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 .
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1149 filed 11/18/2025. This IDS has been considered.
Response to Arguments
Applicant’s amendments to the claims have overcome the prior art rejections.
However, Applicant’s amendments and remarks regarding the rejection under §101 are not persuasive.
Applicant argues in the first full paragraph of page 9 that claim 1 is directed towards a “weighing device and therefore is an actual apparatus that performs a function”. Examiner reminds Applicant that the two-pronged inquiry guides Examiners to determine whether the claim is directed to an abstract idea through a series of considerations regardless of the statutory category of the claim. See MPEP §2106.03(II).
Applicant argues on page 9, second full paragraph, that claim 1 sets forth an algorithm which is an improvement to a generic computer and describes the simulation models, the training device and the function simulator as the technological improvement as they allow for improved accuracy. However, courts have ruled that the abstract idea cannot be the technological improvement itself. See MPEP §2106.05(a) “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP §2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)).” In the instant case, the algorithms are providing the improvement to the technology and they are implemented on generic computer components. MPEP §2106.05(a)(II) goes on to explain, “[t]o show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.”
Applicant argues in the final full paragraph of page 9 that the claimed simulator is much easier and faster which is also a technological improvement. However, there is no evidence in the specification that suggests how this is achieved and appears to mere assert that the solves a problem. MPEP §2106.05(a)(I) states, “[i]f it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide 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. An 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. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016).”
Applicant argues in the paragraph spanning pages 9 and 10 that the output of an error-free signal by the analytical device this provides a practical application of the invention. However, courts have ruled that mere data output is insufficient to integrate the abstract idea into a practical application and is instead considered insignificant extra-solution activity. See MPEP §2105.05(g) (see consideration (3), “Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015)” and “insignificant application”: printing or downloading generated menus, Ameranth, 842 F.3d at 1241-42, 120 USPQ2d at 1854-55.”
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, 2, 4-10, 12, and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Legal Framework
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101 and further updated this guidance in October 2019. This guidance is now found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly Sections 2103 through 2106.07(c). See MPEP §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020)
Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)) (“Step 2A, Prong Two”).
2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Analysis
We consider the claim as a whole giving it the broadest reasonable construction as one of ordinary skill in the art would have interpreted it in light of the Specification at the time of filing.
Th Examiner finds, under Step 1 of the 2019 Revised Guidance, that claims 1, 2, and 4-9, are directed to an apparatus and claims 10, 12, and 13 are directed to a method and, therefore, all claims recite a statutory category of invention.
Revised Step 2A, Prong One –recites a judicial exception
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Memorandum instructs us first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. We primarily focus here on the first and third groupings—mathematical concepts and mental processes.
In independent claim 1, Examiner finds the claim recites the following limitations which under broadest reasonable interpretation fall into the categories of mathematical concepts (formulas, algorithms, calculations): “determine a force measured with the weighing device on the basis of a weight measuring signal”, “a model of the weighing device simulating at least one specific error of measurement of the weighing device”, “one or more model parameters with which the weighing device is modelled” and “converts the weight measuring signal into a weight signal or vice versa and the characteristic curve module has characteristic curve parameters which are determined by means of the training device during the training process”.
Therefore, claim 1 recites one or more abstract ideas.
In independent claim 6, Examiner likewise finds the claim recites the following limitations which under broadest reasonable interpretation fall into the categories of mathematical concepts (formulas, algorithms, calculations): “determine a force measured with the weighing device on the basis of a weight measuring signal”, “a model of the weighing device simulating at least one specific error of measurement of the weighing device”, “one or more model parameters with which the weighing device is modelled” and “converts the weight measuring signal into a weight signal or vice versa and the characteristic curve module has characteristic curve parameters which are determined by means of the training device during the training process”.
Therefore, claim 6 recites one or more abstract ideas.
Turning now to independent claim 10, the Examiner finds the claim recites the following limitations which under broadest reasonable interpretation fall into the categories of mathematical concepts (formulas, algorithms, calculations): “determining…the force measured with the weighing device on the basis of the weight measuring signal” and “converting…the weight measuring signal into a weight signal using a digital function simulator of the weighing device to simulate the weighing device with its error effects and thereby compensating the errors in the weight signal”.
Therefore, claim 10 recites one or more abstract ideas.
Revised Step 2A, Prong Two – Practical Application
Having determined that claims 1, 6 and 10 recite the abstract idea of mathematical concepts, we next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); 2019 Revised 101 Guidance, 84 Reg. at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application).
In the current instance, there are no limitations integrating the abstract idea into a practical application as there is no improvement to the functioning of a computer or to any other technology or technical field, it is not used by a particular machine or to effect a particular transformation. All abstract ideas are carried out on generic computer components and the abstract idea itself is providing the improvement. See MPEP §2106.05(a).
Examiner notes that the structural limitations of claim 1, such as a central analytical unit, a load cell, a digital function simulator and a training device are all generic computer hardware components recited at the highest level of generality and therefore do not impose any meaningful limitations on the claim since a load cell and some generic computer components would be necessary for any application of the abstract idea. Therefore, the collection of elements do not constitute any “particular machine”. The Supreme Court has ruled that “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention”. Alice Corporation Pty. Ltd. v. CLS Bank International 573 U.S. __, 134 S. Ct. 2347 (2014).
Claim 6 recites the same generic computer components in addition a plurality of load cells integrated with rigid connections which are likewise not enough to constitute a particular machine as they are components recited at the highest possible level of generality.
Similarly, claim 10 claims the use of a load cell and an analytical unit, which for the reasons given above do not constitute a particular machine but rather generic elements recited at the highest level of generality.
Step 2B–Inventive Concept
Because the Examiner has determined that independent claims 1, 6 and 10 are directed to an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, we look to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 2019 Revised 101 Guidance, 84 Fed. Reg. at 56. That is not the case here. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”).
Regarding independent claim 1, the claim recites a training process in which reference measuring signals are generated via one or more reference loads. However, this appears to be mere data gathering necessary in order to carry out the abstract idea of applying the characteristic curve to the weight measuring signals and is therefore considered insignificant extra-solution activity. Similarly, generic output of the result of the abstract idea is likewise considered insignificant extra-solution activity. See MPEP §2106.05(g).
The newly amended claim also recites each of the error simulation modules is adapted to be switched off which is well-known, routine and conventional generic computer hardware functionality that does nothing more than generally link the abstract idea to a field of use. See MPEP §2106.05(d) & §2106.05(h).
Independent claim 6 requires the use of a plurality of load cells integrated into the weighing device with rigid connections. This limitation does not impose and sort of meaningful limitation to the abstract idea and similarly only generally links the abstract idea to a technological environment. See MPEP §2106.05(h).
Independent claim 10 recites newly amended claim also recites each of the error simulation modules is adapted to be switched off which is well-known, routine and conventional generic computer hardware functionality that does nothing more than generally link the abstract idea to a field of use. See MPEP §2106.05(d) & §2106.05(h).
Therefore, because there are no additional elements that can provide an inventive concept, we conclude that claims 1, 6 and 10 do not recite patent eligible subject matter.
Regarding dependent claims 2, 8, 9, 12, and 13 further limit and define the claimed abstract ideas and are therefore not patent eligible.
Regarding claims 4, 5, and 7, the claim recites multiple generic sensors and their configurations which also comprises a well-known, routine and conventional scale set-up that does not impose and further meaningful limitation on the claims. A weighing device comprising multiple load cells essentially constitutes a field of use application. See MPEP §2106.05(d) and §2106.05(h).
Claim 11 constitutes mere data gathering described above in accordance with MPEP §2106.05(g).
Applying the guidance set forth in the Memorandum, the Examiner concludes that claims 1, 2, 4-10, 12, and 13 do not recite patent-eligible subject matter.
Allowable Subject Matter
There are no prior art rejections for claims 1, 2, 4-10, 12, and 13. However, the Examiner cannot comment on their allowability until the outstanding rejections under §101 are addressed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached T-F 7-4 EST.
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/NATALIE HULS/Primary Examiner, Art Unit 2863
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