DETAILED ACTION
This Final Office Action is in response to Applicant communication filed on 01/22/2026. Claims 1, 2, and 5 were amended and claims 7, 9, and 12 were cancelled. Claims 1-6, 8, and 10-11 are pending and rejected.
Response to Amendment
The 35 U.S.C. 102 and 103 rejections are withdrawn in view of the amendments to the claims which incorporate the elements previously recited in claims 7 and 12 (see Reasons on page 21 of the Non-Final dated 10/24/2025).
The 35 U.S.C. 101 rejection of claims 1-6, 8, and 10-11 is maintained. A revised rejection addressing the amendments to the claims is set forth below.
Response to 101 Arguments
Applicant’s arguments with respect to 35 U.S.C. 101 are fully considered but unpersuasive.
Applicant submits that “Claim 1 integrates any purported abstract idea into a practical application and/or recites significantly more than an abstract idea.” Because the claims recite improvement to existing computer technology to evaluate embrittlement of equipment in an industrial setting (Remarks P. 9). Examiner respectfully disagrees. First with respect to claim 5 and its dependents, no additional elements are recited and thus the claim cannot be eligible. See MPEP 2106.04. The claims do not recite any computer technology or any other structure or technology within the scope of the claim and therefore the claim cannot be found to be directed to an improvement in computer technology.
With respect to claim 1 and it’s dependents, the claims merely recite “units” of a general purpose computer (see 112f interpretation below) and there does not appear to be any nexus between the calculation of embrittlement as claimed and an improvement in how the computer itself functions or any other computer technology. The claims merely recite that a generic computer performs the calculations that are otherwise abstract.
Applicant’s arguments with respect to Ex parte Desjardins and Enfish (Remarks P. 10) are acknowledged but unpersuasive. The claims at issue in Ex parte Desjardins were directed to improvements in machine learning/artificial intelligence technology, no such subject matter is present in the instant case. The claims at issue in Enfish were directed to improvements in computer memory and how data was stored in a relational database, the claims in the instant case do not recite any details of how the computer memory functions or improvements thereto. Instead, the additional elements in claim 1 are found to be “units” of a general purpose computer recited at a high level of generality. The “operation data storage unit” and “evaluation-target component material storage unit” perform standard “saving”/”storing” of data by a computer.
The improvements to which Applicant refers including “reduce the number of embrittlement measurements that involve stopping and opening the equipment to be evaluated by estimating the embrittlement quantity of the evaluation-target member from the operation data” are provided by the mathematical calculations. In other words, Applicant’s invention is directed to a mathematical algorithm for estimating embrittlement which obviates the need to perform physical measurement steps (e.g. original Specification [0009]-[0011]). Providing a mathematical equation to calculate an estimated value in order to avoid doing physical actions (such as stopping and opening equipment) does not amount to an improvement in technology. The guidance is clear that the judicial exception alone cannot provide the improvement. Additionally, it has been well-established that novelty is wholly apart from eligibility and even a new or novel abstract idea is still abstract. See MPEP 2106.04(I): "The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions" citing Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 ("the novelty of the mathematical algorithm is not a determining factor at all").
Applicant further submits that “Claim 1, when considered as a whole, is directed to a practical application and is able to recommend and present a recommended maintenance time of equipment using a reduced number of embrittlement measurements that involve stopping and opening the equipment to be evaluated based on novel methods of estimating the embrittlement quantity of an evaluation target member from the operation data.” (Remarks P. 10). This argument is unpersuasive for the reasons discussed above. Additionally, the recommending of a maintenance time based on the results of the analysis is also considered abstract, e.g. is a mental judgment and opinion. Therefore, the “recommending” is not considered an additional element that might integrate into a practical application or amount to significantly more. See MPEP 2106.05(a): "It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception."
For at least these reasons, the 35 U.S.C. 101 rejection is maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“A material deterioration evaluation device for evaluating … operation data obtaining unit for detecting … operation data storage unit for saving … a temperature evaluation unit for calculating … evaluation-target component material storage unit for storing … embrittlement evaluation unit for calculating … risk evaluation unit for calculating … and … recommended maintenance time presentation unit for presenting …” in claim 1 and “…, and the plurality of modules are capable of communicating data among the plurality of modules.” in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
material deterioration evaluation device for evaluating …
[0021] “.... As illustrated in FIG. 1, a material deterioration evaluation device 1 of the first embodiment includes sensors 10, an operation data obtaining unit 20, an evaluation-target component material storage unit 30, an input unit 35, an operation data storage unit 40, a temperature evaluation unit 50, an embrittlement evaluation unit 60, a risk evaluation unit 70, and a recommended maintenance time presentation unit 80.”,
[0022] “… The input unit 35 is an input interface, such as a keyboard, for example, and is used to previously store material data and other data in the evaluation-target component material storage unit 30 and other units. …”.
operation data obtaining unit for detecting … (see [0022]
[0022] “operation data obtaining unit 20 is an arithmetic block that obtains operation data through the sensors 10,”,
operation data storage unit for saving …
[0024] “The operation data storage unit 40 can be fabricated by a nonvolatile memory, a hard disk drive, or other devices.”, [0018] “… an operation data storage unit that stores the operation data …”.
- a temperature evaluation unit for calculating …
[0022] “…The temperature evaluation unit 50 is an arithmetic block that evaluates an evaluation-target site temperature ...”.
- evaluation-target component material storage unit for storing …
[0023] “… evaluation-target component material storage unit 30 stores material data … evaluation-target component material storage unit 30 can be fabricated by a nonvolatile memory, a hard disk drive, or other devices. ...”.
- embrittlement evaluation unit for calculating …
[0022] “… The embrittlement evaluation unit 60 is an arithmetic block that evaluates a material embrittlement quantity using the evaluation results of …”.
- risk evaluation unit for …
[0022] “…The risk evaluation unit 70 is an arithmetic block that evaluates a failure risk … of the material embrittlement quantity. …”.
- recommended maintenance time presentation unit for presenting …
[0067] “… The recommended maintenance time presentation unit 80 has a display device such as a display unit and can present the contents of proposals to a user. …”.
- plurality of modules are capable of communicating data …
[0073] “… The embrittlement evaluation module 6 is connected to the modules 7, 8 by a wired or wireless connection capable of data communication. Alternatively, data may be exchanged using various media such as memory cards...”.
In other words, the “units” and “modules” are understood to be software executed by a computer or other general purpose computer components, e.g. memory, display, etc., or equivalents.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-11 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.
Claims 10-11 depend on claim 9 which has been cancelled and various terms in the claims lack sufficient antecedent basis, e.g. “the evaluation-target site temperature”, “the previously and experimentally determined constants”. Therefore, the scope of the claims are indefinite. Based on the context of the claims, Examiner suggests claim 10 be amended to depend from independent claim 5.
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 1-6, 8, and 10-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (i.e. a judicial exception without significantly more).
Specifically, representative Claim 1 recites:
A material deterioration evaluation device for evaluating embrittlement of equipment, the device comprising:
an operation data obtaining unit for detecting and obtaining a state of the equipment as operation data;
an operation data storage unit for saving the operation data;
a temperature evaluation unit for calculating a predetermined evaluation-target site temperature of the equipment based on the operation data;
an evaluation-target component material storage unit for storing material data of a material forming the equipment and embrittlement estimation formulas;
an embrittlement evaluation unit for calculating an embrittlement quantity of the material forming the equipment based on the evaluation-target site temperature, the material data, and the embrittlement estimation formulas;
a risk evaluation unit for calculating a damage risk of the material that forms the equipment based on the embrittlement quantity;
and a recommended maintenance time presentation unit for presenting a recommended maintenance time of the equipment based on the damage risk,
wherein the embrittlement evaluation unit evaluates embrittlement by
obtaining the embrittlement quantity as a function of a saturated embrittlement quantity and time; and
calculating the saturated embrittlement quantity of an evaluation-target site used for the evaluation of the embrittlement quantity by multiplying a constant (A1) that is experimentally determined in advance, a constant (B) that is calculated from quantities of elements contained in a material forming the equipment, and an exponential function whose exponent is a product of an inverse of a linear function of temperature and a constant (A2) that is experimentally determined in advance, and
the constant (B), which is calculated from the quantities of elements contained in the material forming the equipment, is back-calculated using the embrittlement quantity of the material forming the equipment at a certain time and the operation data stored in the operation data storage unit, and the embrittlement quantity is evaluated by using the back-calculated constant.
Specifically, representative Claim 5 recites:
A material deterioration evaluation method for evaluating an embrittlement quantity of equipment, comprising:
obtaining the embrittlement quantity as a function of a saturated embrittlement quantity and time; and
calculating the saturated embrittlement quantity of an evaluation-target site used for the evaluation of the embrittlement quantity by multiplying a constant (Al) that is experimentally determined in advance, a constant (B) that is calculated from quantities of elements contained in a material forming the equipment, and
an exponential function whose exponent is a product of an inverse of a linear function of temperature and a constant (A2) that is experimentally determined in advance,
wherein
the saturated embrittlement quantity of the evaluation-target site used for the evaluation of the embrittlement quantity is obtained by the following formula:
saturated embrittlement quantity = A1 x B x exp{A2/(K)},
where A1 and A2 are constants obtained experimentally in advance, B is a constant calculated from the quantities of elements contained in the material forming the equipment, and K is an absolute temperature.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements.”
Under Step 1 of the analysis, claims 1 and 5 belong to a statutory category, namely it is a device claim and a method claim, respectively.
Under Step 2A, prong 1, claim 1 is found to include at least one judicial exception (i.e. abstract idea), that being a Mental Processes and/or Mathematical Concept. This can be seen in the claim limitations of “evaluating” embrittlement of equipment, “detecting” and “obtaining” a state of the equipment as operation data, “calculating” temperature based on the data, “calculating” embrittlement using the information and formulas, “calculating” risk, and “presenting” a recommendation”, “obtaining” the embrittlement quantity as a function of parameters, “calculating” the saturated embrittlement quantity using mathematical equations/formulas, and calculating the constant (B) using back-calculation which is the judicial exception of a mental process because these limitations are merely data observations, evaluations, judgements and/or opinions in order to determine the” embrittlement of equipment” and make recommendations to reduce damage risk which is capable of being performed mentally and/or with the aid of pen and paper.
Additionally, the claims explicitly recite calculations and the use of formulas, e.g., see Spec. [0044], and therefore also fall well within the category of Mathematical Concepts (e.g. see MPEP 2106.04(a)(2)(I)(C): “A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.”).
Similarly, under Step 2A, prong 1, claim 5 is also found to include at least one judicial exception (i.e. abstract idea), that being a Mental Processes and/or Mathematical Concept. This can be seen in similar claim limitations as claim 1 which are merely data observations, evaluations, and/or judgements in order to calculate the “embrittlement of equipment” which is capable of being performed mentally and/or with the aid of pen and paper. Additionally, claim 5 also explicitly recites calculations and formulas/equations for making the calculations and therefore also falls within the category of Mathematical Concepts (e.g. see Spec. [0046]).
Claims 2-4, 6, 8, and 10-11 recite similar abstract ideas.
Step 2A, prong 2 of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.
In addition to the abstract ideas recited in claims 1 and 5, the claims recite additional elements including the use of “units” / “modules” (claim 2) of the “device” which are merely general purpose computer components recited at a high level of generality (see 112(f) interpretation above) and therefore merely amount to the use of a general-purpose computer as a tool to apply the abstract idea in a technological environment. See MPEP 2106.05(f): Mere Instructions To Apply An Exception.
The claims further recite additional elements including “… operation data obtaining unit for detecting and obtaining a state of the equipment …”, “an operation data storage unit for saving the operation data”, and “… recommended maintenance time presentation unit for presenting …” which are found to be high level data gathering and outputting steps that merely use computer technology as a tool to implement the abstract idea and/or are insignificant extra-solution activity. See MPEP 2106.05(g) – Insignificant Extra-solution Activity, and MPEP 2106.05(h): “For instance, a data gathering step that is limited to a particular data source (such as the Internet) or a particular type of data (such as power grid data or XML tags) could be considered to be both insignificant extra-solution activity and a field of use limitation.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed system, e.g. nothing is done with the recommended maintenance time which is output or the calculation of the saturated embrittlement quantity.
With respect to claim 5 and dependents specifically, it is noted that the claims do not recite any structure or additional elements. Therefore, the claims cannot integrate the recited abstract idea into a practical application or amount to significantly more under Step 2B. See MPEP 2106.04: “For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.”.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above with respect to Step 2A Prong 2, merely amount to a general-purpose computer system that attempts to apply the abstract idea in a technological environment (claims 1 and 5). Such insignificant extra-solution activity, e.g. sending and receiving data over the internet and storing and retrieving information in memory, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional as evidenced by the court decisions in MPEP 2106.05(d)(II).
Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that claim 1, as well as claim 5, amount to significantly more than the abstract idea.
With regards to the dependent claims, claims 2-4, 6, 8, and 10-11 merely provide further abstract steps or data characterization which are part of the abstract idea as described with respect to the parent claims and do not recite any further additional elements that would integrate into a practical application or amount to significantly more. Therefore, similar to independent claims 1 and 5, claims 2-4 and 6-12 are found to be directed to an abstract idea without significantly more.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHELBY A TURNER whose telephone number is (571)272-6334. (via email: Shelby.Turner1@uspto.gov “without a written authorization by applicant in place, the USPTO will not respond via internet e-mail to an Internet correspondence” MPEP 502.02 II). The examiner can normally be reached on M-F 10-6 ET.
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/SHELBY A TURNER/Supervisory Patent Examiner, Art Unit 2857
