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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/2025 has been entered.
Response to Amendment
Applicant' s amendment and response filed 11/26/2025 has been entered and made record. This application contains 12 pending claims.
Claims 1, 3-8, and 11-12 have been amended.
Response to Arguments
Applicant’s arguments filed 11/26/2025 regarding claims rejection under 35 U.S.C. 103 with respect to claims 1-12 have been fully considered and are persuasive.
The claims 1, 11, and 12 have been amended and incorporated part of the limitations of claim 3 which did not have prior arts rejection in the Final Office Action, and thus, overcome the 103 rejections. Therefore, the 103 claims rejections in claims 1-12 have been withdrawn.
Applicant’s arguments filed 11/26/2025 regarding claims rejections under 35 U.S.C. 101 in claim 1-12 have been fully considered but they are not persuasive.
The applicant argues on pages 10-11 of the remark filed on 11/26/2025 that “Although the controller performs calculations, the claim as a whole is not directed to any mathematical relationship or formula within the meaning of MPEP §2106.04(a). The claimed calculations depend on temperature data obtained from multiple sensors and cannot practically be performed in the human mind.” The applicant further argus that “This parallels Example 40 (Adaptive Monitoring of Network Traffic Data) in the USPTO Guidance issued January 7 2019, and Example 47 (Anomaly Detection) in the USPTO Guidance issued July 17, 2024, where data-driven monitoring steps using multiple sensors or machine-learning operations were found not to be "mental processes. … Accordingly, the amended independent claims do not fall within any of the three abstract-idea groupings (mathematical concepts, mental processes, or methods of organizing human activity) as provided in MPEP §2106.04(a)."
The Examiner respectfully disagrees applicant’s argument. The steps of “calculate thermal resistance of the deposit based on the at least one set of first-type temperature data, the at least one set of second-type temperature data”, and “estimate the thickness of the deposit based on the thermal resistance” are mathematical concepts, therefore, they are considered to be abstract idea. Thus, the claims are directed to an abstract idea.
Moreover, the instant claim limitations are dissimilar to the claims in Example 40 and Example 47. The claim 1 in Example 40 recites a judicial exception of a mental process, however, the method limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance, and the collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring, and thus, the claim as a whole integrates the mental process into a practical application. The claim 3 in Example 47 recites a judicial exception, but the additional elements in steps (d)-(f) of the claim, when considered in combination, integrate the abstract idea into a practical application because the claim improves the functioning of a computer or
technical field. However, in the instant claims 1 and 11-12, the abstract idea are not integrated into a practical application as shown in below rejection.
Thus, the instant claims are dissimilar to the claims in Example 40 and Example 47.
The applicant argues on pages 11-12 of the remark filed that “Even if the amended independent claims were to be characterized as a judicial exception, each of the claims as a whole integrates that concept into a practical application of pipeline deposit detection for removal. Specifically, the claimed configuration of sensors at locations covered by claddings of differing thermal resistance enables the controller to estimate deposit thickness with better accuracy, which is a technological improvement over prior methods that required mechanical inspection or flow interruption. … Here, the evidence shows that the claimed invention improves a specific industrial technology. When considered as a whole, each of the amended independent claims recites a concrete, non-generic industrial system that applies specific measurement techniques to achieve an improved way to achieve accurate estimation of deposit thickness inside pipes. …”.
The Examiner respectfully disagrees applicant’s argument. Practical application can be demonstrated by limitations that are sufficient to integrate the judicial exception into a practical application. However, additional elements “wherein a first cladding covers the pipe at the first position”, “wherein a second cladding covers the pipe at the second position”, “a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding”, “the first thermal resistance, and the second thermal resistance”, and “cause a display to display the estimated thickness used to implement the method of removing the deposit” are not sufficient to integrate the abstract idea into a practical application because they only add insignificant extra-solution activities to the judicial exception. The additional elements “receive: at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, an outside of the pipe in which a fluid flows; and receive: at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipes” represent necessary data gathering and do not integrate the limitations into a practical application.
The additional element “a communication unit configured to receive” is not sufficient to integrate the abstract idea into a practical application because it is considered a generic computer element. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
The alleged technological improvement of estimating deposit thickness with better accuracy that required mechanical inspection or flow interruption relates to improvement to the abstract idea itself. Therefore, the instant claims do not recite additional elements that are indicative of integration of an abstract idea into a practical application.
The applicant argues on page 12 of the remark filed that “The amended independent claims also recite additional elements that provide significantly more. When the claim is considered as a whole, it requires the coordinated use of and/or reference to multiple temperature sensors and claddings with differing and known thermal resistances, as well as correlation of temperature-gradient data to estimate deposit thickness, is not well- understood, routine, or conventional. …”.
The Examiner respectfully disagrees applicant’s argument. Significantly more can be demonstrated by additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application. However, the claims do not recite them. The limitations of “wherein a first cladding covers the pipe at the first position”, “wherein a second cladding covers the pipe at the second position”, “a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding”, “the first thermal resistance, and the second thermal resistance”, and “cause a display to display the estimated thickness used to implement the method of removing the deposit” are routine in estimating a thickness of a deposit formed on an inner surface of a pipe, and removing the deposit based on the estimated thickness. Therefore, the claims 1-12 do not contain additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application.
Hence, the Examiner submits that the rejection of claims 1-12 are proper.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
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 limitations are “communication unit” in claims 1, 4-6, and 9-12. The claim describes the various modules in functional terms of what they do, rather than how they do it. Under 35 USC 112(f), the Specification must identify a specific and readily-identifiable algorithm in the Specification associated with the claimed function.
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, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. For example, [0024] discloses “… The communication unit 13 controls the data communication with other devices. For example, the communication unit 13 communicates data with other devices via a network device (not illustrated). Moreover, the communication unit 13 can communicate data with the operator terminal (not illustrated).”
In order to exam the merit, Examiner interprets the above mentioned limitations performed by a generic computer.
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 § 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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As to claim 1, the claim recites “An estimation device for estimating a thickness of a deposit formed on an inner surface of a pipe and for optimally implementing a method of removing the deposit based on the estimated thickness, comprising:
a communication unit configured to receive:
at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, on an outside of the pipe in which a fluid flows, wherein a first cladding covers the pipe at the first position, and
at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipe, wherein a second cladding covers the pipe at the second position, and
a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding; and a controller configured to:
calculate thermal resistance of the deposit based on the at least one set of first-type temperature data, the at least one set of second-type temperature data,
the first thermal resistance, and the second thermal resistance,
estimate the thickness of the deposit based on the thermal resistance, and
cause a display to display the estimated thickness used to implement the method of removing the deposit.”
Under the Step 1 of the eligibility analysis, we determine whether the claim is directed to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (apparatus for claim 1).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the bold type portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations.
In claim 1, the steps identified in bold type are mathematical concepts, therefore, they are considered to be abstract idea.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claim comprises the following additional elements:
a communication unit configured to receive: at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, on an outside of the pipe in which a fluid flows, wherein a first cladding covers the pipe at the first position, and at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipe, wherein a second cladding covers the pipe at the second position, and a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding; and a controller configured to: the first thermal resistance, and the second thermal resistance, and cause a display to display the estimated thickness used to implement the method of removing the deposit.
The additional elements “receive: at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, an outside of the pipe in which a fluid flows, and at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipes” represent necessary data gathering and do not integrate the limitations into a practical application. Additional elements “wherein a first cladding covers the pipe at the first position”, “wherein a second cladding covers the pipe at the second position”, “a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding”, “the first thermal resistance, and the second thermal resistance”, and “cause a display to display the estimated thickness used to implement the method of removing the deposit” are not sufficient to integrate the abstract idea into a practical application because they only add insignificant extra-solution activities to the judicial exception. In addition, a generic controller is generally recited and therefore, not qualified as a particular machine.
The additional element “a communication unit configured to receive” is not sufficient to integrate the abstract idea into a practical application because it is considered a generic computer element. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
In conclusion, the above additional elements, considered individually and in combination with the other claims elements do not reflect an improvement to other technology or technical field, do not reflect improvements to the functioning of the computer itself, do not recite a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claim is directed to a judicial exception and require further analysis under the Step 2B.
The above claim, does not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are generically recited and are well-understood/conventional in a relevant art as evidenced by the prior art of record (Step 2B analysis).
For example, receiving at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, an outside of the pipe in which a fluid flows, and at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipes are considered necessary data gathering. As recited in MPEP section 2106.05(g), necessary data gathering (i.e. receiving data) is considered extra solution activity in light of Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
For example, causing a display to display the estimated thickness used to implement the method of removing the deposit is disclosed by “Gallagher US 20040059505”, [0007], [0023], [0032]; and “Deng CN 107402407A”, Abstract, [0011], [0018], [0033], [0035], [0038], [0073].
The claim, therefore, is not patent eligible.
Independent claims 11 and 12 recite subject matter that is similar or analogous to that of claim 1, and therefore, the claims are also patent ineligible.
With regards to the dependent claims, claims 2-10 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application.
The dependent claims are, therefore, also not eligible.
Examiner’s Note
Regarding Claims 1-12, the most pertinent prior arts are “Gallagher US 20040059505”, “Taniguchi US 20200348131”, “Kobayashi US 20190243996”, “McCann US 8960305”, “Littlestar US 20190219473 ), “Jonathan WO 2011018592 A1”, “Deng CN 107402407A”, and “Hidekuni JP 6422461B2”.
As to claims 1, 11, and 12, Gallagher teaches a communication unit configured to receive: at least one set of first-type temperature data, from at least one temperature sensor installed at a first position, an outside of the pipe in which a fluid flows (Gallagher, FIG. 2 and [0010], [0016]); and
at least one set of second-type temperature data, from at least one temperature sensor installed at a second position, on the outside of the pipes wherein a condition related to heat transfer at the first position is different from the condition at the second position (Gallagher, [0010], [0020], [0028]);
a controller ([0023] discloses the computer) configured to: estimate the thickness of the deposit (Gallagher, [0032]);
cause a display to display the estimated thickness used to implement the method of removing the deposit (Gallagher, [0007], [0023], [0032]).
Taniguchi discloses calculate thermal resistance of the deposit based on the at least one set of first-type temperature data and the at least one set of second-type temperature data (Taniguchi, FIG. 9 and [0049]).
Jonathan teaches estimate the thickness of the deposit based on the thermal resistance (Jonathan, [0034] and [0054], [0175], FIGs. 1 to 4).
Hidekuni teaches wherein a first cladding covers the pipe at the first position; and
a second cladding covers the pipe at the second position (Hidekuni, [0007], [0008], [0053]),
the first thermal resistance, and the second thermal resistance (Hidekuni, [0051], [0052], [0053]).
However, the prior arts of record, alone or in combination, do not fairly teach or suggest “a first thermal resistance of the first cladding is different from a second thermal resistance of the second cladding” including all limitations as claimed.
Dependent claims 2-10 depend from claim 1, and thus, the claims are also distinguished over the prior art for at least the same reason as claim 1.
Examiner notes, however, that claims 1-12 are rejected under 35 U.S.C. 101, thus, not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Hazuku US 20210108917” teaches “A scale thickness estimating system according an embodiment includes: a fluid temperature acquiring unit that acquires a temperature of a fluid flowing in a pipe; a flow path outer surface-temperature acquiring unit that acquires a temperature of an outer surface of the pipe; a heat flux acquiring unit that acquires a heat flux on the outer surface of the pipe; a flow path wall-thermal conductivity acquiring unit that acquires a flow path wall thermal conductivity of the pipe; a scale thermal conductivity acquiring unit that acquires a scale thermal conductivity of scale depositing on an inner surface of the pipe; and a scale thickness estimating unit that estimates a thickness of the scale based on the temperature of the fluid, the temperature of the outer surface, the heat flux, the flow path wall thermal conductivity, and the scale thermal conductivity.”
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine T Rastovski can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAL CE MANG/Examiner, Art Unit 2863