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 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.
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 1-5 are directed to a material testing machine, which is considered to be a machine. Therefore claims 1-5 each fall into one of the four statutory categories of invention.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed to a material testing machine comprising “an estimation unit comprising a processor configured to estimate a response characteristic of the material testing machine,
wherein the estimation unit
obtains an actually measured transfer function of a tensile testing machine by system identification in an autoregressive moving average model with functions of testing force measurement value and testing force target value and Laplace transform, and calculates the response characteristic of the testing machine main body in a state in which a first set value used for a material test performed by the material testing machine is set as a control parameter specifying operation of the actuator based on the actually measured transfer function of the tensile testing machine and the first set value, and
estimates, based on the calculated response characteristic of the testing machine main body and a second set value different from the first set value, the response characteristic of the material testing machine in a state in which the second set value is set as the control parameter” which are considered to be mathematical concepts and mental processes. The disclosed invention, in at least paragraphs [0037]-[0058] of the instant disclosure, teach the estimating to be mathematical processes and give no indication that it is not performed on a general purpose computer. In addition, the obtaining could be carried out as purely mental processes or are equivalent to human work. Thus, these limitations recite concepts that fall into the “mathematical concept” group and the “mental process” group of abstract ideas.
With respect to Step 2A Prong 2, claim 1 further recites the additional elements “a testing machine main body having an actuator” and “a processor,” the structure of the estimation unit. The additional elements of the testing machine main body, the actuator, and the processor are recited at such a high level of generality that it appears to represent no more than mere instructions to apply judicial exceptions in a particular field of use. The additional element of the testing machine main body and the actuator are considered to represent mere data gathering that is necessary for use of the recited judicial exception and are recited at a high level of generality. The testing machine main body and the actuator limitations in the claim is thus insignificant extra-solution activity. The processor is recited at such a high level of generality that they represent no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application. Therefore, the claim as a whole is not considered to integrate the recited judicial exception into a practical application of the exception.
With respect to Step 2B, the additional elements of “a testing machine main body having an actuator” and “a processor”, the structure of the estimation unit, do not provide an inventive concept. The additional elements of the testing machine main body, the actuator, and the processor are recited at such a high level of generality that it appears to represent no more than mere instructions to apply judicial exceptions in a particular field of use. The additional elements of the testing machine main body and the actuator are considered to represent mere data gathering (collecting data) that is necessary for use of the recited judicial exception (the data is used in the using limitations’ mathematical concept) and is recited at a high level of generality. The testing machine main body and the actuator limitations in the claim is thus insignificant extra-solution activity. The processor is recited at such a high level of generality that they represent no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. These limitations therefore remain insignificant extra-solution activity even upon reconsideration. Thus, these limitations do not amount to significantly more than the above indicated abstract ideas. Even when viewed in combination, these additional elements represent merely generally linking the use of the judicial exception to a particular technological environment or field of use and extra-solution activity, which do not provide an inventive concept. Therefore, claim 1 is not eligible.
Claim 2 recites the further additional element of “wherein the processor is configured to display the response characteristic of the material testing machine, which is estimated by the estimation unit”. The additional element of the displaying is recited at such a high level of generality that it represents no more than mere instructions to apply the judicial exceptions in a particular field of use. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer system. The displaying represents extrasolution activity because it is a mere nominal or tangential addition to the claim and post solution activity. See MPEP 2106.05(g). Therefore, even when viewed in combination, these additional elements do not integrate the judicial exception into a practical application or provide an inventive concept.
Claim 3 merely extends the abstract idea identified above for claim 1 and do not add any further additional elements. Therefore, the claims are considered to be directed to the abstract idea analogously to claim 1 above.
Claim 4 recites the further additional “wherein the processor is configured to measure the response characteristic of the material testing machine in a state in which the first set value is set as the control parameter,
wherein the processor is configured to display the response characteristic of the material testing machine, which is estimated by the estimation unit, and the response characteristic of the material testing machine, which is measured by the processor, in a superimposing manner”. The additional element of the measuring is considered to represent mere data gathering that is necessary for use of the recited judicial exception and are recited at a high level of generality. The additional element of the displaying is recited at such a high level of generality that it represents no more than mere instructions to apply the judicial exceptions in a particular field of use. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer system. The displaying represents extrasolution activity because it is a mere nominal or tangential addition to the claim and post solution activity. See MPEP 2106.05(g). Therefore, even when viewed in combination, these additional elements do not integrate the judicial exception into a practical application or provide an inventive concept.
Claim 5 recites the further additional element of “wherein the processor is configured to measure the response characteristic of the material testing machine in a state in which the second set value is set as the control parameter,
wherein the processor is configured to display the response characteristic of the material testing machine, which is estimated by the estimation unit, and the response characteristic of the material testing machine, which is measured by the processor, in a superimposing manner”. The additional element of the measuring is considered to represent mere data gathering that is necessary for use of the recited judicial exception and are recited at a high level of generality. The additional element of the displaying is recited at such a high level of generality that it represents no more than mere instructions to apply the judicial exceptions in a particular field of use. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer system. The displaying represents extrasolution activity because it is a mere nominal or tangential addition to the claim and post solution activity. See MPEP 2106.05(g). Therefore, even when viewed in combination, these additional elements do not integrate the judicial exception into a practical application or provide an inventive concept.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
With respect to the arguments, on pages 5-9, on the claim interpretation presented in the last Office Action, it is considered that the claims no longer invoke 112(f).
With respect to the arguments, on page 11, regarding the 101 rejection, it is considered that the steps which are performed, while complicated, are disclosed to be mathematical processes, in at least paragraphs [0037]-[0058] of the instant disclosure, and give no indication that it is not performed on a general purpose computer. In addition, the obtaining could be carried out as purely mental processes or are equivalent to human work. Thus, these limitations recite concepts that fall into the “mathematical concept” group and the “mental process” group of abstract ideas. Therefore, the 101 rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 JENNIFER E S BAHLS whose telephone number is (571)270-7807. The examiner can normally be reached Monday-Friday, 9:00 am-3:30 pm.
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/JENNIFER BAHLS/Primary Examiner, Art Unit 2853