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 .
Response to Arguments
Applicant's arguments filed on 12/22/2025 have been fully considered but they are not persuasive.
35 USC 102:
Applicants argue at Pages 9 and 10 that the prior art of record, Toshiba, does not the amended limitation in independent claims, representing claim 1, “under predefined operation conditions that are independent of conditions for the first and second machine operations (claim 1, lines 8 and 9)” as Toshiba discloses at Pages 2 and 3 according to a user operation instead of under predefined specific operation conditions (e.g. idling the spindle at 2000RPM).
Claim 1 calls for “under predefined operation conditions that are independent of conditions for the first and second machine operations” but not “under predefined specific operation condition conditions (e.g. idling the spindle at 2000RPM). Neither “specific” nor “idling spindle at 2000RPM” are recited in the claim.
Per MPEP 2173.01, under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. If an Office action has issued where the plain meaning of the claim terms was used, applicant may point out that the term has been given a special definition. Since there is a presumption that claim terms are given their plain meaning, and the use of special definitions is an exception, the applicant must point to where the specification as filed provides a clear and intentional use of a special definition for the claim term to be treated as having a special definition. An applicant may not add a special definition or disavowal after the filing date of the application. However, an applicant may point out or explain in remarks where the specification as filed contains a special definition or disavowal.”
Applicants have not pointed out if the recited limitation in claim 1, lines 8 and 9,“under predefined operation conditions that are independent of conditions for the first and second machine operations” has a special definition of “under predefined specific operation condition conditions (e.g. idling the spindle at 2000RPM)” nor did Applicant define “under predefined operation conditions that are independent of conditions for the first and second machine operations” is “under predefined specific operation condition conditions (e.g. idling the spindle at 2000RPM)” as MPEP 2111.01(IV) (APPLICANT MAY BE OWN LEXICOGRAPHER AND/OR MAY DISAVOW CLAIM SCOPE).
Further, per MPEP 2111.01(II), it is improper to import claim limitations from the Specification. In the Examiner’s position, even if “according to user operations” meets the claimed “under predefined operation conditions that are independent of conditions for the first and second machine operations”.
Toshiba discloses “program codes that drives an element (spindle 12 or tool 14) to be measured of the machine tool (machine tool 10) during a time interval between a first machining operation and a second machining operation of a machine tool under a predefined operation conditions that are independent of conditions for the first and second machining operations (Abstract; Pages 2 and 3 for interval, Pages 3 and 4).”
Toshiba discloses “according user operations”, e.g. user input is the processing conditions input by the cutting monitoring device 20, include, for example, the number of rotations of the milling tool and the number of blades. When the machining condition is input by the cutting process monitoring device 20, the tool number is given in the input order of the machining condition. The number of data maybe determined in advance regardless of the type of tool 14 or may be individually input for each tool when machining conditions are input. In the Examiner’s position, this meets the claimed limitation given its BRI “under a predefined operation conditions that are independent of conditions of the first and second machine operations”.
Toshiba discloses at Page 9, the cutting monitoring device 20 outputs a signal for allowing the target tool 14 to escape the reverse direction to the cutting direction servometer of the machine tool and Toshiba discloses that device 20 outputs a signal for stopping (stopping) the spindle rotation of the machine tool spindle. This meets the “predefined specific operation conditions”.
35 USC 101:
Applicants argue at Pages 7 and 8 that MPEP 2106.04(a) emphasizes that the claims that are directed to improvements in computer functionality or other technology are not abstract. Applicant further argues that As also noted in MPEP 2016.04 (a), when finding that a claim is directed to such an improvement, it is critical that examiners give the claim its broadest reasonable interpretation (BRI) and evaluate both the specification and the claim. The specification should disclose sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement, and the claim itself must reflect the improvement in technology. Other important considerations are the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome, and whether the BRI is limited to computer implementation. Specifically, referring to specification [0028] as support, amendments have been made to clearly disclose an improvement as described below in response to the 102 rejection.
Examiner respectfully disagrees. This is immaterial. MPEP 2106.04(a) recites Abstract ideas and enumerated groupings of abstract ideas.
Further, MPEP 2106.04(a) does not state that when finding that a claim is directed to such an improvement, it is critical that the Examiners give the claim its broadest reasonable interpretation and evaluate both the Specification and the claim.
In contrast, MPEP 2106.05 (a) discloses Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field and MPEP 2106.04(d) (1) discloses Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two.
MPEP 2106.04(d)(1) states that “The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a). In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").”
MPEP 2106.05(a) states that “After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100.”
MPEP2106.05(a) further states that an important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
Applicant argues that “specifically, referring to specification [0028] as support, amendments have been made to clearly disclose an improvement as described below in response to the 102 rejection. That is, conventionally, there is a problem in that a large amount of noise is mixed with the data collected during the original machining operation (cutting, etc.), and various machining patterns are present depending on a material or shape to be machined, resulting in poor diagnostic accuracy. The present application provides a solution by collecting data by operating the machine tool under predefined specific operating conditions (e.g. idling the spindle at 2000 RPM) during the time interval between the machining operations (i.e. first and second machine operations), it is possible to obtain more accurate diagnostic results while shortening the time required for the data collection with less noise”; however, the claim when viewed as a whole and as ordered combination, does not recite details how the collection is done, and the claim does not recites how, “collecting data by operating the machine tool under predefined specific operating conditions (e.g. idling the spindle at 2000 RPM) during the time interval between the machining operations (i.e. first and second machine operations)” is done.
Further, the amended limitation is merely claiming the idea of a solution or outcome per MPEP 2106.05(a).
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites “a method of status diagnosis of a machine tool, comprising: …on the collected data” which is a process.
At Step 2A, Prong 1, the claim recites an abstract idea, as follows.
Claim 1 recites “program codes that collects data from a sensor mounted on the element to be measured; and program code that performs status diagnosis of the machine tool based on the collected data” is mental process.
At Step 2A, Prong 2, the abstract idea is not integrated into a practical application. The claim recites “program code that drives an element to be measured of the machine tool during a time interval between a first machining operation and a second machining operation of a machine tool; program code that collects data from a sensor mounted on the element to be measured; and program code that performs status diagnosis of the machine tool based on the collected data” which are not performed by any particular device. Further, “drives an element…”, there is no specificity as to what data/acquired measured values is being considered. The recited element or machine tool is a very broad field of use, not a particular practical application
The “sensor” recited at the step “collecting data…” is merely insignificant extra-solution activity, namely mere data gathering recited at a high level of generality (see MPEP 2106.05(g). The (obtained) first measured value is data and its usage is unlimited, e.g. to be applied to next steps of claim 1.
The claim also recites “performs status diagnosis…”, but this is merely insignificant extra-solution activity, namely mere data gathering recited at a high level of generality (see MPEP 2106.05(g), for instance). The claim does not place any limit on the type of machine, and only current sensor, or the technological context of the claim, so the abstract idea would be monopolized across a wide range of technological fields and practical applications, rather than being integrated into a particular practical application.
At Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, for reasons that are analogous to the discussion of additional elements at Prong 2.
Dependent claims 2-7 recites limitations which are merely data and an insignificant extra solution and would not cause the claim as a whole to integrate the recited abstract idea into a particular application.
Claim 8 recites an apparatus which do not offer a meaningful limitation beyond generally linking the apparatus to a particular technological environment, that is, implementation via units. In other words, the system claims are no different from the method claim 18 in substance; the method claim recites the abstract idea while the apparatus claim and medium claim recites generic components configured to implement the same abstract idea. The claims do not amount to significantly more than the underlying abstract idea. used merely as a tool to perform the abstract is not sufficient to integrate the claim into a practical application (see MPEP 2106.05(f), for instance).
The recitation of a general-purpose control unit, a data collection unit, and a diagnostic unit are used merely as a tool to perform the abstract is not sufficient to integrate the claim into a practical application (see MPEP 2106.05(f), for instance). but the recitation of a general-purpose control unit, a data collection, a diagnostic unit
Dependent claims 9-17 recites limitations which are merely data and an insignificant extra solution and would not cause the claim as a whole to integrate the recited abstract idea into a particular application.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7-13, 16, and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Toshiba Corp (JP 2010149206)(English Abstract by Applicants) (Translation by Examiner)(hereinafter “Toshiba”).
Regarding claims 1 and 8, Toshiba discloses a method of status diagnosis of a machine tool (10), comprising:
Program code that drives an element (spindle 12 or tool 14) to be measured of the machine tool (machine tool 10) during a time interval between a first machining operation and a second machining operation of a machine tool (Abstract; pages 2 and 3 for time interval; Pages 3 and 4. Please also see explanation above in the Response to Arguments section which is herein incorporated by reference);
Program code that collects data from a sensor (Sensor 60) mounted on the element to be measured (Abstract; Pages 3 and 4;)
and program code that performs status diagnosis of the machine tool based on the collected data (Abstract; Pages 4 and 5).
Regarding claim 2, Toshiba discloses wherein the time interval between the first machining operation and the second machining operation is included in information input by a user (Pages 3-5).
Regarding claims 3 and 11, Toshiba discloses wherein the time interval between the first machining operation and the second machining operation is included in information preset in the machine tool (Pages 4-6).
Regarding claims 4 and 13, Toshiba discloses wherein the performing of the status diagnosis of the machine tool is performed using a diagnostic reference value as a criterion (The stored tool life determination value/threshold value at Pages 7-9).
Regarding claim 7, Toshiba discloses outputting a result of performing the status diagnosis of the machine tool (output Page 4).
Regarding claim 9, Toshiba disclose wherein the control unit is included in a machine control unit in the machine tool (see control at Page 3).
Regarding claim 10, Toshiba discloses a user input unit configured to input the time interval between the first machining operation and the second machining operation to the control unit (see Page 2: user operation input and input means).
Regarding claim 12, Toshiba discloses wherein a result of the status diagnosis performed by the diagnosis unit is transmitted to the control unit (Page 8).
Regarding claim 16, Toshiba discloses a result output unit configured to output a result of performing the status diagnosis of the machine tool (Page 9).
Regarding claim 17, Toshiba discloses wherein the result of the status diagnosis performed by the diagnosis unit is transmitted to the result output unit (Page 8).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 5, 6, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Toshiba and Stubbs et al. (USPAP> 20210133607) (Hereinafter “Stubbs”).
Regarding claims 5 and 14, Toshiba does not explicitly disclose “wherein the performing of the status diagnosis of the machine tool is performed using artificial intelligence-based diagnostic algorithm”.
Stubbs teaches “wherein the performing of the status diagnosis of the machine tool is performed using artificial intelligence-based diagnostic algorithm (Pars. 110 and Abstract).
It would have been obvious to one of ordinary skilled in the art at the time of filling the Application to modify Toshiba's invention using Stubbs’ invention to arrive at the claimed invention specified in claim to monitor or predict a service event for an industrial asset (Stubbs: Abstract; Par. 110).
Regarding claims 6 and 15, Toshiba and Stubbs disclose everything as applied above. In addition. Toshiba discloses wherein the diagnostic algorithm is generated by: collecting data from the sensor mounted on the element to be measured of the machine tool during the time interval between the first machining operation and the second machining operation of the machine tool (Pages 9 and 10); however, Toshiba does not disclose “extracting a feature from the collected data to generate training data; and training a learning model with the training data”.
Stubbs teaches “extracting a feature from the collected data to generate training data; and training a learning model with the training data (Abstract; Pars. 10-14; and 110-114)”.
It would have been obvious to one of ordinary skilled in the art at the time of filling the Application to modify Toshiba's invention using Stubbs’ invention to arrive at the claimed invention specified in claim to monitor or predict a service event for an industrial asset (Stubbs: Abstract; Par. 110).
Conclusion
THIS ACTION IS MADE FINAL. 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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/PHUONG HUYNH/ Primary Examiner, Art Unit 2857 March 4, 2026