DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The information disclosure statement (IDS) submitted on03/13/2023 and 11/30/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: The specification and claims interchangeable identify reference numeral 60 as both and actor and an actuator [see paragraph 0152 where both terms are used to identify the same part 60].
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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:
(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:
“interface function” in claim 32;
“transmission function” in claims 32 and 33;
“reception function” in claim 32;
“evaluation function” in claim 33-38; and
“maintenance function” in claims 34 and 36.
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
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 23-28, 30 and 34-37 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 23 recites multiple components such as “a base component”, “an actuating body” and “at least one solid body joint” to list a few are already defined in parent claim 22, therefore it is unclear if these are the same components form the parent claim or new components. Clarification is required as the components listed in claim 23 that are already defined in claim 22.
Claim 25 inherits the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, deficiency from parent claim 23.
Claim 24 improperly depends from canceled claim 1.
Claim 26 recites the limitation "the adjusting device" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 27-28 inherits the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, deficiency from parent claim 26.
Claim 30 improperly depends from canceled claim 1.
Claims 34-37 improperly depend from claim 33 in a different statutory category (a control system which depends from an actuating device) and uses functional language (such as a reception function and an evaluation function) without corresponding structure.
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 38-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Statutory Category
The claim recites “A computer program product comprising an evaluation function …” without reciting that the program is embodied on a “non-transitory computer-readable medium” or otherwise tying the program to a statutory manufacture or machine. As drafted, the claim is directed to a program per se, which does not fall within any of the four statutory categories (process, machine, manufacture, or composition of matter). See MPEP 2106.
Alternatively, even if construed as a manufacture (e.g., a computer-readable medium), the claim is nevertheless directed to an abstract idea and fails to recite significantly more, as explained below.
Step 2A, Prong One: The Claim Recites an Abstract Idea (Mathematical Concepts)
The claim recites “an evaluation function,” “a simulation function,” “a mathematical model,” and “a transfer function,” where “the transfer function comprises a plurality of supplied sensor data to the mathematical model and the mathematical model from the sensor data determines control state values….” These are mathematical relationships, formulas, and calculations.
Mathematical concepts are a recognized category of abstract ideas. See MPEP 2106.04(a); 2019 PEG, Section I(A).
Step 2A, Prong Two: The Claim Does Not Integrate the Abstract Idea Into a Practical Application.
The claim does not recite any particular computer, processor, memory, or hardware implementation that applies the abstract computations in a meaningful way. It merely claims the result of “assign[ing] an operating state value” and “determin[ing] control state values” using mathematical models/functions.
The claim appends a description of an “actuating device” and its components (base component, actuating body, solid body joint, drive device, coil, compensation member, permanent magnet segment). These recitations are presented as environmental context, not operative steps or structural limitations that tie the mathematical computations to controlling that device. The claim does not recite outputting any control signals to the coil, executing any control law, or effecting any physical change in the device based on the computed values.
Merely “linking” the abstract calculations to a field of use (an actuating device) or adding non-functional descriptive material does not integrate the abstract idea into a practical application. See MPEP 2106.04(d); 2106.05(f) (field-of-use limitations), 2106.05(e) (mere data gathering/output), and printed matter/non-functional descriptive material doctrine.
The claim does not recite:
Any improvement to the functioning of a computer or other technology. See MPEP 2106.05(a).
Any transformation of an article. See MPEP 2106.05©.
Use of a particular machine in a way that imposes a meaningful limit on the abstract idea. See MPEP 2106.05(b).
Any other meaningful limitation beyond the abstract mathematical processing.
Accordingly, the claim fails Prong Two because it does not integrate the abstract idea into a practical application.
Step 2B: No “Inventive Concept” — The Additional Elements Are Well-Understood, Routine, and Conventional
Beyond the abstract mathematical computations, the claim does not recite additional elements that amount to “significantly more.” There is no recitation of a specific computing architecture, specialized hardware, or non-conventional integration of the mathematical model with actuator control.
The actuating device elements (coil, permanent magnet segment, compensation member, joint, drive device) are recited generically and are well-understood, routine, and conventional in the art of actuators. More importantly, the claim does not use those elements to perform any non-abstract function; they are stated as context and do not supply an inventive concept.
As such, the claim amounts to the abstract idea of mathematical modeling and evaluation “applied” to an actuator domain without a specific, non-conventional implementation. See MPEP 2106.05(d), (f).
Conclusion
Because claim 38 is directed to an abstract idea (mathematical concepts) and fails to integrate the idea into a practical application or recite an inventive concept, claim 38 is rejected under 35 U.S.C. § 101.
Applicant is invited to amend the claim to recite a statutory category (e.g., a non-transitory computer-readable medium storing instructions, or a system including one or more processors and memory) and to integrate the mathematical model into a specific, technological control implementation that outputs defined control signals to the actuator hardware, with concrete technical details and effects (e.g., real-time sensor acquisition, specific control law applied to the coil, performance constraints). See MPEP 2106.07 for exemplary amendment strategies.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 22, 29 and 31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tetsuji et al. [DE 10322533].
Claim 22, Tetsuji et al. disclose an actuating device comprising: a base component [25a/25b], an actuating body [20/21a/21b], at least one solid body joint [39], by means of which the adjusting body is rotatably mounted on the base component about a solid body joint axis of rotation, and at least one drive device [22a/22b/23a/23b/21], which is coupled to the base component and to an actuator connection device [21a/21b/20] and which is situated at a distance from the solid body joint axis of rotation such that an adjustment movement of the drive device causes rotation of the actuator about the actuator axis of rotation [along 20]; wherein the drive device comprising: an actuator including an electrical coil [23a/23b] including a coil axis extending along the solid-state joint axis of rotation [figure 3], and a compensation member [22a/22b] having a magnetizable or magnetized material or consisting of such a material [silicon steel; page 10 highlighted text], wherein the compensation member and the coil are mechanically fixed relative to each other [windings 23a/23b are wound about stator 22/22b; figure 3], at least one permanent magnet segment [rotor 21 with alternating poles 211/212; page 6 highlighted text], wherein the permanent magnet segment is situated next to the coil at a contactless distance in a direction running in the coil axis [figure 3].
Claim 29, Tetsuji et al. disclose the actuating device according to claim 22, wherein the at least one drive device includes two permanent magnet segments [21; 211/212 figures 3 and 5] which are fastened on a magnetic segment carrier [figure 5], wherein the permanent magnet segments are situated on the same side of the actuator as seen from the actuating body axis of rotation and in the direction of the relative movement between the coil and permanent magnet segments are arranged one behind the other [page 11].
Claim 31, Tetsuji et al. disclose the actuating device according to Claim 29, wherein the at least one drive device includes at least one arrangement of two permanent magnet segments [211, 212] located on at least one side of the coil as seen from a center of the actuating body [figures 3 and 5], and a compensation component [22a/22b] includes at least one side surface which is situated facing an arrangement of the permanent magnet segments [figure 3], wherein the side surface includes at least one part-surface portion, the orientation of which is at an angle between 10 degrees and 40 degrees [figure 4].
Allowable Subject Matter
Claims 32 and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bernard Rojas whose telephone number is (571)272-1998. The examiner can normally be reached Mon. thru Fri. 7:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S Ismail can be reached at (571) 272-3985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNARD ROJAS/ Primary Examiner, Art Unit 2837