DETAILED ACTION
Claims 1-6 are pending.
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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to Japanese Patent Application No. 2020-092572, filed on 5/27/2020.
Response to Arguments
Applicant’s arguments, filed 2/26/26, have been fully considered but are not persuasive, except where noted below.
Applicant’s argument regarding the rejection under 35 U.S.C. § 112 (page 6) are not persuasive at least because the claim amendments introduce the new grounds of rejection detailed below.
Applicant argues, regarding the rejection under 35 U.S.C. § 101, that ‘By providing the above-noted features recited in claim 1, it is possible to provide test data for various instruments for testing applications by executing normal and abnormal system programs on various instruments such as robots, control devices, and sensors, storing normal and abnormal system time-series data output from the instruments as test data, editing the test data based on a request from an external device (e.g., a computer), converting the requested test data to at least the OPC UA or MTConnect protocol, and transmitting the converted test data to the external device. The above features constitute additional elements that have characteristics that are significantly more than the judicial exception… the combination of features recited in claim 1 impose meaningful limitations in that the features noted above are utilized to improve the checking or debugging of a function of a developing application’ (pages 6-7).
It is respectfully submitted that no evidence or reasoned argument is provided as to why the recited features are significantly more, other than that they are utilized to ‘improve the checking or debugging of a function of a developing application’. However, an improved method for combining and editing data and then using those data to check or debug an application/program is merely an improvement to an abstract idea and eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) as cited in MPEP 2106.04, i.e. an improvement to the abstract idea itself (combining and editing data and then using those data to check or debug an application/program) is still merely an abstract idea. It is also noted that based on the specification, e.g. Figs. 6-7 and 10 and the related text, the user merely edits data with the aid of a generic computer to produce the test data and this is therefore not considered a significant improvement in technology, see the detailed rejection below under 35 U.S.C. § 101. Applicant’s argument is therefore not persuasive.
Applicant’ arguments regarding the other claims (page 7) are moot given that the above argument is not persuasive and that claim 1 continues to be rejected.
Applicant’s arguments regarding 35 U.S.C. § 103 (pages 7-10) are moot because the claims are no longer rejected under that statute.
For at least these reasons, the rejection of the claims is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claim(s) 1-6 is/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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to claim 1, this claim recites ‘convert, based on the controlled transmission, the requested test data into a protocol’. This constitutes new matter because it is not described in the application as originally filed. Paragraph [0034] only supports the concept of converting ‘based on transmission control’.
Independent claims 2, 4 and 5 recite similar language to claim 1 and are rejected based on the same rationale.
The respective dependent claims are also rejected under 35 U.S.C. § 112 as they inherit all of the characteristics of the claim from which they depend.
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.
Claim(s) 1-6 is/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 pre-AIA the applicant regards as the invention.
With regard to claim 1, this claim recites ‘the controlled transmission’ for which there is no antecedent basis.
With regard to claim 2, this claim recites ‘the controlled transmission’ for which there is no antecedent basis.
With regard to claim 4, this claim recites ‘the controlled transmission’ for which there is no antecedent basis.
With regard to claim 5, this claim recites ‘the controlled transmission’ for which there is no antecedent basis.
The respective dependent claims are also rejected under 35 U.S.C. § 112 as they inherit all of the characteristics of the claim from which they depend and none of the dependent claims provide a cure for the indefiniteness of the parent claims.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to the abstract idea (mental process) of combining and editing data and then using those data to check or debug an application/program.
Claim 1 recites a data management device, i.e. a machine, which is a statutory category of invention. The claim recites:
when an external device requests test data of the instrument that combines two or more of the plurality of operations, combine the test data of the two or more operations… , edit the combined data as the requested test data; wherein the external device checks or debugs a function of a developing application with the test data transmitted from the data management device that may be performed in the human mind, or by a human using a pen and paper with the aid of generic computer technology. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. a memory configured to store a program; and a processor configured to execute the program and control the data management device (applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), input data on each of a plurality of operations output, according to execution of normal and abnormal system programs, from at least any of the following instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), store, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquire, from the memory, the requested test data and control transmission of the requested test data to the external device; and convert, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmit the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
Note that at least any of a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer is well-understood, routine and conventional, see for example Akamatsu et al. U.S. Patent Publication No. 20010037888 [0031], Okumura U.S. Patent Publication No. 20070077329 [0008-0011], Jeong et al. U.S. Patent Publication No. 20130060383 [0008-0012] or Sullivan et al. U.S. Patent Publication No. 20050095087 [0005]. In addition operating machines simultaneously is well-understood, routine and conventional, see for example Deplano U.S. Patent No. 5150451 [col. 1] or Nicholson U.S. Patent No. 6701204 [col. 3]. Further note that OPC UA and MTConnect protocols are well-understood, routine and conventional, see Kettemer U.S. Patent Publication No. 20200057430 [particularly 0024], Kubat et al. U.S. Patent Publication No. 20180203437 [0011, 0019, 0082] and Park et al. U.S. Patent Publication No. 20190095517 [0136].
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, a memory configured to store a program; and a processor configured to execute the program and control the data management device (applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), input data on each of a plurality of operations output, according to execution of normal and abnormal system programs, from at least any of the following instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), store, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquire, from the memory, the requested test data and control transmission of the requested test data to the external device; and convert, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmit the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea and are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 2 recites a data management device, i.e. a machine, which is a statutory category of invention. The claim recites:
when an external device requests test data in a case where the plurality of instruments operate simultaneously, combine the test data of the plurality of instruments stored in the memory, edit the combined data as the requested test data; wherein the external device checks or debugs a function of a developing application with the test data transmitted from the data management device that may be performed in the human mind, or by a human using a pen and paper with the aid of generic computer technology. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. a memory configured to store a program; and a processor configured to execute the program and control the data management device (applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), input data output, according to execution of normal and abnormal system programs, from each of a plurality of instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), store, as test data of each of the plurality of instruments, the input data of each of the plurality of instruments in the memory; and store the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquire, from the memory, the requested test data and control transmission of the requested test data to the external device; and convert, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmit the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, a memory configured to store a program; and a processor configured to execute the program and control the data management device (applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), input data output, according to execution of normal and abnormal system programs, from each of a plurality of instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), store, as test data of each of the plurality of instruments, the input data of each of the plurality of instruments in the memory; and store the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquire, from the memory, the requested test data and control transmission of the requested test data to the external device; and convert, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmit the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea and are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 3 recites ‘the processor controls the transmission of the requested test data based on a transmission interval or a transmission time point as requested from the external device’ (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network). Thus this claim recites an abstract idea.
Claim 4 recites a data management method, i.e. a process, which is a statutory category of invention. The claim recites:
when an external device requests test data of the instrument that combines two or more of the plurality of operations, combining the test data of the two or more operations stored… editing the combined data as the requested test data; and wherein the external device checks or debugs a function of a developing application with the test data transmitted from the data management device that may be performed in the human mind, or by a human using a pen and paper with the aid of generic computer technology. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. inputting data on each of a plurality of operations output, according to execution of normal and abnormal system programs from instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), storing, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in a memory;… and storing the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquiring, from the memory, the requested test data and controlling transmission of the requested test data to the external device; and converting, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmitting the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, inputting data on each of a plurality of operations output, according to execution of normal and abnormal system programs from instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), storing, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in a memory;… and storing the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquiring, from the memory, the requested test data and controlling transmission of the requested test data to the external device; and converting, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmitting the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea and are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 5 recites a data management method, i.e. a process, which is a statutory category of invention. The claim recites:
when an external device requests test data in a case where the plurality of instruments operate simultaneously, combining the test data of the plurality of instruments stored in the memory, editing the combined data as the requested test data; wherein the external device checks or debugs a function of a developing application with the test data transmitted from the data management device that may be performed in the human mind, or by a human using a pen and paper with the aid of generic computer technology. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. inputting data on each of a plurality of operations output, according to execution of normal and abnormal system programs from instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), storing, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in a memory;… and storing the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquiring, from the memory, the requested test data and controlling transmission of the requested test data to the external device; and converting, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmitting the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, inputting data on each of a plurality of operations output, according to execution of normal and abnormal system programs from instruments (insignificant extra-solution elements – mere data gathering using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)), a machine tool, an injection molding machine, an industrial machine including an industrial robot, a sensor disposed in the industrial machine, a control device that controls the industrial machine, and peripheral equipment including a carrier or a conveyer (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), storing, as test data corresponding to execution of each of the plurality of operations by the instrument, the input data on each of the plurality of operations in a memory;… and storing the requested test data in the memory (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), and acquiring, from the memory, the requested test data and controlling transmission of the requested test data to the external device; and converting, based on the controlled transmission, the requested test data into a protocol with which the instrument complies, and transmitting the converted test data to the external device, wherein the protocol is at least OPC UA or MTConnect (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network) does not impose any meaningful limits on practicing the abstract idea and are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 6 recites ‘the transmission of the requested test data is controlled based on a transmission interval or a transmission time point as requested from the external device’ (insignificant extra-solution activity, using generic computer technology to communicate data, see MPEP 2106.05(d) II and MPEP 2106.05(g) e.g. receiving or transmitting data over a network). Thus this claim recites an abstract idea.
Note that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
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 BERNARD G. LINDSAY whose telephone number is (571)270-0665. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mohammad Ali can be reached on (571)272-4105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNARD G LINDSAY/
Primary Examiner, Art Unit 2119