DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 5-7 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-13 of copending Application No. 17/922,871(reference application) in view of Senda, JP 2019185422. Although the reference application does not disclose the first and second model as claimed, and retraining based on the generating the label, Senda discloses the said limitations, as shown below in the rejection, so as to predict failure of mechanical equipment with better accuracy (Paragraph [0011]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 2, 5-7 and 9 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 recites the limitation “and in response to a predetermined quantity of anomaly data provided with the label related to the unknown anomaly cause being added to the memory, retrain the second model by using the label related to the unknown anomaly cause,” but said limitation is not supported in the original disclosure. Likewise, the dependent recites the limitation “the processor is configured to, in response to that a predetermined quantity of anomaly data provided with a label related to a same anomaly cause is added to the memory, retrain the second model by using the label related to the same anomaly cause,” but said limitation is not supported in the original disclosure.
To further explain, foremost, the original disclosure is absence of the words “training” or “retraining”. Furthermore, note that retraining and relearning (which is disclosed in the original disclosure) is not exactly the same, where “retraining” is a standard and commonly used term in machine learning to describe updating a model with new data, with 1) full retraining, where rebuilding the model from scratch using both old and new data or 2) incremental retraining, where updating the existing model using only new data. In contrast, relearning is not a standard term and it typically means incremental learning. Finally, if the Applicant views retraining same as relearning, the purpose of amending as claimed, is not understood.
Previous rejection is withdrawn in view of the Applicant’s amendment filed on 11/20/2025
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, 5-7 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “create, using the anomaly data stored in the memory, a first model configured for determining whether or not the anomaly data is anomaly data that is based on a known anomaly cause, a second model that is different from the first model and separately trained from the first model, the second model configured for classifying which anomaly cause the anomaly data belongs to: determine, using the first model, whether or not the anomaly data is based on a known anomaly cause, and classify, using the second model, which anomaly cause the anomaly data is based on, to generate a classification result, and in response to determining that the anomaly data is based on an unknown anomaly cause, generate a label related to the unknown anomaly cause, retrain the second model by using the label related to the unknown anomaly cause” are abstract ideas, as they involve mental process, under the BRI. Similar rejections are made for the remaining dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “an anomaly data acquisition unit configured to acquire, as anomaly data, data related to a physical quantity detected when an anomaly occurred in an industrial machine, an anomaly data storage unit configured to store the anomaly data,” and “predetermined quantity of anomaly data provided with the label related to the unknown anomaly cause being added to the memory”, but said limitations, recited at high level of generality, are merely directed to insignificant data collection activity and recitation of general purpose storage for storing data. The claims additionally recite “a classification result output unit configured to output a combination of the classification result provided by the anomaly data classification unit and the label provided by the label generation unit,” but said limitation, recited at high level of generality, are merely directed to insignificant post-solution activity. The claims do not improve the functioning of any devices, and do not improve other technology. At most, the claims are an improvement in the abstract idea of classifying the anomaly. However, an improved abstract idea or new abstract ideas are nonetheless abstract ideas and not eligible under the 101. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract idea is not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “an anomaly data acquisition unit configured to acquire, as anomaly data, data related to a physical quantity detected when an anomaly occurred in an industrial machine, an anomaly data storage unit configured to store the anomaly data,” and “predetermined quantity of anomaly data provided with the label related to the unknown anomaly cause being added to the memory,” but said limitations, recited at high level of generality, are merely directed to insignificant data collection activity and recitation of general purpose storage for storing data, that are well-understood, routine and conventional. The claims additionally recite “a classification result output unit configured to output a combination of the classification result provided by the anomaly data classification unit and the label provided by the label generation unit,” but said limitation, recited at high level of generality, are merely directed to insignificant post-solution activity, that is also well-understood, routine and conventional. As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Senda, JP 2019185422 (English machine translated version-as best as understood) (hereinafter Senda)
Regarding Claim 1. Senda discloses an anomaly classification device that classifies an anomaly occurring in an industrial machine (Abstract), the anomaly classification device comprising:
a processor (Paragraph [0013, computer) configured to acquire anomaly data related to a physical quantity detected when an anomaly occurred in an industrial machine (Paragraph [0010], sensors installed in the machinery and equipment; Paragraph [0095]);
a memory storing the anomaly data (Paragraph [0041]);
wherein the processor is configured to create, using the anomaly data stored in the memory, a first model configured for determining whether or not the anomaly data is anomaly data that is based on a known anomaly cause (Paragraph [0010], normal model) and a second model that is different from the first model and separately trained from the first model (Paragraph [0010], abnormality classification model, based on normal mode, that is separately trained. Note: this particular limitation is different from what was submitted as potential amendment for the interview taken place on 11/07/2025), the second model configured for classifying which anomaly cause the anomaly data belongs to, determine, using the first model (Paragraph [0010], abnormality classification model, based on normal model) whether or not the anomaly data is based on a known anomaly cause (Paragraphs [0025]-[0026], abnormality modeling and past abnormality records; Paragraph [0045], abnormality model); and classify, using the second model which anomaly cause the anomaly data is based on, to generate a classification result, (Paragraph [0010], classification result, which includes the abnormal pattern, Paragraph [0024], type of abnormality; Paragraphs [0053]-[0055]; [0061]-[0075]), and the processor is further configured to, in response to determining that the anomaly data is based on an unknown anomaly cause, generate a label related to the unknown anomaly cause (Paragraph [0055], for unknown event, labels it as the category ID “001”), and in response to a predetermined quantity of anomaly data provided with the label related to the unknown anomaly cause being added to the memory, retrain the second model by using the label related to the unknown anomaly cause (Paragraph [0055]-[0056], [0086], additional learning. Note: here, the examiner treated additional learning or relearning, same as retraining.)
Regarding Claim 2. Senda discloses a processor is configured to acquire data related to the physical quantity detected in the industrial machine (Paragraph [0010], sensors installed in the machinery and equipment; Paragraph [0095]); and
determine whether an operation of the industrial machine is normal or abnormal based on the data acquired by the processor, and acquire, as the anomaly data, data determined as abnormal by the processor (Paragraph [0010])
Regarding Claim 5. Senda discloses a processor configured to output a combination of the classification result and the label (Paragraphs [0026]; [0051], [0079], [0086]; [0010])
Regarding Claim 6. Senda discloses the processor is configured to acquire a label to be provided to anomaly data via a user interface (Paragraphs [0056]; [0086])
Regarding Claim 9. Senda discloses the processor is configured to, in response to that a predetermined quantity of anomaly data provided with a label related to a same anomaly cause is added to the memory, retrain the second model by using the label related to the same anomaly cause (Paragraph [0086], relearn once it determines additional learning is necessary or predetermined number being one)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Senda, JP 2019185422 in view of Spiro et al., US-PGPUB 2018/0174067 (hereinafter Spiro)
Regarding Claim 7. Senda discloses the processor is configured to generate a label to be provided to anomaly data based on any of information about a machine to be diagnosed (Fig. 1A, Paragraph [0003], [0016]; [0034])
Senda does not explicitly disclose anomaly data based on information about another machine, and information about an environmental condition.
Spiro discloses machine fault modelling that uses data from various sources, including information about another machine, and information about an environmental condition (Figs. 1 and 2; Abstract; Paragraphs [0004], [0017]; [0078]-[0082]).
At the time of the invention filed, it would have been obvious to a person of ordinary skill in the art to use the teaching of Spiro in Senda and have the label generation unit generates a label to be provided to anomaly data based on any of information about a machine to be diagnosed, information about another machine, and information about an environmental condition, so as determine condition of the machine with higher accuracy.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive, based on the updated rejection above. For 101, following response to the argument is provided.
The Section 101 provides that anyone who “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. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize “the basic tools of scientific and technological work.” Gottschalk vs Benson, 409 US 63, 67, 93 S. Ct. 253, 34 L. Edd. 2d 273 [175 USPQ 673] (1972)). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The 101 subject matter eligibility analysis begins with the claimed language (see Synopsis vs Mentor Graphics, 120 USPQ2d 1473 839 F.3d 1138 (Fed. Cir. 2016), Id., at 1481 “The 101 inquiry must focus on the language of the Asserted Claims themselves.”), followed by identifying the focus or underlying invention (see Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 [103 USPQ2d 1425] (Fed. Cir. 2012), Id., at 1431-1432, “Subsequently, however, we explained in CyberSource Corp. v. Retail Decisions, Inc. that we look not just to the type of claim but also “to the underlying invention for patent-eligibility purposes.” 654 F.3d 1366, 1374 [99 USPQ2d 1690] (Fed. Cir. 2011). Looking at the claims in the instant application, the claimed invention is directed to the abstract idea of “classifying an anomaly occurring in an industrial machine.”
Here, we first note that the Supreme Court has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem (Supreme Court, Alice Corp v CLS Bank Int’l, 110 USPQ 2d 1976 at 1985; DDR Holding, 773 F.3d at 1265)). In other words, even if the claims had recited specific abstract ideas for ““classifying an anomaly occurring in an industrial machine.” would not have made the claims eligible under 35 USC 101 on their own. In the instant application, the claims are generically recited, as the claims do not even recite how the first and second models are even trained, and by what technique, etc.
Additionally, note that the novelty of the abstract idea itself, also does not help in overcoming the 101 rejection (see Flook, In Gottschalk vs Benson, Id., at 195, “we held that the discovery of a novel and useful mathematical formula may not be patented,” Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”). This means that any novelty or non-conventionality in the abstract idea of “classifying an anomaly occurring in an industrial machine will not be a determining factor. New abstract idea is still an abstract idea (see Synopsis, 839 F.3d 1138, 120 USPQ2d, 1473 (2016), Id., at 1483, “a claim for a new abstract idea is still an abstract idea. The search for a 101 inventive concept is thus distinct from demonstrating 102 novelty.”).
Having said that, the subject matter eligibility analysis continues with the examination of the additional elements with respect to the practical application and significantly more criteria. Looking at the claimed invention, the claims additionally recite non-abstract limitations as discussed above,” but said limitations are merely directed to insignificant data collection and post-solution activities, recited at high level of generality, and recitation of general-purpose computer that are well-understood, routine and conventional. Furthermore, nothing in the claims, understood in light of the original disclosure, requires anything other than off-the-shelf, a general-purpose computer for collecting data, analyzing and obtaining the desired information (unlike Thales 85- F.3d 1343, 121 USPQ2d 1898 (2017), Id., at 1898 where the inertial sensors are used in non-conventional manner for measuring position and orientation).
Furthermore, the claims do not improve the functioning of any machines or processor. The claims in the instant application with the processor, the focus of the claims is not on such an improvement in said processor as tools (as in Enfish), but on certain independently abstract ideas that use the processor as tools. In other words, the Applicant is basically claiming the algorithm itself.
Furthermore, the claims also do not improve any technology due to lack of details in regard the abstract idea at least in the claimed invention (see Intellectual Ventures vs Symantec, 838 F.3d 1307, 120 USPQ2d 1353, (CAFC 2016), TLI Communications vs AV Auto, 823 F.3d 607, 118 USPQ2d 1744 (CAFC 2016), Affinity Labs of Tex., LLC vs DirectTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201, and Two-way Media vs Comcast 874 F.3d 1329, 124 USPQ2d 1521 (CAFC 2017)). Even if the claim had recited sufficient detail in regard the abstract idea, at most the claimed invention would be an improvement in the abstract idea of classifying the anomaly. However, improved or new abstract idea is still abstract idea, and not eligible.
Finally, limiting the claims to the technological environment of industrial machine, without the abstract idea being integrated into a practical application or without the additional elements amounting to significantly more than the abstract idea, is insufficient to transform them into patent-eligible applications of the abstract ideas (Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable” Bilski v. Kappos, 95 USPQ2d 1001, 1010 (U.S. 2010).
For the reasons given above, the abstract idea is not integrated into a practical application and the additional elements do not amount significantly more than the abstract idea.
In Summary, the claims recite the abstract idea of “classifying an anomaly occurring in an industrial machine”, without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Conclusion
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 HYUN D PARK whose telephone number is (571)270-7922. The examiner can normally be reached 11-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen Vazquez can be reached at 571-272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HYUN D PARK/Primary Examiner, Art Unit 2857