DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The Response to Election/Restriction filed 08/03/2026 has been received and considered. Claims 1-4 are pending. Claims 2 and 4 are withdrawn from further consideration. Claims 1 and 3 are presented for examination.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1 and 3, drawn to frequency response analysis of giving a certain excitation condition ([0030]… when an excitation condition inputting a stationary sine wave load).
Group II, claim(s) 2 and 4, drawn to characteristic value analysis ([0071]… without requiring the excitation condition (input loads)).
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of the independent claims: an optimization analysis model generation step of generating an optimization analysis model in which joining candidates to be candidates for joining the parts assemblies together are set in the automotive body model; an optimization analysis condition setting step of setting an optimization analysis condition for performing optimization analysis of the joining candidates in the generated optimization analysis model; and an optimization analysis step of giving the load condition determined at the load condition determination step to the optimization analysis model having set the optimization analysis condition to perform optimization analysis and obtaining the joining candidates satisfying the optimization analysis condition as optimized joining points or optimized joining portions joining the parts assemblies together, wherein in the optimization analysis step, inertia force acting during traveling of the automobile is taken into account by an inertia relief method in the optimization analysis. This technical feature is not a special technical feature as it does not make a contribution over the prior art in view of any of the following:
International Pub. No. JPH0883303, (see [0018],[0030]),
or International Pub. No. JP2014149734, (see page 4, 12th paragraph; page 3, 7th paragraph),
see also Allowable Subject Matter cited prior art below,
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
Office personnel are to give claims their "broadest reasonable interpretation" in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim are not read into the claim. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541,550-551(CCPA 1969). See *also In re Zletz, 893 F.2d 319,321-22, 13 USPQ2d 1320, 1322(Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow").... The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.
Claims recite "and/or". The claims reciting "and/or" were interpreted as “or”.
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 frequency response analysis unit configured to, a load condition determination unit configured to, an optimization analysis model generation unit configured to, an optimization analysis condition setting unit configured to, and an optimization analysis unit configured to in claim 3.
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.
As to the previously identified means for limitations, a corresponding structure in the specification reads:
"[0022] As illustrated in FIG. 1, an optimization analysis device 1 according to the present embodiment includes a personal computer (PC) or the like and has a display device 3, an input device 5, a memory storage 7, a working data memory 9, and a processor"
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 1 and 3 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 applicant regards as the invention.
Claim 1 recites the limitation "the parts assemblies" in line(s) 6. There is insufficient antecedent basis for this limitation in the claim. There is only one "parts assembly" anteceding this limitation.
As to claim 3, the same deficiency applies.
Appropriate correction or clarification is required.
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 and 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 1, Step 1: a method (process = 2019 PEG Step 1 = yes)
Independent claim 1, Step 2A, Prong One: claim recites:
a frequency response analysis step of giving a certain excitation condition to the automotive body model to perform frequency response analysis and obtaining a vibration mode occurring in the automotive body model and a deformation form in the vibration mode;
a load condition determination step of setting in advance how the automotive body model is deformed when various load conditions are given, selecting a load condition corresponding to the deformation form in the vibration mode determined in the frequency response analysis step out of the various load conditions, and determining the selected load condition as a load condition to be given to the automotive body model…
an optimization analysis condition setting step of setting an optimization analysis condition for performing optimization analysis of the joining candidates in the generated optimization analysis model
These limitations are substantially drawn to mental concepts: observation, evaluation, judgment, opinion; but for the recitation of generic computer components. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1 (Electric Power hereinafter): “Information… is an intangible”.
As to the limitations “a frequency response analysis step of giving a certain excitation condition to the automotive body model to perform frequency response analysis and obtaining a vibration mode occurring in the automotive body model and a deformation form in the vibration mode", as drafted and under a broadest reasonable interpretation, they are mental concepts. They can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments, opinions), that can be performed in the human mind or by a human using a pen and paper. See for example in the Specification (underline emphasis added):
‘[0030] The frequency response analysis is an analytical method to, when an excitation condition inputting a stationary sine wave load is given to a structure, obtain a vibration mode representing the displacement or the like of the structure and a deformation form in the vibration mode’
As to the limitations “a load condition determination step of setting in advance how the automotive body model is deformed when various load conditions are given, selecting a load condition corresponding to the deformation form in the vibration mode determined in the frequency response analysis step out of the various load conditions, and determining the selected load condition as a load condition to be given to the automotive body model", as drafted and under a broadest reasonable interpretation, they are mental concepts. Setting activities can be characterized as entailing a user deciding on information that can be performed in the human mind or by a human using a pen and paper (mental processes including a judgment or opinion). Load condition selections and determinations can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments, opinions), that can be performed in the human mind or by a human using a pen and paper. See for example in the Specification (underline emphasis added):
'[0033] (Load Condition Determination Unit) The load condition determination unit 15 determines a load condition (position, direction, and magnitude in which a load is applied) to be given to the automotive body model 31 corresponding to the deformation form in the vibration mode obtained by the frequency response analysis unit…
[0038]… FIG. 5(b) is a contour diagram of the sum of displacement having occurred in the automotive body model 31 by applying the load condition (a value obtained by taking the square root of the square of displacement in each direction of an automotive body front-and-rear direction, the automotive body width direction, and the automotive body up-and-down direction)…
[0041] Thus, by setting in advance how the automotive body model 31, when each of the load conditions illustrated in FIG. 4 is given, is deformed, the load condition determination unit 15 can select the load condition to be given to the automotive body model 31 corresponding to the deformation form in the vibration mode determined by the frequency response analysis unit 13 out of these load conditions’
As to the limitations “an optimization analysis condition setting step of setting an optimization analysis condition for performing optimization analysis of the joining candidates in the generated optimization analysis model", as drafted and under a broadest reasonable interpretation, they are mental concepts. These activities can be characterized as entailing a user deciding on information that can be performed in the human mind or by a human using a pen and paper (mental processes including a judgment or opinion). See for example in the Specification (underline emphasis added):
[0048] Two types of the optimization analysis condition, or objectives and constraints, are set. The objectives are the optimization analysis condition set in accordance with the object of the optimization analysis
If a claim limitation, under its broadest reasonable interpretation, covers abstract ideas, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Independent claim 1, Step 2A, Prong Two: The claim recites the additional element computer, which provides conventional computer implementation.
As to the limitations "an optimization analysis… for joining locations of an automotive body… causing a computer to perform, for an automotive body model of an automobile having a plurality of parts including a two-dimensional element and/or a three-dimensional element and having joining points or joining portions joining the parts together as a parts assembly… to obtain optimized locations of point joining or continuous joining for use in joining the parts assemblies together", “an optimization analysis model generation step of generating an optimization analysis model in which joining candidates to be candidates for joining the parts assemblies together are set in the automotive body model", and "an optimization analysis step of giving the load condition determined at the load condition determination step to the optimization analysis model having set the optimization analysis condition to perform optimization analysis and obtaining the joining candidates satisfying the optimization analysis condition as optimized joining points or optimized joining portions joining the parts assemblies together, wherein in the optimization analysis step, inertia force acting during traveling of the automobile is taken into account by an inertia relief method in the optimization analysis”, they appear to be just “apply it” limitations, because the limitations invoke computers or other machinery merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 1, Step 2B: As discussed with respect to Step 2A, Prong two, the claim recites the additional element computer at a high level of generality and as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of a computer to implement the abstract idea of a mathematical algorithm has not been held by the courts to be enough to qualify as “significantly more”. The conventional computer implementation is described in the specification (underline emphasis added):
"[0022] As illustrated in FIG. 1, an optimization analysis device 1 according to the present embodiment includes a personal computer (PC) or the like and has a display device 3, an input device 5, a memory storage 7, a working data memory 9, and a processor".
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations – simply adding a general purpose computer or computer components after the fact to an abstract idea. See MPEP 2106.05(f)(2). As to the limitations "an optimization analysis step of giving the load condition determined at the load condition determination step to the optimization analysis model having set the optimization analysis condition to perform optimization analysis and obtaining the joining candidates satisfying the optimization analysis condition as optimized joining points or optimized joining portions joining the parts assemblies together, wherein in the optimization analysis step, inertia force acting during traveling of the automobile is taken into account by an inertia relief method in the optimization analysis”, see for example in the Specification (underline emphasis added):
'[0054] The optimization analysis unit 21 may perform optimization processing by the topology optimization or perform the optimization processing by other methods of calculation. As the optimization analysis unit 21, commercially available optimization analysis software using the finite element method (FEM) can be used, for example'.
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Claim 3 recites substantially the same elements as claim 1 and is rejected for the same reasons above. Further, the additional elements of this claim are rejected below:
Independent claim 3, Step 2A, Prong Two and Step 2B: the claim recites the additional elements: an optimization analysis device and units configured to (see Claim Interpretation above). They are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. (See Independent claim 1, Step 2B above).
Allowable Subject Matter
Claims 1 and 3 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
The following is a statement of reasons for the indication of allowable subject matter:
While Takanobu Saito, U.S. Pre Grant publication 20200039592, discloses "[0152]… optimization analysis… in consideration of the inertia force that acts during the automobile driving, and selecting an additional welded point or an additional welded location that satisfies the optimization analysis conditions set… from the welding candidates",
and Takanobu Saito, U.S. Patent 12093612, discloses "optimization analysis unit 25 gives, as a load condition, the load acquired by the maximum displacement and load acquisition unit 15 to the optimization analysis model… performs optimization analysis by using the optimization block model as an optimization target in consideration of an inertial force that occurs at a part of the automotive body due to excitation, and acquires an optimal shape of the optimization block model" (see col. 9, line 64 to col. 10, line 5),
No reference cited taken either alone or in combination and with the prior art of record discloses
claims 1 and 3, "… excitation condition to the automotive body model to perform frequency response analysis and obtaining a vibration mode… and a deformation form in the vibration mode… setting in advance how the automotive body model is deformed when various load conditions are given, selecting a load condition corresponding to the deformation form in the vibration mode… determining the selected load condition as a load condition to be given to the automotive body model…",
in combination with the remaining steps, elements, and features of the claimed invention. Also, there is no motivation to combine any references to meet these limitations. It is for these reasons that Applicant's invention defines over the prior art of record.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Regarding the Election/Restrictions, Applicant affirms election with traverse to prosecute Group I. Applicant argues, (see page 8, 1st paragraph to page 11, 1st paragraph):
‘… the load conditions in the present application's claims as amended are determined by pre-setting the deformation patterns of the aforementioned automotive body model under various load conditions, selecting from among these load conditions the one corresponding to the deformation pattern of the vibration mode obtained in the aforementioned eigenvalue analysis step, and determining it as the load condition to be applied to the aforementioned automotive body model…
The method of determining load conditions in the claims as amended is based on the observation that loads acting on an automotive body during driving, other than inertial forces, can be classified into various load conditions generally provided in automotive body rigidity analysis and the like…’
Examiner's response: Applicant's argument is not persuasive, because groups I-II still lack unity of invention (see Election/Restrictions above). The requirement is still deemed proper and is therefore made FINAL.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN CARLOS OCHOA whose telephone number is (571)272-2625. The examiner can normally be reached Mondays, Tuesdays, Thursdays, and Fridays 9:30AM - 8:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Chavez can be reached at 571-270-1104. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
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