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 .
Claim Objections
Claim 19 is objected to because of the following informalities: Appropriate correction is required.
Claim 19, line 4 has a typo and should read, “…deviation of the at least one…”
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to an abstract idea. The recited method of claim 1 is an abstract idea because it involves concepts that can be performed in the human mind, namely, monitoring, converting characteristics to a parameter and determining. The limitations of the claim can practically be performed in the human mind with or without the use of a physical aid such as pen and paper. The particular method steps can be performed purely mentally even though the method steps are claimed as being performed by a fluid monitoring device or a fluid computing device. In this case the concept is merely using a computer (fluid computing device) as a tool to perform the concept. (see MPEP 2106). The limitations of the claim do not contain anything significantly more than the abstract idea. The claim does not recite or provide an improvement to the functioning of a computer, an improvement to any other technology, applying the abstract idea with or by use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding a specific limitation other than what is well-understood, routine or adding unconventional steps that confine the claim to a particular useful application or other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Even the monitoring by a fluid monitoring device is well-understood and routine as monitoring devices for monitoring a magnetic flux gradient are common as applicant notes in paragraph 70, the monitoring device being a Hall sensor. For these reasons claim 1 is rejected under 101.
Claim 2 is also rejected as it only recites the additional limitation of generating an assessment which is also an abstract idea that only involves concepts performed in the human mind.
Claim 3 is also rejected as it only recites the steps of assessing and generating an indicator as to what component needs corrective action which is an abstract idea that only involves concepts performed in the human mind.
Claim 4 is also rejected as it only recites the step of generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim 5 is also rejected as it only recites the steps of assessing and generating an indicator which is an abstract idea that only involves concepts performed in the human mind.
Claim 6 is also rejected as it only recites the steps of monitoring, determining and generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim 7 is also rejected as it only recites the steps of monitoring, determining and generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim 8 is also rejected as it only recites the steps of monitoring, determining and generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim 9 is also rejected as it only recites the steps of monitoring, determining and generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim 10 is also rejected as it only recites the steps of determining and generating an alert which is an abstract idea that only involves concepts performed in the human mind.
Claim Rejections - 35 USC § 112
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.
Claims 1-24 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.
Claims 1 and 12 have been amended to recite a step of converting a plurality of characteristics monitored by the fluid monitoring device to a magnetic wear debris parameter. The specification as originally filed does not mention a magnetic wear debris parameter. It appears that applicant meant to use the term metallic wear debris parameter. The specification indicates there are multiple different the metallic wear debris parameters that are determined by different characteristics. There is a metallic wear debris parameter associated with the magnetic flux gradient (par 90). There is a metallic wear debris parameter associated with the density of the fluid (par 95). There is a metallic wear debris parameter associated with particle count (par 109). The specification as originally filed does teach or suggest a single magnetic/metallic wear debris parameter that is determined by converting a plurality of characteristics of the fluid.
The additional claims are rejected as depending from one of the above claims.
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 1-11, 13-14 and 19 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 1, line 5, recites a fluid monitoring device. Line 3 also recites a fluid monitoring device. It is unclear if applicant is reciting a further fluid monitoring device or if the device of line 5 is the same device of line 3. For examination purposes the device of line 5 is assumed to be the same device of line 3.
Claim 2 recites the limitation "the at least one component" in line 5-6 and 7-8. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “the components”.
Claims 3 and 13 recite assessing to determine at least one component and at least one component characteristic associated with the at least one component that impacts the metallic wear debris parameter. The specification only indicates that a higher level of metallic wear debris may degrade various components of the system but does teach a particular list of component characteristics nor does the specification teach what component characteristics are associated with any particular component. Similarly, it is unclear how to generate an indicator that indicates a particular component that is to be targeted. As stated above, the specification only teaches the magnetic flux gradient indicating the level of metallic wear debris. There is nothing in the specification that would indicate how an assessment would be made based on these criteria, as to what particular component would need to be targeted for corrective action.
Claim 5 recites the limitation "the fluid parameters" in line 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “the magnetic wear debris parameter”.
Claim 8 recites monitoring a metallic wear debris parameter of the fluid. Claim 1 recites a magnetic wear debris parameter. It is unclear if these two parameters are the same or if they are different. The specification as originally filed teaches a metallic wear debris parameter and it appears the recited magnetic wear debris parameter is a typo and therefore it is unclear if these are the same parameters or if they are different parameters.
Claim 13 recites the limitation "the metallic wear debris parameter" in line 3-4, 8 and 13. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “the magnetic wear debris parameter”.
Claim 19, line 3 recites, “at least one metallic wear debris parameter”. Claim 12 recites a magnetic wear debris parameter. It is unclear if these two parameters are the same or if they are different. The specification as originally filed teaches a metallic wear debris parameter and it appears the recited magnetic wear debris parameter is a typo and therefore it is unclear if these are the same parameters or if they are different parameters.
Claim 19 recites the limitation "each corresponding metallic well debris threshold" in line 4, 5 and 9. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, "the metallic wear debris threshold".
The additional claims are rejected as depending from claim 1.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
Applicant argues that the amendments to claim 1 to clarify that the monitoring is executed by a fluid monitoring device and the converting and determining is executed by a fluid computing device. Claim 1 previously recited the monitoring was done by a fluid monitoring device, therefore, the amendment to line 3 of the claim does not provide any further clarification. The recitation of the converting and determining being done by a fluid computing device do not contain anything significantly more than the abstract idea. The claim does not recite or provide an improvement to the functioning of a computer, an improvement to any other technology, applying the abstract idea with or by use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding a specific limitation other than what is well-understood, routine or adding unconventional steps that confine the claim to a particular useful application or other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779