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 .
Response to Arguments
112(f) Interpretation
The claim limitations invoke the 112(f) interpretation because under the broadest and most reasonable interpretation in view of applicant’s file specification, a processor is a known computer component and such elements inherently have co-extensive features like receiving, relying, and transmitting, according to MPEP 2181(II)(B).
The legal standard for determining if a claimed phrase, that does not recite "means," invokes § 112 para. 6 was set forth in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.2015). In the section of the Williamson opinion designated as en bane, 10 and with respect to claim terms that do not recite the word "means," Williamson held: When a claim term lacks the word "means," the presumption can be overcome and§ 112, para. 6 will apply if the examiner demonstrates that the claim term fails “to function without reciting sufficient structure for performing that function.” Watts [v. [v. XL Sys., Inc.], 232 F.3d [877] at 880. MPEP 2161.01.
The claims thereby invoke a112(f) interpretation because the processor, itself, is not sufficient structure for performing the claimed functions; as these functions require additional programming to perform the algorithmic process of generating, estimating and machine learning. An off-the-shelf processor does not have the structural ability to perform the claimed functions without special programming. Therefore, the instant claim, as described below, require special programming to perform the claimed computer implemented means-plus-funciton.
112 Rejections
Based on applicant’s filed amendments, the previously set forth 112 rejections have been withdrawn and replaced with the following rejections below. Due to a lack of disclosure of the claimed estimation, generation and machine learning algorithmic steps, the claims are found to lack clarity and possession at the time of filing.
101 Rejections
Applicant initially argues the claims are not directed towards the abstract idea groupings of either mathematical or mental concepts, however, the examiner respectfully disagrees.
The claims explicitly recite a mathematic process of multiplication. Furthermore, the claimed estimation and generation limitations appear to be capable of being performed in the human mind by simply observing the results of these mathematical operations and building a model; as the specification does not detail the specific process of model generation. Consequently, the claims lack sufficient structural limitations to distinguish them from simple mathematic operations and mental processes rooted in observation and judgement.
Applicant argues claimed features could not be practically performed in the human mind without the need of associated hardware and special purpose computer programmed to apply the specialized algorithms; however this was not found persuasive. Although, the examiner agrees the generically claimed processor would require special programming to perform the claimed functions, as detailed in the 112(f) interpretation below. These specific, complex algorithms are not recited by the claims nor are they disclosed in a manner that supports applicant’s assertions. Paragraphs [0041-0055] discloses where the waveforms are generated; however, this section of paragraphs do not prevent the recited limitations from falling into the abstract idea grouping of mathematical concepts due to a lack of complex specifics, as argued by applicant. The disclosure generically states the machine learning process uses these waveforms for the processing state estimations through various and undisclosed conversions based on undisclosed models; [0045-0048]. Further, the disclosure details generic mathematical operations of multiplication and normalizing a generated graph from the waveform but does not define these models in a manner that demonstrates applicant had possession of the claimed invention. Therefore, the examiner finds no complex algorithmic support that details mathematical operations that provide an improvement to a processor. The claims, under the broadest reasonable interpretation in light of applicant’s disclosure, amount to mere mathematical operations and concepts implemented on a generic processor; as the result of the abstract idea has no impact or improvement to that generically claimed computer environment. These computer elements thereby reads as mere tools tasked to perform the abstract ideas.
With respect to applicant’s reliance on example 38, the instant claims, in fact, recited the mathematic process of multiplication. This isn’t a “based on” limitation. Although there isn’t an explicit equation recited, this limitation falls directly into the abstract idea grouping of mathematical concepts. Therefore, Example 38 is not an equivalent example to applicant’s instant claims; as unlike Example 38, which was found not to be directed towards an abstract idea, applicant’s instant claims are considered to be directed towards an abstract idea.
Applicant further argues that the claims improve state estimation devices and model generation methodologies. This is not persuasive. The claimed "devices" are generic processors functioning as tools to perform the previously identified abstract ideas [Step 2A]. Under Step 2B, the abstract concepts themselves cannot constitute an improvement to technology; rather, the claim must include additional elements that amount to "significantly more" than the abstract idea.
Here, the "devices" are not meaningfully improved by the claimed processes. Furthermore, the applicant’s assertion (Remarks, pp. 22-23) that the machine learning models are improved is not supported, as the disclosure lacks specific details regarding the models themselves, let alone a technical improvement recited in the claim.
Applicant goes on to argue the instant claims clearly integrate the abstract idea into a practical application, citing the additional elements found within the claim; however the examiner disagrees. The examiner finds the recited additional elements generically link the abstract idea to a field of use, as the alleged functional computer improvement does nothing to improve these additional elements. The alleged improvements to reduced computational load thereby contributing to a functional improvement to the computer appears unfounded by the claim language. The claims do not recite a specific asserted improvement in computer capabilities. Therefore, these elements appear to be merely tasked as tools while the limitations related to where the waveform come from generically link the abstract idea to a field of use. Consequently, unlike Enfish or McRO, the instant claims do no recite a specific technological mechanism that improves how the processor operates. Therefore, the additional elements, neither alone or in combination, integrate the abstract idea into a practical application or provide significantly more.
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:
claim 1 recites, “a processor that performs…estimating the processing state from the first conversion data based on the first estimation model”; however, the examiner was unable to map the claimed function to corresponding algorithmic structure in the specification;
claim 2 recites, “an estimation model generating section that generates generating a second estimation model for estimating the processing state by the first device and a third estimation model for estimating the processing state by the second device, wherein the estimation model generation device unit generates the second estimation model by performing machine learning by using teacher data having the third waveform data as an explanatory variable and the processing state as a target variable in association with each other, and generates the third estimation model by performing machine learning by using teacher data having the second waveform conversion data as an explanatory variable and the processing state as a target variable in association with each other”; however, the examiner was unable to map the claimed function to corresponding algorithmic structure in the specification; and
claim 6 recites, “a processor that performs…estimating the processing state from the fourth waveform data based on the third estimation model”; however, the examiner was unable to map the claimed function to corresponding algorithmic structure in the specification.
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 1, 3-6 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.
With respect to claims 1 and 4, the recited processor and functions has been found to invoke 112(f) computer implement means-plus-function. However, applicant’s filed specification does not detail how the “processor”, which appears to be merely a generic processor, performs the computer implement means-plus-function language of “estimating”, “generat[ing]”.
Further, the specification does not disclose the specifics of the machine learning algorithm; for example, if the ML algorithm uses linear regression, logistic regression, decision trees, random forest, or support vector machines for perform the machine learning. Therefore, the examiner is unsure of the scope of the claim.
Claim 6 is unclear regarding its dependency and scope. The claim recites a "processing state estimation device" comprising storage that stores a third estimation model generated by the device of Claim 4. It is unclear whether Claim 6 intends to further define the device of Claim 4 or claim a separate, distinct device.
This ambiguity affects the limitation of "acquiring the fourth waveform data," which is originally recited in Claim 4. Furthermore, it is unclear what elements of Claim 4 are incorporated into Claim 6, specifically regarding the "processor" recited in line 5. Is this a second processor distinct from the processor claimed in Claim 4? The specification does not appear to support multiple processors. Clarification is required.
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 and 3-6 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.
As described above, the disclosure does not provide adequate structure to perform the claimed function of performing machine learning by using teacher data, seen in claims 1 and 4 and estimating the processing state, seen in claims 2 and 6. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Further, there does not appear to be adequate support for the generating and estimating limitations of the claim; as applicant’s disclosure does not provide details of the algorithmic steps involved.
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 and 3-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites generating first conversion data by multiplying the third waveform by a first coefficient calculated by a relationship between the third waveform and the first waveform and multiplying the fourth waveform by a second coefficient calculated by a relationship between the fourth waveform and the second waveform; and estimating the processing state from the first conversion data based on the first estimation model which has been identified as falling into the abstract idea grouping of mathematical concepts. As currently claimed, the processor is performing the mathematical operation of multiplying the third waveform by a first coefficient calculated by a relationship between the third waveform and the first waveform. This limitation directly recites a mathematical operation performed by a generic processor. Further, the estimation step, as best understood by the examiner in light of the above 112 rejections, may include a mathematical operation or may simply be a mental process relying on the mental process of observation and judgment of the results from the mathematical operations.
This judicial exception is not integrated into a practical application because based on the broadest reasonable interpretation of the claim, the recited “[a] processing state estimation device that estimates a processing state of laser processing in a second device different from a first device based on a first estimation model, wherein first thermal radiation, first visible light, first reflected light, and first laser light are observed from a workpiece during laser processing by the first device, and second thermal radiation, second visible light, second reflected light, and second laser light are observed from a workpiece during laser processing by the second device, and wherein the first estimation model for estimating the processing state by the first device uses a first waveform data including a first waveform and a second waveform for at least two of first thermal radiation, first visible light, first reflected light, and first laser light as machine learning by using teacher data having the first waveform data as an explanatory variable and the processing state as a target variable in association with each other is generated” does not further define the processing state estimation device but rather generically link the abstract idea to a field of use; as these elements are not recited in a manner that define them as part of the device itself. Therefore, these elements were found to merely link the abstract idea to a field of use, as neither the result or performance of the abstract idea improves or betters these additional elements. MPEP 2106.05(h)
Further, the claim explicitly states [a] processing state estimation device…comprises a storage and a processor. These elements are considered to be generic computer components tasked as tools for performing the abstract idea in a computer environment, as they are neither improved or bettered by the result of the abstract idea. MPEP 2106.05(a)
Therefore, the identified additional elements fail to integrate the abstract idea into a practical application.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because none of the additional elements, alone or in combination, are improved or bettered by the performance of the abstract idea. The generically claimed computer elements are simply tasked as tools for performing the abstract idea while the acquiring step merely feeds the abstract the needed data to perform the identified abstract idea. MPEP 2106.05(g)
Lastly, the storing the result of the abstract idea limitation does not improve the storage unit itself, and merely reads like an instruction to apply the exception without amounting to significantly more. MPEP 2106.05(f)
Claims 3 and 5 further defines the abstract idea falling into the abstract idea grouping of mathematical concepts, as a ratio between averages for the waveforms used to determine the coefficients is considered to be a mathematical process. Therefore, the claim fails to provide significantly more or integrate the abstract idea into a practical application.
Claim 4 recites generating second conversion data by multiplying the fifth waveform by a third coefficient calculated by a relationship between the fifth waveform and the seventh waveform and multiplying the sixth waveform by a fourth coefficient calculated by a relationship between the sixth waveform and the eighth waveform; generating a second estimation model for estimating the processing state by the first device and a third estimation model for estimating the processing state by the second device; wherein the estimation model generation unit generates the second estimation model by performing machine learning by using teacher data having the third waveform data as an explanatory variable and the processing state as a target variable in association with each other, and generates the third estimation model by performing machine learning by using teacher data having the second conversion data as an explanatory variable and the processing state as a target variable in association with each other which has been identified as falling into the abstract idea grouping of mathematical concepts. As currently claimed, the processor is performing the mathematical operation of multiplying the fifth waveform by a third coefficient calculated by a relationship between the fifth waveform and the seventh waveform and multiplying the sixth waveform by a fourth coefficient calculated by a relationship between the sixth waveform and the eight waveform. These limitations directly recite a mathematical operation performed by a generic processor. Further, the estimation and generation steps, as best understood by the examiner in light of the above 112 rejections, may include a mathematical operation or may simply be mental processes based on observation and judgment in light of the results of the mathematical operations. Further, it is well known that generating and estimating a model heavily involves mathematics, primarily through algorithms based on linear algebra, calculus, probability and statistics.
This judicial exception is not integrated into a practical application because a processing state of laser processing, a first and second device, of third thermal radiation, third visible light, third reflected light, and third laser light, workpiece, two of fourth thermal radiation, fourth visible light, fourth reflected light, and fourth laser light, and second device are considered to be additional elements that merely links the abstract idea to a field of use, as neither the performance or result of the abstract idea improves upon the processing state of laser processing, second thermal radiation, second visible light, second reflected light, second laser light, workpiece or device. MPEP 2106.05(h)
The claim also recites acquiring waveform data including a fifth waveform and sixth waveform. The examiner finds the identified additional elements to be merely performing the insignificant pre-solution activity of data gathering, as neither the performance or result of the abstract idea improves the data gathering acquiring section. MPEP 2106.05(g)
Lastly, the claimed devices, processor and storage read as generically claimed computer elements acting as tool for performing the identified abstract idea; as neither performance or result of the abstract idea improves their operation. MPEP 2106.05(a)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because none of the additional elements, alone or in combination, are improved or bettered by the performance of the abstract idea. The generically claimed computer elements are simply tasked as tools to perform the identified abstract idea. Lastly, the storing of the result of the abstract idea does not improve the storage itself, and merely reads like an instruction to apply the exception without amounting to significantly more. MPEP 2106.05(f)
Claim 6 further defines the additional elements of a storage that stores a third estimation model generated by the estimation model generation device according to Claim 4 and a processor. These generically claimed computer elements, i.e. storage and processor, are merely acting as tools for performing the abstract idea without providing significantly more or integrating the abstract idea into a practical application; as the result or performance of the abstract idea has no impact on these generically claimed computer elements.
The claim also recites an additional element of acquiring fourth waveform. The examiner finds the identified additional element step as merely performing the insignificant pre-solution activity of data gathering, as neither the performance or result of the abstract idea improves the data gathering acquiring section. MPEP 2106.05(g)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kobayashi et al. (WO 2014/155191A2) teaches a similar system that uses light radiated back from a workpiece during laser welding to inspect the performance of the welding operation.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW G MARINI whose telephone number is (571)272-2676. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MATTHEW G MARINI/ Primary Examiner, Art Unit 2853
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