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 .
Amended claims 1 thru 8 have been examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Response to Amendment
The interpretation under 35 U.S.C. 112(f) remains as recited in the previous office action (7/14/2025), and is recited below in this office action.
The amendments to claim 1 overcome the 35 U.S.C. 112(b) rejections from the previous office action (7/14/2025). The 35 U.S.C. 112(b) rejections are withdrawn.
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive. The applicant argues the claim 1 limitations of “transmission by electronic diagnostic unit to the engine control unit, through the connecting means, of adjustment parameters in internal memories of the engine control unit” and “the analysis of responses resulting from the transmission of the adjustment parameters” are not disclosed by Castel. The examiner respectfully disagrees.
The first argument (page 7 paragraph 1) is that Castel use an operator to continue the testing investigation having access to internal memories, meaning that the access to internal memories are not automatic. The applicant states, “This is in direct contradiction to the statement that the tests carried out by the engine control unit are automatic.” (page 7 paragraph 1). A requirement for performing an action automatically versus by an operator is not a patentable limitation. The examiner points to the MPEP 2144.04.III. Automating a Manual Activity, which recites, “In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).” The operator of Castel equates to performing manual activity, and the automatic controls of the claim equates to the automatic means. By merely making an activity automatic does not distinguish it from the manual performance of the same activity. Therefore, Castel teach the claimed “transmission by electronic diagnostic unit to the engine control unit, through the connecting means, of adjustment parameters in internal memories of the engine control unit”.
The second argument by the applicant (page 7 paragraph 2) is directed to order that Castel performs the transmission of information, the analyzing of information and the reception of information. Castel recites, “Subsequently, the computer 2 is placed in a representative environment by the portable diagnostic device 4. For this, the simulation module 40 generates signals identical to the engine environment (temperature, pressure sensor, digital connections, etc.). Then, a series of tests is launched by the simulation module 40, which aim to request all of the inputs of the computer 2.” (translation page 9 second paragraph). The generation of signals for conducting tests equates to the claimed transmission. Castel further recites, “From all the information at its disposal, the portable device 4 diagnoses the computer 2. For this, each value obtained is compared, one by one, with a range of expected values. The range was determined under the nominal conditions of use of the computer 2 in its environment. They are therefore different depending on the computers 2 and the aircraft engines 3.” (translation page 9 third paragraph), and “At the end of the diagnosis E1, the portable device 4 produces a detailed report which indicates all the tests carried out, the test conditions, the expected values and the values obtained, and the results of the tests, for example by means of '' a simplified color code. The report is stored in a memory of the portable diagnostic device 4, according to an optimized organization, for example by computer reference 4 and by test, and it can then be easily retrieved for printing or archiving.” (translation page 9 fourth paragraph). The obtained values equate to the claimed reception, and the diagnosis of the computer and the production of a detailed report equate to the claimed analysis. Castel sends out testing operations to the aircraft, and receives back the results of the testing (claimed reception resulting from the transmission). The claimed analysis is not claimed to be required to occur in any particular order, but would occur after the generation of test signals sent by Castel et al (claimed transmission) because the results of the tests are required to make an analysis of the data.
Based on the above responses to the arguments and the below rejections, the prior art rejections of claims 1 thru 8 are maintained.
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: an electronic diagnostic unit configured to carry out automatic tests, and connecting means configured to connect in claim 1.
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. The claimed electronic diagnostic unit is interpreted as unit 26 of Figure 3 and described in the specification P[0103] thru P[0107]. The claimed connecting means is interpreted as “a single connecting cable 38 which comprises at one end a first connecting plug 38a for connecting to the unit 26 and at an opposite end a plurality of second connecting plugs 38b for connecting to the control unit 16 and/or to elements of the engine 10 intended to be connected to the unit 26” (P0109] and Figure 3)
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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 thru 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Castel et al French Patent Application Publication Number FR-3078791-A1 (translation from the examiner cited in the rejection) (translation provided with the office action of 2/28/2025).
Regarding claim 1 Castel et al teach the claimed method for diagnosing an engine control unit of an aircraft engine by a diagnostic device, a method for diagnosing an aircraft computer using a diagnostic system (translation page 3 bottom of page), the diagnostic device includes:
the claimed electronic diagnostic unit that is autonomous and mobile, the portable device 4 connects to an interface 7 (Figure 1) and “The use of such an interface 7 allows operators, whose skills are closer to the aircraft than to IT, to implement the diagnosis autonomously.” (page 7 bottom of page) , and
the claimed electronic diagnostic unit carries out automatic tests to verify an internal electrical integrity of the engine control unit without simulating flight condition of an engine to which the engine control unit is connected, the object of the invention is to avoid unnecessary removal of an aircraft computer, to provide a single, standard diagnostic tool for quickly simulating the same tests at the foot of the aircraft, to optimize the tests carried out on a computer, and to house the maintenance and loading tools for the computer (page 2 bottom thru page 3 top)
the claimed connecting means to connect the electronic diagnostic unit to the engine control unit of the engine, connection harnesses 5, 60 (Figure 1),
the claimed method is carried out while the aircraft engine is hooked to an aircraft, avoid unnecessary removal of an aircraft computer (page 2 bottom), and the diagnostic system is connected to the aircraft (Figure 1), and comprises the steps of:
the claimed disconnecting at least one harness connected the engine control unit to items of equipment, “during a computer 2 diagnosis, the computer 2 is disconnected from the aircraft 3” (page 9 first paragraph),
the claimed plugging the connection means to the electronic diagnostic unit and the engine control unit in place of the at least one disconnected harness, and “then connected to the connection interface 44 via the connection harness 5 to the computer 2” (page 9 first paragraph), interface 44 for connecting the computer 2 to the diagnostic device 4 and interface 46 for connecting the aircraft 3 to the diagnostic device 4 (Figure 1 and page 4 bottom), and
the claimed analyzing the internal electrical integrity of the engine control unit by carrying out automatic tests, “the portable device 4 is powered up, then the user interface 7 is started and automatically connects to the on-board processor 42 via the external communication module 70” (page 9 first paragraph), and “From all the information at its disposal, the portable device 4 diagnoses the computer 2. For this, each value obtained is compared, one by one, with a range of expected values. The range was determined under the nominal conditions of use of the computer 2 in its environment. They are therefore different depending on the computers 2 and the aircraft engines 3.” (page 9 third paragraph), comprising:
the claimed transmission by the electronic diagnostic unit to the engine control unit of adjustment parameters in internal memories of the engine control unit, “Subsequently, the computer 2 is placed in a representative environment by the portable diagnostic device 4. For this, the simulation module 40 generates signals identical to the engine environment (temperature, pressure sensor, digital connections, etc.). Then, a series of tests is launched by the simulation module 40, which aim to request all of the inputs of the computer 2.” (page 9 second paragraph), and “If the tests are not conclusive (ie erroneous diagnosis), the operator can then continue his investigations with reception software, stored in the on-board processor 42. This software allows a more in-depth investigation because it allows to detail the information sent by computer 2, to access the internal memories and carry out all maintenance operations (reset, analysis of meter values, access to conformations, etc.).” (page 9 fifth paragraph), and
the claimed reception by the electronic diagnostic unit of the responses of the engine control unit and the analysis of the responses to deduce a health status of the engine control unit, ““From all the information at its disposal, the portable device 4 diagnoses the computer 2. For this, each value obtained is compared, one by one, with a range of expected values. The range was determined under the nominal conditions of use of the computer 2 in its environment. They are therefore different depending on the computers 2 and the aircraft engines 3.” (translation page 9 third paragraph), “At the end of the diagnosis E1, the portable device 4 produces a detailed report which indicates all the tests carried out, the test conditions, the expected values and the values obtained, and the results of the tests, for example by means of '' a simplified color code. The report is stored in a memory of the portable diagnostic device 4, according to an optimized organization, for example by computer reference 4 and by test, and it can then be easily retrieved for printing or archiving.” (translation page 9 fourth paragraph), and “If the test is successful, the computer 2 is deemed to be in conformity and the problem must then be analyzed from the aircraft harness side 6.” (page 9 fifth paragraph).
Castel et al do not explicitly recite that the claimed transmission is performed automatically, but the MPEP 2144.04.III. recites, “In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).” The automatic performance of diagnostics (claimed) does not distinguish over the performance of the diagnostics by an operator of Castel et al (manual activity). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use an operator’s decision for testing with the diagnostic system for an aircraft computer of Castel et al in order to, with a reasonable expectation of success, allow the operator final say on the tests that need to be performed (Castel et al translation page 9 fifth paragraph).
Regarding claim 2 Castel et al teach the claimed disconnecting at least one harness comprises disconnecting at least one first harness connecting engine control unit to items of equipment, and the claimed disconnecting a second harness connecting the engine control unit to the engine, and the claimed first harness connected to input ports and the second harness connected to an output port of the engine control unit, “during a computer 2 diagnosis, the computer 2 is disconnected from the aircraft 3” (page 9 first paragraph), the computer 2 is connected to the diagnostic device 4 via harness 5 to interface 44 and the aircraft 3 is connected to the diagnostic device 4 via harness 60 to interface 46 (Figure 1), and the computer connections of the harnesses 5 and 60 act as input and output of the computer 2 (Figure 1).
Regarding claim 3 Castel et al teach the claimed step of plugging in the connecting means to the electronic diagnostic unit comprises plugging in the connecting means to the input ports and output ports of the engine control unit, “the computer 2 is disconnected from the aircraft 3, then connected to the connection interface 44 via the connection harness 5 to the computer 2” (page 9 first paragraph), and interface 44 for connecting the computer 2 to the diagnostic device 4 and interface 46 for connecting the aircraft 3 to the diagnostic device 4 (Figure 1 and page 4 bottom).
Regarding claim 7 Castel et al teach the claimed during the tests transmitting by the electronic diagnostic unit to the engine control unit the physical quantities that inhibit the appearance of a false fault in the internal memories of the engine control unit, “At the end of the diagnosis E1, the portable device 4 produces a detailed report which indicates all the tests carried out, the test conditions, the expected values and the values obtained, and the results of the tests, for example by means of '' a simplified color code. The report is stored in a memory of the portable diagnostic device 4, according to an optimized organization, for example by computer reference 4 and by test, and it can then be easily retrieved for printing or archiving.” (page 9 fourth paragraph), and “If the tests are not conclusive (ie erroneous diagnosis), the operator can then continue his investigations with reception software, stored in the on-board processor 42. This software allows a more in-depth investigation because it allows to detail the information sent by computer 2, to access the internal memories and carry out all maintenance operations (reset, analysis of meter values, access to conformations, etc.). If the test is successful, the computer 2 is deemed to be in conformity and the problem must then be analyzed from the aircraft harness side 6.” (page 9 fifth paragraph).
Claim(s) 4 thru 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Castel et al French Patent Application Publication Number FR-3078791-A1 (translation from the examiner cited in the rejection) (translation provided with the office action of 2/28/2025) in view of Gervais Patent Application Publication Number 2010/0073007 A1.
Regarding claim 4 Castel et al do not explicitly teach the claimed two phases of verification of the input and output of the engine control unit for internal electrical integrity, but does provide an indicator on the portable device 4 to ensure that the connections to the computer 2 are effective (page 7 middle of page). A verification of the connections would be necessary in order to perform an accurate test of the controller or computer.
Gervais teaches, “The main functions of the circuit switch and polarity analyzer module 37 are to perform a continuity test and an active electronic components verification test. Also, this module 37 performs all DC testing of the transport vehicle wiring harness 27. The module 37 contains the following two sub-modules: a circuit switch analyzer and a polarity analyzer.” P[0071], and “The circuit analyzer performs a continuity check for all possible harness connections and produces a mapping connection, which is stored in a table. The polarity analyzer performs a test to verify any active components like transistor, diode or semi-conductors in the wiring harness 27. The polarity analyzer verifies and determines the direction of the current and gathers all the raw data required by the Al module 15.” P[0072]. The continuity test and active electronic components verification test of Gervais equate to the claimed first and second verification phases when combined with the indication of effective connections of Castel et al. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the diagnostic system for an aircraft computer of Castel et al with the continuity test and active electronic components verification test of Gervais in order to, with a reasonable expectation of success, reduce the time and the cost of the testing procedure (Gervais P[0014]) and automate the system and method to eliminate human error (Gervais P[0015]).
Regarding claims 5 and 6 Castel et al teach the claimed transmitting adjustment parameters to the engine control unit via the input ports and via the output port, and measuring signals generated directly from the internal memories of the engine control unit and in the software interfacing between an operating system and an application software package of the engine control unit, “the computer 2 is placed in a representative environment by the portable diagnostic device 4. For this, the simulation module 40 generates signals identical to the engine environment (temperature, pressure sensor, digital connections, etc.) . Then, a series of tests is launched by the simulation module 40, which aim to request all of the inputs of the computer 2. Finally, the simulation module 40 acquires the signals emitted by the computer 2 in reaction to the tests, and reads thus the behavior of the computer 2 on the communication module 48.” (page 9 second paragraph), “once the connections have been made, the insulation and / or continuity test is implemented by the test simulation module 40. On the same principle as the computer test 2, each strand of the aircraft beam 6 is tested one by one to validate its insulation (no contact with the other strands) and its continuity (the signal correctly crosses the strand).” (page 9 bottom of page), “The test scenarios loaded into the simulation module 40 can be coded in any known uncompiled format. This makes it possible to increase the simplicity of implementation, but also to modify the tests at any time to enrich them or alternate them in order to fully cover the need for diagnosis.” (page 10 paragraph 4), and “The system 1 is capable of testing a computer 2 and its software under conditions representative of use on aircraft 3.” (page 10 paragraph 6).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Castel et al French Patent Application Publication Number FR-3078791-A1 (translation from the examiner cited in the rejection) (translation provided with the office action of 2/28/2025) in view of Colborn Patent Number 4,567,756.
Regarding claim 8 Castel et al teach the claimed connecting means comprise a single connection cable having at one end a first connecting plug to connect with the electronic diagnostic unit and at an opposite end a plurality of second connecting plugs to connect to the engine control unit, “a connection harness configured to connect the connection interface of the computer to the diagnostic device with the aircraft computer” (page 3 middle).
Castel et al do not explicitly teach the claimed plurality of second connecting plugs, but do recite that connection harness can be implemented in several embodiments (page 6 bottom). Colborn teaches, a wire harness for diagnostics (electronic engine control system analyzer) includes multiple connectors on one end (Figures 1 and 2). Cable or wire harnesses having multiple connectors on one end (or both ends) are common and well known in the art. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the diagnostic system for an aircraft computer of Castel et al with the wire harness having multiple connection ends of Colborn in order to, with a reasonable expectation of success, provide more efficient, less expensive testing and analyzing services for an extensive variety of vehicle electronic engine control systems (Colborn column 1 lines 41 thru 43).
Related Art
The examiner points to Elshaer PGPub 2012/0049886 A1 as related art, but not relied upon for any rejection. Elshaer is directed to tests to evaluate the electrical integrity of the generator and identify potential problems (P[0003]), using a testing module (Figures 2 and 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE W HILGENDORF whose telephone number is (571)272-9635. The examiner can normally be reached Monday - Friday 9-5:30.
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/DALE W HILGENDORF/Primary Examiner, Art Unit 3662