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 .
The amendment filed on August 26, 2026 has been considered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 26, 2026 has been entered.
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 1-7 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.
Claim 1, the limitation of an acquiring step and generating step are performed by the same processor is not described in the original disclosure. Instead, the steps are performed by an information acquisition unit (11) and an estimation model generation unit (12) (Fig. 1A).
Claim 7, the limitation of an acquiring step and estimating step are performed by the same processor is not described in the original disclosure. Instead, the steps are performed by an information acquisition unit (21) and an estimation model generation unit (22) (Fig. 1B).
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed
to non-statutory subject matter.
Pursuant to the 2019 Revised Patent Subject Matter Eligibility Guidance (MPEP 2106), the following analysis is made:
Under step 1 of the Guidance, the claims fall within a statutory category.
Under step 2A, prong 1, claim 1 recites an abstract idea of "generate an
estimation model for representing a relationship between a load curve and a lifetime of a punch indicating a temporal change or a positional change of a load applied to the punch" (mental process/mathematical concept), "generates, based on the load curve and a tool lifetime, an estimation model, the lifetime being a time period from time of acquiring the load curve to time at which the tool reaches the lifetime" (mental process/mathematical concept).
The mere nominal recitation of a generic processor (processor/memory) does not take the claim limitation out of the abstract idea (MPEP 2106.04(a)(2) (III)).
Under step 2A, prong 2, the abstract idea is not integrated into a practical
application.
“Acquire, at a timing before the punch reaches the lifetime due to repeated machining using the punch, the load curve based on detection values of a load sensor configured to detect the load applied to the punch and, wherein the load curve indicates the positional change, and detection values of a position sensor configured to detect a travel distance of the punch” are directed to insignificant extra solution activities of data gathering (MPEP 2106.05(g)).
Under step 2B, the claims do not include additional elements that are sufficient
to amount to significantly more than the abstract idea.
“Acquire, at a timing before the punch reaches the lifetime due to repeated machining using the punch, the load curve based on detection values of a load sensor” is a well-understood, routine and conventional activity known in the industry (MPEP 2106.05(d)).
The punch being used together with a die for repeatedly machining a plurality of workpieces in a plate-shape by punching out each of the plurality of workpieces while applying the load to the punch is not a particular machine that performs the abstract idea (MPEP 2106.05(b)). Rather, it is an object from which data is gathered to perform the abstract idea. Thus, it is not indicative of integration into a practical application and is not significantly more.
The additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea.
The remaining dependent claims 2-7 do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of the abstract idea.
Claims 2-7 are directed to an abstract idea.
Accordingly, claim 1 and its dependent claims 2-7 are patent ineligible under 35 USC 101.
Prior Art Note
Claims 1-7 do not have prior art rejections.
The combination as claimed wherein an estimation model generation device configured to generate based on the load curve and a punch lifetime, the estimation model (claim 1) is not disclosed, suggested, or made obvious by the prior art of record.
Response to Arguments
Applicant's arguments filed on August 26, 2026 have been fully considered.
Applicant’s arguments and amendments with respect to the claim objections have been fully considered and are persuasive. The claim objections have been withdrawn.
With respect to the rejections under USC 112(a), Applicants argue “claim 1 does not require a single physical processor to necessarily perform both the acquire operation and the generate operation.”
Examiner’s position is that in claim 1, “at least one processor configured to acquire … generate … store” (line 9) can be interpreted as – one processor or more processors configured to acquire … generate … store --. Thus, there is one interpretation where “one processor … configured to acquire … generate … store”. Accordingly, there is an interpretation where one processor performs both the acquired operation and the generated operation.
Applicants further argue “it is evident from such disclosure that "at least one processor," as recited in claim 1 of the present application, is configured to perform both the "acquire" and "generate" recitations of claim 1 of the present application.”
Based on Applicants’ remarks, Examiner suggests amending "at least one processor” (claim 1, line 9) to, e.g., – a processor system --. The “processor system” can be supported by “Estimation model generation device 100” in Fig. 1.
Applicants further argue “[t]he same reasoning applies to claim 7 of the present application.”
Likewise, Examiner suggests amending "at least one processor” (claim 7, line 8) to, e.g., – a [second] processor system --. The “[second] processor system” can be supported by a combination of “21”, “22” in Fig. 2.
Applicant’s arguments and amendments with respect to the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections under 35 USC 112(b) have been withdrawn.
Applicant's arguments filed on March 26, 2026 have been fully considered.
With respect to the rejections under 35 USC 101, Applicants argue “[i]t is evident that the subject features recited in both the previous form of claim 1, and especially as amended in this paper, could not practically be performed in the human mind without the associated hardware and the assistance of a special purpose computer programmed to apply the specialized algorithms disclosed in the specification of the present application and recited in the claims.
Paragraph [0068] of the specification of the present application describes that [e]stimation unit 22 predicts the number of shots until punch 31 reaches the
lifetime from a load of punch 31 and the number of shots thereof during machining. For example, the graph of Fig. 8 shows that maximum loads at 100,000-th and 200,000-th shots are within a range of the estimation model. In contrast, a maximum load at a 300,000-th shot exceeds the maximum load indicated by the estimation model of a maximum load. Thus, estimation unit 22 estimates that punch 31 during current machining reaches the tool lifetime earlier than 500,000 shots of the tool lifetime when the estimation model is generated.”
Examiner’s position is that the claims are directed to an abstract idea that is not integrated into a practical application and without significant more as discussed above. While gathering load data from the punch cannot be performed mentally, gathering load data from the punch is directed to a conventional insignificant extra solution activity (MPEP 2106.05(g); (MPEP 2106.05(d)). Examiner notes that the details disclosed in paragraph 0068 are not recited in the claims.
Applicants further argue “[i]t is evident from reviewing the processes and algorithms associated with the specific examples of estimation units according to embodiments disclosed in the specification of the present application, including the detailed process flow and determinations shown therein, that such analyses would require the aid of a special purpose computer programmed to apply the specialized algorithms disclosed in the specification of the present application.”
Examiner’s position is that according to MPEP 2106(I), “[t]he programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) ("[W]e note that Alappat has been superseded by Bilski, 561 U.S. at 605–06, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 110 USPQ2d 1976 (2014)"); Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). Lastly, eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016).
Accordingly, processes and algorithms associated with the specific examples of estimation units do not make the estimation units special purpose units. Rather, the units are generic processors performing ineligible algorithms and do not take the claim limitations out of the abstract idea.
Applicants further argue “the amended claims require acquisition of measured physical data in a specific machining environment, namely a load curve of a load applied to a punch used together with a die for punching out plate-shaped workpieces. The amended claims further require that the load curve be acquired from a load sensor and, where positional change is used, from a position sensor, and that the estimation model be generated and applied using that measured punch-load curve. Applicant respectfully submits that this is a concrete technological implementation in a specific industrial setting, not claim features directed merely to abstract analysis of generalized information.”
As noted above, while acquisition of measured physical data by a load sensor and cannot be performed mentally, the acquisition of measured physical data by a load sensor is directed to a conventional insignificant extra solution activity of data gathering (MPEP 2106.05(g); (MPEP 2106.05(d)). Thus, the acquisition of measured physical data by a load sensor is not indicative of integration into a practical application (MPEP 2106.05(g)) and the conventional activity is not significantly more (MPEP 2106.05(d)).
Applicants further argue “[i]ndependent claim 1 has been amended in this paper to further clarify that the claimed load curve is a load curve of a load applied to a punch, where the punch is used together with a die for punching out plate-shaped workpieces.”
As noted above, the punch being used together with a die for punching out plate-shaped workpieces is not a particular machine that performs the abstract idea (MPEP 2106.05(b)). Rather, it is an object from which data is gathered to perform the abstract idea. Thus, it is not indicative of integration into a practical application and is not significantly more.
Applicants further argue “[t]he amended claims also clarify that the load curve is acquired based on detection values of a load sensor and, when positional change is used, a position sensor.”
Examiner’s position is that acquiring data based on sensors are directed to insignii8cant extra-solution activities of data gathering and are not indicative of integration into a practical application (MPEP 2106.05(g)).
Applicants further argue “[c]laim 2 has been amended to recite an integral value corresponding to an area of the load curve. These amendments directly reflect the present disclosure, which describes machining device 300 including punch 31 and die 32, sensor 34 including load sensor 35 and position sensor 36, acquisition of the load curve from detection values of sensor 34, and use of the integral value of the load curve as an area-related quantity.”
Examiner’s position is that, in claim 2, “generates the estimation model based on an integral value corresponding to an area of the load curve” is directed to an abstract idea (mental process/mathematical concept). The mere nominal recitation of a generic processor (processor) does not take the claim limitation out of the abstract idea (MPEP 2106.04(a)(2) (III)).
Applicants further argue “[t]he USPTO's "October 2019 Update: Subject Matter Eligibility" reiterated, in the paragraph spanning pages 11-12, the directives that " if the additional limitations reflect an improvement to another technology or technical field, the claim integrates the judicial exception into a practical application and thus imposes a meaningful limit on the judicial exception. No further analysis is required (emphasis added)."”
Examiner’s position is that if the claim limitations reflect a technological improvement, then the improvement is indicative of integration into a practical application pursuant to MPEP 2106.05(a). Pursuant to MPEP 2106.05(a), “[a]n indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.”
Applicants explain that the technical problem is identified in paragraph 0009. Further, according to Applicants, the specification explains the details of an unconventional technical solution (i.e., constructing an estimating model using information on a load) in paragraph 0010. However, the unconventional technical solution is not expressed in the claims. Rather, the claims recite “at least one processor configured to: … generate, based on the load curve and a punch lifetime, the estimation model …”. Thus, the claims do not express an unconventional application of constructing an estimating model using information on a load. Accordingly, they are not indicative of integration into a practical application.
Applicant’s remaining arguments with respect to the technological improvement of the invention have been considered but the examiner maintains that the claims do not express the unconventional technical solution. Accordingly, they are not indicative of integration into a practical application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ueyama et al. (CN 1447752) discloses acquiring a load curve based on detection values of a load sensor (page 10, paragraph 9).
Fukamachi et al. (CN 1448524) discloses acquiring a load curve based on detection values of a load sensor (page 3, paragraph 5).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 September 18, 2026
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