, 2025, with respect to the rejection(s) of claim(s) 12-23 under 35 U.S.C. 112(b), 35 U.S.C. 101, and 35 U.S.C. 103 have been fully considered and are discussed below.
Applicant argues on pg. 6, regarding the 35 U.S.C. 112(b) rejections presented in the previous office action, that:
“Claims 12-23 were rejected for indefiniteness in the pending office action. Claim 19 and 21 are canceled herein, thereby obviating the rejection of this claim. Claims 12, 13 and 17 are amended herein in clear and definite terms without adding new matter.”
In response, the examiner finds the arguments persuasive and agrees. Therefore, the 35 U.S.C. 112(b) rejections presented in the previous office action are withdrawn.
Applicant argues on pg. 7, regarding the 35 U.S.C. 101 rejections presented in the previous office action, that:
“The steps are anchored in a real-world industrial application, namely the monitoring and handling of physical objects (electronic components) during a quality control stage on a production line.”
In response, the examiner finds the argument not persuasive and respectfully disagrees. Independent claim 12 explicitly discloses that the method is performed by a processor-based computer, wherein a processor is incapable of “handling physical objects.” Although the electronic components are disclosed as an affirmative limitation of the claim, the applicant appears to be acquiescing to limiting the reach of the patent for the formula to a particular technological use.” Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application; e.g., see MPEP 2106.05(h).
Applicant argues on pg. 7, regarding the 35 U.S.C. 101 rejections presented in the previous office action, that:
“Pending claim 12 notably performs steps of:
acquiring physical measurements from electronic components via real sensors;
evaluating atypicality to ensure manufacturing conformity; and
removing or marking physical components on a production line.
This corresponds to a technological quality-control process, not to an abstract idea.”
In response, the examiner finds the argument not persuasive and respectfully disagrees. First, the physical measurements are disclosed as “previously gathered data” in claim 12, lines 4-5. There are no affirmatively recited sensors in any of the dependent or independent claims. Second, an evaluation is indeed conducted from gathered data. Third, the only limitation of a physical component comprises the processor-based computer, which is not construed as being capable of removing or marking, except as a function of a memory register, which is construed as insignificant extra-solution activity.
Applicant argues on pg. 7, regarding the 35 U.S.C. 101 rejection presented in the previous office action, that:
“Consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the claim integrates the mathematical or data-processing steps into a practical application. Specifically, the method:
Acquires measurement data during a quality control stage of a manufacturing process, with measuring systems physically located on a production line;
Processes the data to identify unusual electronic components as part of the production workflow; and
Most importantly, automatically removes or marks the identified unusual components, or directs them to a dedicated inspection or rejection station.
These actions are not abstract but are tied to the manipulation and control of physical components within an industrial environment, providing a technological solution to a technological problem (see Diamond v. Dieh, DDR Holdings v. Hotels.com).”
In response the examiner finds the argument not persuasive and respectfully disagrees. To the first and second point, both of these are mere data gathering and data manipulation, which is an abstract idea. The third point of “removing or marking the identified unusual components, or directing them to a dedicated inspection or rejection station” is disclosed as a function of a “processor-based computer,” wherein a computer is not construed as capable of performing physical correction.
Applicant argues on pgs. 7-8, regarding the 35 U.S.C. 101 rejection presented in the previous office action, that:
“Moreover, the following factors demonstrate a practical application:
Integration with physical measurement devices: amended claim 12 requires real-world electrical measurement systems.
Integration with industrial automation: amended claim 12 concludes with an actuator-based removal/marking step.”
In response, the examiner finds the argument not persuasive and respectfully disagrees. A physical measurement device is not an affirmatively recited limitation of claim 12 or dependent claims. Instead, claim 12, lines 6-7 discloses “acquiring a plurality of measurement data,” lists the data collected, and discloses that the measurements, which are acquired and not measured, are performed at at least one temperature. Second, although there is a step for an actuator-based removal/marking step, there is nothing disclosed that is capable of performing this function; e.g., the only physical component disclosed includes a “processor-based computer.”
Applicant argues on pg. 8, regarding the 35 U.S.C. 101 rejection presented in the previous office action, that:
“The claimed invention provides a technical improvement over prior art quality control methods. Unlike known statistical or off-line processes that may simply flag data for further analysis, the claimed invention enables real-time, automated quality control. It:
Reduces human error and intervention,
Enhances the reliability and efficiency of defect detection in the manufacturing process, and
Ensures that only conforming components proceed in the manufacturing workflow.
Such improvements in the operation of industrial processes have consistently been found to be patent-eligible subject matter (see Diehr, Thales Vsionix, McRO v. Bandai).”
In response the examiner finds the argument not persuasive and respectfully disagrees.
A claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such an integration is when the claimed invention improves the functioning of a computer or improves another technology of technical field. The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter. Such claims are eligible at Step 2A because they are not “directed to” the recited judicial exception. The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. See MPEP 2106.04(d)(1).
First, the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the details necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.
The applicant’s representative has not provided cites to specific paragraphs of the disclosure, but has stated that the automated quality control 1) reduces human error and intervention, 2) Enhances the reliability and efficiency of defect detection in the manufacturing process, and 3) ensures that only conforming components proceed in the manufacturing workflow. Reduction in human error and intervention is not provided within any of the paragraphs of the disclosure. Para. [0122] does disclose that the rate of false alarms, i.e. of error in the identification of unusual individuals, is substantially reduces, and that being so, without the need for imposing a strict rate of unusual individuals to be met. However, sufficient details such that one of ordinary skill in that art would recognize the claimed invention as providing an improvement is not met with the disclosure of para. [0122] as the provided paragraph is merely a conclusory statement. Second, reliability is mentioned in the context of the claims in para. [0107] disclosing the reliability of the detection of unusual individuals is considerably increased to the extent that the method guarantees that two individuals having a very close unusual index are both identified as unusual or as non-unusual. And it is therefore possible to go beyond the detection of unusual individuals, since it is thus possible to generate a subset of individuals with homogenous unusual indices.” This is also a conclusory statement, as this disclosure merely compares an outcome and fails to relate how one of ordinary skill in the art would recognize an improvement. Furthermore, the word efficiency does not exist within the specification. Third, conformance and/or workflow are not limitations of the disclosure. Therefore, the first criteria for an improvement has not been met.
Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
The examiner notes that the first criteria has not been met. However, in evaluating the second criteria none of the limitations of error, intervention, reliability, efficiency, defect detection, and/or conformity appear in the limitations of claim 12. Therefore the second criteria for an improvement has not been met.
Applicant argues on pg. 8, regarding the 35 U.S.C. 101 rejection presented in the previous office action, that:
“The steps of pending claims are not performed by a generic computer alone. Rather, the claim specifies a processor-based system operating in conjunction with measurement devices and actuators that physically interact with the manufactured components. The inclusion of real-time measurement acquisition and automated handling steps demonstrate that the claimed method is not a mere automation of a mental process or algorithm, but a machine-implemented process producing a concrete, tangible result (see Diehr, Bascom Global Internet v. AT&T).”
In response, the examiner finds the argument not persuasive and respectfully disagrees. Claim 12 is a method that comprises a single physical limitation to include the “processor-based computer.” An actuator is not a component of independent claim 12. The machine-implemented process does produce a result, which is an identification of an unusual electronic component, which is not tangible.
Applicant does not argue the merits of the 35 U.S.C. 101 rejection applied to claim 22.
Applicant argues on pgs. 9-11, regarding the 35 U.S.C. 103 rejection presented in the previous office action, that:
“The current amendments to the claims now render the Examiner’s argument moot. Zhang and Miguelanez independently or in combination fails to teach or suggest the claimed approach of determining, for each electronic component, a multivariate unusualness index by summing, across a plurality of electrical parameters, the absolute deviations from the mean, only when those deviations exceed a parameter-specific threshold, as required in pending claim 12.
Another key distinction between the claimed invention and the cited references lies in the absence, in both Zhang and Miguelanez, of any teaching or suggestion regarding the segmentation of electronic components into groups based on statistically significant breaks in a global ordering of unusualness indices. Pending claim 12 requires not only the calculation of an unusualness index for each component, but also the global ordering of these indices and the identification of statistically similar groups by detecting breaks in the distribution—such as those exceeding a predetermined percentile threshold. Neither Zhang nor Miguelanez describes, suggests, or motivates this claimed step and feature.”
In response, the examiner finds the argument persuasive and agrees insofar as Zhang in view of Miguelanez is not relied upon as explicitly disclosing amended subject matter. Therefore, the 35 U.S.C. 103 rejection presented in the previous office action is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 12-18, 20, and 22-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Claim 12, lines 1-3 disclose “A method for identifying unusual electronic components in a sample of electronic components, implemented by a processor-based computer, the method comprising.” Claim 12, lines 28-29 disclose “performing quality control of electronic components in a manufacturing process by automatically removing or marking the identified unusual electronic components. It is unclear how a processor-based computer may remove or mark the identified unusual electronic component. Further clarification is required.
Claims 13-18, 20, and 22-23 are rejected by virtue of their dependence from claim 12.
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 12-18, 20, and 22-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are evaluated for patent subject matter eligibility under 35 U.S.C. 101 using the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) as follows:
Step 1:
Claims 12-18, 20, and 22-23 are directed to a method and therefore falls within the four statutory categories of subject matter.
Step 2A:
This step asks if the claim is directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea. Step 2A is a two-prong inquiry: in prong 1 it is determined whether a claim recites a judicial exception, and if so, then in prong 2 it is determined if the recited judicial exception is integrated into a practical application of that exception.
Analyzing claim 12 under prong 1 of step 2A, the abstract idea in bold:
A method for identifying unusual electronic components in a sample of electronic components, implemented by a processor-based computer, the method comprising:
statistically detecting the unusual electronic components in a set of previously gathered data on parameters or physical characteristics of the electronic components by acquiring a plurality of measurement data relating to electrical parameters of each electronic component of the sample, the electrical parameters being selected among current, voltage, frequency, and delay, and the electrical measurements being measured at at least one temperature;
pre-processing the plurality of measurement data to provide a plurality of normalized measurement data;
determining, for said each electronic component of the sample, an unusualness index by summing, over the plurality of normalized measurement data for said each electronic component, an absolute value of a difference between a value for a given electronic component and a mean value for an electrical parameter over the sample, the difference being considered in a sum only if the difference exceeds a predetermined threshold for the electrical parameter;
ordering the unusualness indices determined for all electronic components in the sample, and segmenting the electronic components of the sample into groups of statistically similar unusualness by identifying breaks in ordered indices exceeding a predetermined percentile threshold;
identifying unusual electronic components among the sample by selecting the electronic components belonging to groups with highest unusualness indices; and
performing quality control of electronic components in a manufacturing process by automatically removing or marking the identified unusual electronic components.
has a scope that encompasses mathematical concepts and/or mental steps, e.g., mathematical relationships and/or mathematical calculations, and/or concepts that may be performed in the human mind; e.g., human observation/performable with pen and paper/mere data gathering. Claim 12 discloses the method comprising: statistically detecting in a set of previously gathered data on parameters or physical characteristics by acquiring a plurality of measurement data relating to electrical parameters of the sample, the electrical parameters being selected among current, voltage, frequency, and delay, and the electrical measurements being measured at at least one temperature; construed by the examiner as a mental step; e.g., mere data gathering; pre-processing the plurality of measurement data to provide a plurality of normalized measurement data; construed by the examiner as a mathematical concept and/or a mental step; e.g., a mathematical relationship and/or performable with pen and paper; determining, of the sample, an unusualness index by summing, over the plurality of normalized measurement data, an absolute value of a difference between a value and a mean value for an electrical parameter over the sample, the difference being considered in a sum only if the difference exceeds a predetermined threshold for the electrical parameter; construed by the examiner as a mathematical concept; e.g., a mathematical calculation; ordering the unusualness indices determined in the sample, and segmenting the sample into groups of statistically similar unusualness by identifying breaks in ordered indices exceeding a predetermined percentile threshold; construed by the examiner as a mental step; e.g., performable with pen and paper; identifying [components] among the sample by selecting [components] belonging to groups with highest unusualness indices; and; construed by the examiner as a mental step; e.g., observation. The broadest reasonable interpretation of the abovementioned steps in light of the specification has a scope that encompasses a mathematical relationship between variables or numbers, and/or steps that may be performed in the human mind. It is therefore concluded under prong 1 of step 2A that claim 12 recites a judicial exception in the form of an abstract idea, i.e., mathematical concepts and/or mental steps. See MPEP 2106.04(a)(2)(A-C) and MPEP 2106.05(f).
In prong 2 of step 2A it is determined whether the recited judicial exception is integrated into a practical application of that exception by: (1) identifying whether there are any additional elements recited in the claim beyond judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.
Analyzing claim 12 under prong 2 of step 2A, in addition to the abstract ideas described above, claim 12 further recites:
implemented by a processor-based computer
Analyzing these additional elements of claim 12 under prong 2 of step 2A, these additional elements appear to merely recite the use of a generic processor/computer as a tool to implement the abstract idea and/or to perform functions in its ordinary capacity, e.g., receive, store, or transmit data. However, use of 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 component after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
performing quality control of electronic components in a manufacturing process by automatically removing or marking the identified unusual electronic components.
Analyzing this additional element of claim 12 under prong 2 of step 2A, this additional element appears to merely collect and interpolate mathematical data, interpreted by the examiner as insignificant extra-solution activity. The term “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps. An example of post-solution activity is an element that is not integrated into the claim as a whole, which is recited in a claim to analyze and manipulate information. See MPEP 2016.05(g). Also, employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more. See MPEP 2106.07(a).II. Specifically, claim 12 discloses in line 2 that the method is implemented by a processor-based computer. The broadest reasonable interpretation of a processor-based computer does not include a mechanism to move, remove, tag, mark, and/or engrave, and therefore the broadest reasonable interpretation of the limitations presented are that the processor-based computer performs this limitation as a function of the insignificant extra-solution (post-solution) activity of transmitting a control signal, or instead involves the computer removing or marking the identified unusual electronic components in memory, which is also insignificant extra-solution activity.
the unusual electronic components in
of the electronic components
of each electronic component
for said each electronic component
for said each electronic component,
for a given electronic component
all electronic components in
electronic components of the
unusual electronic components
the electronic component
Analyzing this additional element of claim 12 under prong 2 of step 2A, this additional element appears to generally link the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible “simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.” Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application; e.g., see MPEP 2106.05(h).
Step 2B:
In step 2B it is determined whether the claim recites additional elements that amount to significantly more than the judicial exception. The additional elements discussed above in connection with prong 2 of step 2A merely represents implementation of the abstract idea using a generic processor/computer and use of a generic processor/computer. However, use of a computer or other machine 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 integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
The further additional elements discussed above in connection with prong 2 of step 2A also merely represents insignificant extra-solution activity. The term “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps. An example of post solution activity is an element that is not integrated into the claim as a whole, which is recited in a claim to analyze and manipulate information. See MPEP 2016.05(g).
The still further additional elements discussed above in connection with prong 2 of step 2A also merely represents generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible “simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.” Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application; e.g., see MPEP 2106.05(h).
It is therefore concluded under step 2B that claim 12 does not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 13-18, 20, and 22-23 merely recite further details of the abstract idea of claim 12 and therefore do not represent any additional elements that would integrate the abstract idea into a practical application or represent significantly more than the abstract idea itself.
Claim 22 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a non-statutory subject matter. 35 U.S.C. 101 enumerates four categories of subject matter that Congress deemed to be appropriate subject matter for a patent: processes, machines, manufactures and compositions of matter. As explained by the courts, these “four categories together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007). Non-limiting examples of claims that are not directed to any of the statutory categories include products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations; e.g., see MPEP 2106.03.I.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
US 2003/0110006 A1 to Nakamura relates to machining time estimation apparatus for nc machine tool.
US 2015/0227133 A1 to Kurohara relates to numerical controller capable of preventing wrong machine after machining condition change.
US 2017/0139403 A1 to Saitou relates to a numerical control system coordinating with tool catalog database.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S. VON WALD whose telephone number is (571)272-7116. The examiner can normally be reached Monday - Friday 7:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Rastovski can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.S.V./Examiner, Art Unit 2863
/Catherine T. Rastovski/Supervisory Primary Examiner, Art Unit 2863