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 Amendment
This Final Office Action is in response to Applicant’s Remarks/Amendments filed on 22 September, 2025. The amendments have been entered.
Disposition of Claims
Claims 17-35 are pending.
Claims 1-16 and 36-37 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-35 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.
Claims 17, 18, 34, and 35 have been amended to recite, “adjusting operation of the industrial process plant based on the value for the variable characterizing the fouling” or “adjust operation of the industrial process plant based on the value for the variable characterizing the fouling”, which is considered new matter. Applicant cites paragraphs [0051], [0229], [0231], and [0241] of the associated U.S. Pre-Grant Pub. No. 2023/0122608 to allege written description support the amendments. Paragraphs [0051], [0229], [0231], and [0241] of the associated U.S. Pre-Grant Pub. No. 2023/0122608 recite the following:
“ [0051] This method is particularly suitable for operation of the heat exchanger with operating phases, in which the flow is in each case piecewise constant and then changes abruptly. For example, this corresponds to the relatively common case in which the flow of the product medium is regulated, where the target values for this are predetermined as constant. A constant change in flow can only be processed in a piecewise manner. However, a continuous adjustment could then occur via an interpolation between the piecewise changes. It is advantageous that changes in the medium after cleaning have no effect on the result and nor is any learning data required.”
“ [0229] The inventive embodiments of the method can be provided as a standalone application in a processing system or can be integrated into a process control system of a processing system. It can also be provided in a local or remote computer system (“Cloud”), for example by a service provider as “Software as a Service”.”
“ [0231] To this end, the evaluation device 30 comprises a processor unit 31 , a memory 32 for storing the received measured data, and a memory 33 in which a program 34 containing instructions is stored, which when executed via the processor unit 31 executes the method in accordance with the disclosed embodiments. The processor unit 31 stores the measured values M received by the device 20 in the memory 32 .”
“ [0241] Thanks to virtually realtime detection of the measured values and calculation of the fouling resistance a continuous running data-based fouling analysis and monitoring of the fouling can take place, accompanying the operation of the plant or of the heat exchanger. However, an offline fouling analysis with a time offset to the real operation of the plant is also possible. ”
, wherein the above cited paragraphs fail to provide any evidence of written description support to the limitations of “adjusting operation of the industrial process plant based on the value for the variable characterizing the fouling” or “adjust operation of the industrial process plant based on the value for the variable characterizing the fouling”. The originally-filed specification is merely directed to the manner of determining fouling of the heat exchanger, which is accomplished concurrently with operation of the plant or heat exchanger (par. 241 which states, “analysis and monitoring of the fouling can take place, accompanying the operation of the plant or of the heat exchanger”, but the analysis and monitoring does not cause adjustment to the plant or to the heat exchanger and/or any other steps which would cause the invention to do something with the patent ineligible subject matter). However, the plant and/or heat exchanger is not adjusted based on the fouling determination, as disclosed and claimed. For this, the originally-filed specification does not support the claim amendments with sufficient written description, so as to reasonably apprise one having ordinary skill within the art that the inventor or joint inventor had possession of the claimed invention at the time it was effectively filed.
Claims 19, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, and 33 depend from rejected claim 17, and thereby, are further rejected under 35 U.S.C. 112(a).
Claim 20 depends from rejected claim 18, and thereby, is further rejected under 35 U.S.C. 112(a).
Response to Arguments
Applicant’s arguments with respect to claim(s) 17-35 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Particularly, Applicant has overcome the previous rejections made under 35 U.S.C. 101 (see Non-Final Office Action mailed on 22 April, 2025 at pages 9-29, in view of Applicant’s amendments to independent claims 17, 18, 34, and 35 to include the action of adjusting/adjust “operation of the industrial process plant based on the value for the variable characterizing the fouling”) and 35 U.S.C. 112(b) (see Non-Final Office Action mailed on 22 April, 2025 at pages 7-9, in view of Applicant’s amendments to claim 18 and claims 34-35), in addition to no longer invoking interpretation under 35 U.S.C. 112(f) (see Non-Final Office Action mailed on 22 April, 2025 at pages 4-6, in view of Applicant amendments to claims 34-35 to remove the language of “receiving device”). More specifically, Applicant alleges the inclusion of “operating the industrial plant and compensating, at least in part by the second variable, for a change in the first variable caused by a change in a flow of at least one of (i) the first medium and (ii) the second medium through the heat exchanger at lest during transfer of the heat from the first medium to the second medium and adjusting operation of the industrial process plant based on the value for the variable characterizing the fouling” provides significantly more than a mere abstract idea by providing an improvement to the technology or technical field.
First, it will be noted, “operating the industrial plan and compensating” is not significantly more, as it merely provides, in the total context of the broadest reasonable interpretation of the claims, merely when the method occurs (claims 17 and 18) and “compensating” is not an additive action to doing anything more with the method or device other than performing calculations (see pages 7, 8, 10-11, 13, 16-17, and 25 of the originally-filed specification, wherein “compensation” of the first variable by the second variable is carried out through mere calculations).
Second, while the action of adjusting/adjust “operation of the industrial process plant based on the value for the variable characterizing the fouling” is an additive step to the method and device that would provide significantly more than just the abstract idea, the recitation of such is new matter not disclosed by the originally filed specification at the time the invention was effectively filed. See discussion provided under Section “Claim Rejections - 35 USC § 112” within this office action. In view of such, the amendment overcomes the previous rejections under 35 U.S.C. 101. All the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984). See MPEP 2143.03 – II. However, should the claim language be removed to overcome the new matter rejection, independent claims 17, 18, 34, and 35, and the dependents thereof, would necessitate the same and/or similar rejection under 35 U.S.C. 101 previously presented, as the claims would be merely directed to the abstract idea.
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.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 10/9/2025
JENNA M. MARONEY
Primary Examiner
Art Unit 3763
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