DETAILED ACTION
This action is in response to the amendments filed on Nov. 21st, 2022. A summary of this action:
Claims 1-8 have been presented for examination.
Claims 1-8 are objected to because of informalities
Claims 1-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite
Claim 5-8 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
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of both a mathematical concept and mental process without significantly more.
Claims 1-8 are not rejected under § 102/103. The closest prior art of record is the numerous citations below (see the evidence particularly cited below), no but combination of prior art of record fairly teaches the particular ordered combination presently recited, including its combination limiting it to “automotive”, the first fixed area/joint being chosen based on a dynamic/static analysis, and another joining location to be optimized after the first four locations are “fixed”.
This action is non-final
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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
The claims are needlessly wordy, i.e. they are not as concise as they could be under § 112(b). Below is a non-exhaustive list of suggestions to improve the conciseness and clarity of these claims:
The Examiner suggests amending the claims to remove the step labels, e.g. “joining candidate setting process”, and instead just recite the step, e.g. “A computer-implemented method [for intended use] comprising: setting a joining candidate at a position that is a candidate for joining the parts assembly;…selecting…setting…performing…”
Furthermore, the Examiner suggests keeping narrowing limitations together with the limitation they narrow. MPEP § 608.01(m): “Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). There may be plural indentations to further segregate subcombinations or related steps. In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.” – e.g. in claim 1, “wherein the fixed joining selection process includes:” and lists sub-steps of the step of “selecting four or more…”. A more concise format would be: “selecting four or more…wherein the selecting comprises…performing a static analysis…[and the rest of sub-steps]; …setting…performing an optimization analysis”
To further clarify on a lack of conciseness: “setting a joining candidate at a position that is a candidate for joining the parts assembly;” is readily made more concise and clearer as: “setting a joining candidate at a candidate position for joining the parts assembly;” in view of ¶ 74; in the next limitation “to be necessarily joined” can simply omit the “necessarily” as the claim requires them “to be …joined”
The pre-amble’s intended use is quite verbose – the Examiner suggests shortening it, and introducing those elements in the body of the claim itself (note the antecedents, “the parts assembly”, etc., wherein the preamble contains two recitations of “a parts assembly” instead of one)
Claims recite relative terms, e.g. “farthest”, “largest”, etc. but do no consistent make clear expressly what it is farthest/largest out of. E.g. claim 2: “a joining candidate having a largest strain energy”
The claims have numerous issues with antecedent basis. The Examiner suggests amending the claims such that the first recitation of each distinct element uses articles such as “a”/”an”, later recitations referring back to the same distinct element uses articles such as “the”/”said”, to use disambiguating modifiers (e.g., first, second, etc.) when there are multiple distinct elements with the same base term, and that the use of modifiers for each distinct element is kept consistent. Below is a non-exhaustive list of examples of these issues:
Preamble, as noted above
“the joining candidates set” is not previously recited
“a joining optimization analysis process…the optimization analysis…an optimization analysis…” – replete with antecedent basis issues
“the joining candidates are set” – but only a singular prior recitation of “joining candidate”, and a separate recitation of “the joining candidates set”
“a joining candidate” is repeated a plurality of times
“first fixed joining point or fixed joining area” and similar such recitations – the modifier of “first” should be expressly used twice, i.e. “first fixed joining point or first fixed joining area”
Preambles of dependent claims do not have antecedent basis back to the prior recitations in the preamble of the independent claims
Claim 2 – “a joining candidate” is again repeated
Same in claim 3
Claim 4: “the distance” but this was not previously recited
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-8 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. Dependent claims inherit the deficiencies of the claims they depend upon.
The independent claims (using 1 as representative) recite: “a parts assembly…the parts assembly…for each parts assembly…” at issue is that it changes from singular to plural for this element, but there is no prior plural recitations to refer back to, i.e. no prior recitation of “joining candidates set”.
The Examiner suggests consistency in claim elements for the form of the claim element.
The independent claims (using 1 as representative) recite: setting, in the automotive body model, the fixed joining point or the fixed joining area selected for each parts assembly without being a target of the optimization analysis and an optimal joining candidate to be a target of the optimization analysis
At issue is that there is no prior recitation of these elements, but there is a prior recitation of a singular “joining point or joining area” in the preamble, and a prior recitation of a plural “four or more fixed joining point or fixed joining areas”, rendering the claim indefinite as to what this is referring back to due to insufficient antecedent basis. The Examiner suggests the claim uses more clear disambiguating modifiers, e.g. first/second/third, and be consistent in the use of modifiers with the same element. To further clarify, another issue is that the four fixed joining points/areas are not expressly required to include the first/second/third/fourth singular points later recited, i.e. there are four singular elements in the claim that this may be referring note (note the later recited selection steps are, by antecedent basis, actually part of the selection process before the optimization).
As a point of clarity, the BRI of the ordered combination is in view of fig. 3 and its accompanying description for specifying the four fixed points, then fig. 4 wherein after this is performed an optimization step is performed after the fixing, wherein this is optimizing a point that is not one of the four fixed points (¶ 88). The Examiner suggests amending the claims to expressly and clearly reflect what is disclosed. See ¶ 93 to further clarify on what is excluded in this step.
MPEP § 2173.05(b)(IV): “A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005));”
Independent claims recite terms such as “optimized”, “optimal”, and the like – these are subjective term that renders the claim indefinite because there is no standard provided in the instant disclosure (¶ 88) for POSITA to ascertain the scope of the present claims without relying on their own unrestrained, subjective opinion when practicing the invention. The Examiner suggests deleting subjective terminology.
Claims 4 and 8 are indefinite. They recite: “a center of the joining candidate is set as a representative point,” but the independents recite: “setting a joining candidate at a position that is a candidate for joining the parts assembly;” – at issue is that the independent claims require the joining candidate to be at a single position, i.e. a point (e.g. the points in fig. 9), as such its indefinite what the center of a position is except for the position itself.
The Examiner suggests amending to more expressly reflect ¶ 52
Claim Interpretation – 112(f)
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:
Claim 5, the various “unit” recitations, as modified by functional language. Also, the “device” of claim 5.
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.
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(b)
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 5-8 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. The dependent claims inherit the deficiencies of the claims they depend upon.
Claim 5, the various “unit” recitations, as modified by functional language. Also, the “device” of claim 5. These invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
¶ 36 conveys a processor includes these units, but particularly note that these units are not software executed by a processor. Insufficient structure is linked to these features.
The Examiner suggests amending the claim to remove such nonce term, and instead more clearly reflect that this is merely a series of steps to be performed by a computer with a processor and memory, wherein the processor is executing instructions to perform operations comprising: [the steps]. See ¶ 71.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 112(a)
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.
Claim 5-8 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. The dependent claims inherit the deficiencies of the claims they depend upon.
See the above § 112(f) invocation and corresponding § 112(b) rejection including the citations to the disclosure in the § 112(b) rejection. See MPEP §2181(IV): “When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a).” and MPEP 2181(II)(B): “When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a). See MPEP § 2163.03, subsection VI.”
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of both a mathematical concept and mental process without significantly more.
Step 1
Claim 1 is directed towards the statutory category of a process.
Claim 5 is directed towards the statutory category of an apparatus.
Claims 5, and the dependents thereof, are rejected under a similar rationale as representative claim 1, and the dependents thereof.
Step 2A – Prong 1
The claims recite an abstract idea of both a mental process and mathematical concept.
See MPEP § 2106.04: “...In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited. In these cases, examiners should not parse the claim. For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record.”
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility.
The mathematical concept recited in claim 1 is:
a first fixed joining selection step of performing a static analysis or a dynamic analysis on the automotive body model in which the joining candidates are set,
¶ 43: “The static analysis is to obtain displacement, a load, or the like generated in a structural body model when a loading condition under which a constant load acts on a for example, simple structural analysis (stiffness analysis or the like) for applying a loading condition for applying a 5 static load to the structural body model, or topology”
In view of MPEP § 2106.07: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter”, this is akin to the abstract idea of (En Banc) Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 966 F.3d 1347, 1348 (Fed. Cir. 2020), its directed to “Hooke’s Law”. Instant disclosure ¶ 2: “The static stiffness is improved when the spring constant is increased independently of the mass of the structural body according to Hooke's law.” To clarify, the instant specification, at multiple places, alleges the improvement lies in improving the “stiffness” of the vehicle, e.g. ¶ 128 – in American Axle, the limitations at issue: “tuning a mass and a stiffness of at least one liner,” namely, “controlling a mass and stiffness of at least one liner to configure the liner to match a relevant frequency or frequencies,” wherein this was a claim to a “driveline system” with a “shaft assembly” and the like.
To clarify, Hooke’s Law is Force = -k*x, wherein k is the spring constant, x is the displacement of the spring, and F is the force [a load]. The static analysis performance is merely the act of calculating, using Hooke’s Law, F= -kx, with F being set to the applied static load (static force), and obtain “displacement”.
The dynamic analysis is similarly a math calculation in textual for - ¶ 2: “For example, the dynamic stiffness in vibration 25 of a single-degree of freedom system is evaluated by a frequency co expressed by co = (K/M) o. 5 using a stiffness K (corresponding to stiffness matrix in case of vibration of multi-degree of freedom system)” and ¶ 47: “Meanwhile, the dynamic analysis is to obtain vibration characteristics when a periodic load acts on a structural body model,…”
See ¶¶ 44 and 48 to further clarify on the things “calculated” in these acts.
Also, ¶ 80: “On the other hand, in a case where the frequency response analysis is performed as the dynamic analysis, similarly to the simple structural analysis,”
Under the broadest reasonable interpretation, the claim recites a mathematical concept – the above limitations are steps in a mathematical concept such as mathematical relationships, mathematical formulas or equations, and mathematical calculations. If a claim, under its broadest reasonable interpretation, is directed towards a mathematical concept, then it falls within the Mathematical Concepts grouping of abstract ideas. In addition, as per MPEP § 2106.04(a)(2): “It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)”
See MPEP § 2106.04(a)(2).
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility.
The mental process recited in claim 1 is:
a joining candidate setting process of setting a joining candidate at a position that is a candidate for joining the parts assembly; - mental judgement/opinion, e.g. a person observing parts to be joined (e.g. in a mental visualization, drawings on paper, or observing the parts themselves sitting on a workbench) and judging places where they can be joined.
a fixed joining selection process of selecting four or more fixed joining points or fixed joining areas to be necessarily joined for each parts assembly from among the joining candidates set for each parts assembly; - similar mental process as above.
and a joining optimization analysis process of setting, in the automotive body model, the fixed joining point or the fixed joining area selected for each parts assembly without being a target of the optimization analysis and an optimal joining candidate to be a target of the optimization analysis, and performing an optimization analysis of obtaining an optimized joining point or joining area that joins the parts assembly in the automotive body model excluding the fixed joining point or the fixed joining area selected for each parts assembly, wherein the fixed joining selection process includes: - a mental process, but for the mere invocation of generic, commercially read software used in its ordinary capacity to do this step. To clarify, this is merely a person mentally judging/providing an opinion of which points/areas to join the parts in, wherein they mentally judge to use software as a tool to optimize one of the points, while not optimizing another point.
¶ 71: “Then, as the optimization analysis unit 19e, for example, optimization analysis software using a commercially available finite element method can be used.” And ¶ 98: “Then, the optimization processing in the optimization analysis step S7e can be performed using, 25 for example, optimization analysis software using a commercially available finite element method.”
a first fixed joining selection step of performing a static analysis or a dynamic analysis on the automotive body model in which the joining candidates are set, and selecting a first fixed joining point or fixed joining area from among the joining candidates for each parts assembly based on a result of the static analysis or the dynamic analysis, - a mental process, given the simplicity of the equations that may be used (e.g. Hooke’s law, the equation in ¶ 2), or with physical aids. The selection is merely a mental judgement/opinion based on observing the results of the mental evaluation of the math.
a second fixed joining selection step of selecting a joining candidate having a farthest distance from the first fixed joining point or fixed joining area as a second fixed joining point or fixed joining area in the parts assembly, a third fixed joining selection step of selecting a joining candidate having a farthest distance from a midpoint on a straight line connecting the first fixed joining point or fixed joining area and the second fixed joining point or fixed joining area as a third fixed joining point or fixed joining area, and a fourth fixed joining selection step of selecting a joining candidate having a farthest distance from the third fixed joining point or joining area among the joining candidates excluding the first fixed joining point or fixed joining area and the second fixed joining point or fixed joining area as a fourth fixed joining point or fixed joining area. – a series of mental steps, readily doable in a person’s head, or using pen and paper (e.g. graphing paper and a ruler as aids). This is merely selecting a few more points for joining, based on simple distance estimations, e.g. with a ruler, or purely by mental observation.
To clarify, this is merely the position of points in geometry, using simple mental geometry measures of distance. See fig. 8-9, as its merely judging where in geometry to place points.
To further clarify, the Examiner notes that such a multi-point selection in geometry is akin to the mental process of a mechanic who decided to follow a bolting procedure where it was in a star/criss-cross pattern, i.e. judge a first bolt to install, then go opposite of that bolt (farthest distance) to the bolt hole further away and apply that bolt. Then, to keep the criss-cross going, go to the center of a line between these two points, and go furthest away from that, etc. To clarify, a simple visualization of such a mental judgement of points/bolt holes:
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Wherein, after the positions are first selected and fixed by using a star/criss-cross pattern, the next step is merely using generic software to optimize the location of the next bolt (or the mechanic may simply mentally pick one, e.g. by observing some visible deformation, so applying the bolt to reduce the deformation at the nearest hole).
Such a mental process is a long-standing one, codified into various industry standards as well, e.g. Hamel, Scott, and David Hoisington. High-mast light poles anchor nut loosening in Alaska: an investigation of field monitoring and finite-element analysis. No. INE/AUTC 14.13. Alaska. Dept. of Transportation and Public Facilities, 2014. § 4.4.2: “The anchor rods at Peter’s Creek were tightened in a similar manner to those at the Weighstation. Turn-of-the-nut method was again utilized, along with a 24-bolt star pattern, shown in Figure 4.12” and see the figure:
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E.g. Jung, Gong H., Wesley Pudwill, and Elysia J. Sheu. "Study of Alternative Assembly Patterns Using Finite Element Analysis and Lab Tests." Pressure Vessels and Piping Conference. Vol. 51616. American Society of Mechanical Engineers, 2018. Page 2: “The legacy assembly method defined in ASME PCC-1 uses a combination of star and circular patterns as shown in Fig. 3 [3]. It has been well-recognized and used in various industries to minimize bolt cross talk. Alternatives to the legacy pattern have also been studied in an effort to reduce bolted joint assembly time and provide more reliable and repeatable bolt loads [6, 7]. These methods are presented in ASME PCC-1 [3].” – see fig. 3-5 for further clarity, note in fig. 3 the first pass is 1->13 [furthest from 1]->7 [again, that center line but furthest away], then 19 [furthest from 7], similar in fig 4 and fig. 5
E.g. Zhu, Linbo, Abdel-Hakim Bouzid, and Jun Hong. "A novel methodology to optimize the tightening sequence in bolted flange joints." Pressure Vessels and Piping Conference. Vol. 58936. American Society of Mechanical Engineers, 2019. Introudction, ¶¶ 1-2, incl.: “Elastic interaction is a load alternation phenomenon that occurs in bolts used to clamp joint members together when a bolt or a group of bolts are tightened. Depending on the stiffness of the joint, the bolt preload may change by up to 50% in bolted flange joints [4]. The risk of leakage failure under service loading is consequently increased because of this preload change. To minimize the scatter due to elastic interaction, many passes tightening sequences were suggested in ASME PCC-1[5].” And on page 4, col. 2, ¶ 2: “Two tightening strategies, namely the criss-cross pattern, and the sequential clockwise pattern, are used to simulate the optimized tightening of the bolted flange joints. Referring to Fig. 2, the criss-cross tightening order is 1-5-3-7-2-6-4-8, while the sequential tightening order is 1-2-3-4-5-6-7-8”
Bibel, US 5,278,775 col. 7, ¶ 2: “In the initial testing procedure, a three test sequence was performed, with each test consisting of one tightening pass using a standard four point star 25 sequence.”
And also, such a mental process is performed by the layman as well, when changing the tire on their car, it is a best practice to do such a star pattern.
Jiveshwar Sharma, “Tightening Lug Nuts: The Criss-Cross Pattern Explained”, Dec. 2019, URL: tyreplex(dot)com/news/how-to-tighten-lug-nuts-on-a-car-the-criss-cross-pattern/: “The criss-cross pattern of tightening lug nuts is an unstated law that is widely advocated for a good reason. It is an inexplicit yet widespread practice that is followed by everyone from your local mechanic to the guy stuck in the middle of the highway attempting to replace his flat. However, even today, many people are not aware of the scientific reason behind this peculiar practice and that is exactly why we're here. Here's the secret: The simple reason behind the star pattern of torquing your lug nuts is to reduce wheel flexing and shifting. You see when you tighten a single nut, it keeps getting tighter and tighter till the point the wheel mounting face (what you're tightening against) gets stuck to the hub.
And such an abstract idea has already been used for welds.
Moradi, Milad, and Hartmut Pasternak. "A study on the influence of various welding sequence schemes on the gain in strength of square hollow section steel T-joint." 대한용접· 접합학회지 35.4 (2017): 41-50. Fig. 3, describing this wit the term of art of “skip welding”
Faiq, Muhammad, and Rizwan Alim Mufti. "Welding sequence optimization for the fabrication of Box Girder." 2016 International Conference on Emerging Technologies (ICET). IEEE, 2016. See figure 7, and table 1 for sequence # 4, and the conclusion: “The results clearly dictates that sequence 4 produces minimum distortions and therefore is announced as the optimum welding sequence for fabricating the box girder.”
Gannon, Liam, et al. "Effect of welding sequence on residual stress and distortion in flat-bar stiffened plates." Marine Structures 23.3 (2010): 385-404. Page 389, ¶ 2, discussion of fig. 4, then see fig. 4 (b, c, and d) which show this sequence of fixed points in a star/criss-cross pattern.
In summary, all this claim is directed to is to take a long-standing mental practice of tightening bolts in a star pattern, wherein the first bolt location is to be determine by a simple math calculation, e.g. with Hooke’s Law, the later bolt locations are all fixed as the star pattern, until 4 bolts are in, and then generically finding the most optimal next bolt to tighten by using commercially available software in its ordinary manner. In other words, an abstract idea, but use a computer and other existing, commercially available technology, as a tool to perform it and achieve a desired result, which is not an integration of the abstract idea into a practical application nor does it amount to significantly more (see below for details).
Under the broadest reasonable interpretation, these limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of physical aids but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the "Mental Process" grouping of abstract ideas. A person would readily be able to perform this process either mentally or with the assistance of physical aids. See MPEP § 2106.04(a)(2).
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility. In particular, with respect to the physical aids, see example # 45, analysis of claim 1 under step 2A prong 1, including: “Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation.”; also see example # 49, analysis of claim 1, under step 2A prong 1: “Moreover, the recited mathematical calculation is simple enough that it can be practically performed in the human mind. Even if most humans would use a physical aid, like a pen and paper or a calculator, to make such calculations, the use of a physical aid would not negate the mental nature of this limitation.”
As such, the claims recite an abstract idea of both a mental process and mathematical concept.
Step 2A, prong 2
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
The following limitations are merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), including the “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more”:
The “computer” and similar such recitations (the device and units of claim 5)
The “optimization analysis” -¶ 71: “Then, as the optimization analysis unit 19e, for example, optimization analysis software using a commercially available finite element method can be used.” And ¶ 98: “Then, the optimization processing in the optimization analysis step S7e can be performed using, 25 for example, optimization analysis software using a commercially available finite element method.”
The following limitations are generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h):
Should doing this for “an automobile” not be considered part of the abstract idea, it would be considered as generally linking to a field of use of automobiles, given the generic nature of the parts and part assemblies, e.g. such an abstract idea is readily also performed for other part assemblies, e.g. the Empire State Building, an office chair, a laptop computer, a bed, etc.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See MPEP § 2106.04(d).
MPEP 2106.04(II)(A)(2) “…Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Prong Two thus distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception…Because a judicial exception is not eligible subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). 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” and MPEP § 2106(I): “Mayo, 566 U.S. at 80, 84, 101 USPQ2dat 1969, 1971 (noting that the Court in Diamond v. Diehr found “the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,”” – and see MPEP § 2106.05(e).
To further clarify, MPEP § 2106.04(II)(A)(1): “Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). Yet, the Court has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has cautioned ‘‘to tread carefully in construing this exclusionary principle lest it swallow all of patent law” See also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016) ("The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon").”
As a point of clarity, RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." discussed in MPEP § 2106.04(II)(A)(2) as well as MPEP § 2106.04(I): “Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original).
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
Step 2B
The claimed invention does not recite any additional elements/limitations that amount to significantly more.
The following limitations are merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), including the “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more”:
The “computer” and similar such recitations (the device and units of claim 5)
The “optimization analysis” -¶ 71: “Then, as the optimization analysis unit 19e, for example, optimization analysis software using a commercially available finite element method can be used.” And ¶ 98: “Then, the optimization processing in the optimization analysis step S7e can be performed using, 25 for example, optimization analysis software using a commercially available finite element method.”
The following limitations are generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h):
Should doing this for “an automobile” not be considered part of the abstract idea, it would be considered as generally linking to a field of use of automobiles, given the generic nature of the parts and part assemblies, e.g. such an abstract idea is readily also performed for other part assemblies, e.g. the Empire State Building, an office chair, a laptop computer, a bed, etc.
In addition, the above insignificant extra-solution activities are also considered as well-understood, routine, and conventional activities, as discussed in MPEP § 2106.05(d):
The “optimization analysis” -¶ 71: “Then, as the optimization analysis unit 19e, for example, optimization analysis software using a commercially available finite element method can be used.” And ¶ 98: “Then, the optimization processing in the optimization analysis step S7e can be performed using, 25 for example, optimization analysis software using a commercially available finite element method.”
As a further point of clarity, optimizing welding sequencing using finite element software (e..g see ¶ 26 of the specification) is WURC. See:
Beik, Varshan, Hormoz Marzbani, and Reza Jazar. "Welding sequence optimisation in the automotive industry: A review." Proceedings of the Institution of Mechanical Engineers, Part C: Journal of Mechanical Engineering Science 233.17 (2019): 5945-5952. Section “Welding sequence optimisation”: “Welding sequence optimisation (WSO) strongly impacts distortion and residual stress in the welded structures therefore it has been of interest to various researchers.10 When exploring different welding sequences for optimal geometry of the automotive body, generation of an experimental sample using all possible sequences is not feasible due to cost, time and complexity. Hence, common practice is to replace real experiments with computational simulation tools such as finite element analysis (FEA) (Figure 2). FEA is a strong, accurate and detailed tool; however, the generation of FE models requires extensive engineering expertise and is often very complex. As a result, it is not possible to create FE models for every single welding sequence. Conventional industrial practice is that the weld sequence is based on the engineer experience. Evidently, this is operator dependent and does not necessarily guarantee optimal results… Studies aiming to optimise welding sequences date back to the 1940s…” – e.g. see table 1, which list several studies in this practice, wherein numerous of these studies use “FEA” in combination with optimization math algorithms.
Coria, Ibai, et al. "Optimized bolt tightening sequences in bolted joints using superelement FE modeling technique." International Conference on Offshore Mechanics and Arctic Engineering. Vol. 51203. American Society of Mechanical Engineers, 2018. Abstract, introduction last three paragraphs, also page 5 col. 2, ¶ 3, note the sequence is the star/criss-cross.
Faiq, Muhammad, and Rizwan Alim Mufti. "Welding sequence optimization for the fabrication of Box Girder." 2016 International Conference on Emerging Technologies (ICET). IEEE, 2016. See figure 7, and table 1 for sequence # 4, and the conclusion: “The results clearly dictates that sequence 4 produces minimum distortions and therefore is announced as the optimum welding sequence for fabricating the box girder.” And see §§I-II as well
Gannon, Liam, et al. "Effect of welding sequence on residual stress and distortion in flat-bar stiffened plates." Marine Structures 23.3 (2010): 385-404. Abstract and § 2, as well as fig. 4
Nassar, Sayed A., Zhijun Wu, and Xianjie Yang. "A new tightening methodology for gasketed joints based on nonlinear finite element analysis." ASME Pressure Vessels and Piping Conference. Vol. 48258. 2008. Abstract and § 3.3
Nassar, Sayed A., Zhijun Wu, and Xianjie Yang. "Achieving uniform clamp load in gasketed bolted joints using a nonlinear finite element model." Journal of pressure vessel technology 132.3 (2010). Abstract, § 1 ¶ 2, and § 3, also fig. 4
Shao, Qing, et al. "Optimization of the welding sequence and direction for the side beam of a bogie frame based on the discrete particle swarm algorithm." Proceedings of the Institution of Mechanical Engineers, Part B: Journal of Engineering Manufacture 232.8 (2018): 1423-1435. Abstract, section “FE modelling” and subsections, then fig. 5, then page 1427, in particular paragraph split between the columns, then fig. 6, and # 3 in conclusion: “The best plan of the weighted value is II (4123), IV (7658), and III (10), and the result also has a certain degree of reduction”
Yuan, Shuxia, et al. "A method to achieve uniform clamp force in a bolted rotor with curvic couplings." Proceedings of the Institution of Mechanical Engineers, Part E: Journal of Process Mechanical Engineering 230.5 (2016): 335-344. Abstract, and fig. 1, also see the introduction, and the section on page 2 discussing fig. 1-2
Zargar, Setayesh Hakkak, Mohammadreza Farahani, and Mohamad Kazem Besharati Givi. "Numerical and experimental investigation on the effects of submerged arc welding sequence on the residual distortion of the fillet welded plates." Proceedings of the Institution of Mechanical Engineers, Part B: Journal of Engineering Manufacture 230.4 (2016): 654-661. Abstract and fig 10, also introduction and section “FE Modelling”
Zhu, Linbo, et al. "Elastic interaction in bolted flange joints: An analytical model to predict and optimize bolt load." Journal of Pressure Vessel Technology 140.4 (2018): 041202. Abstract, fig. 3, and § 3 last paragraph
Zhu, Linbo, Abdel-Hakim Bouzid, and Jun Hong. "A novel methodology to optimize the tightening sequence in bolted flange joints." Pressure Vessels and Piping Conference. Vol. 58936. American Society of Mechanical Engineers, 2019. Introduction and section FE modeling.
The claimed invention is directed towards an abstract idea of both a mathematical concept and a mental process without significantly more.
Regarding the dependent claims
Claims 2-3 are merely stating to do a mental judgement of pick the largest value from a list of values, wherein these values are calculated. ¶ 44: “Next, the joining candidates 41 in each parts assembly 39 are ranked based on these calculated values, and the joining candidate 41 having the highest rank is selected as the first fixed 15 joining point 43a in the parts assembly 39”; ¶ 48: “for example, even in a case where frequency response analysis is performed, stress, strain, strain energy, load, or the like are calculated”
Claim 4 is rejected is merely specifying a center position (a mental judgement, e.g. from a mental observation), followed by distance calculations
Claims 6-8 rejected under similar rationales as 2-4
The claimed invention is directed towards an abstract idea of both a mathematical concept and a mental process without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kadivar, M. H., K. Jafarpur, and G. H. Baradaran. "Optimizing welding sequence with genetic algorithm." Computational mechanics 26.6 (2000): 514-519. Abstract, § 3.1 incl. fig. 1, and note table 3 for the “With tack welds” sequence
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/David A Hopkins/Primary Examiner, Art Unit 2188