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 .
Claims 12-24 are presented for examination.
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 12-24 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. The claims are written in abstract terminology using undefined labels. Specifically, terms like “leading value”, “following value”, “synchronism function”, “correction function”, “correction range” of the correction function, “effective leading value path”, “effective start” of the correction function, and “effective leading value position”, are all undefined in the specification. Any discussion regarding the above terms are all performed using the other undefined terms listed above. It is unclear what is actually being described and thus what is actually being claimed to the point where one of ordinary skill in the art would be unable to make or use the invention.
Claims 12-24 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Per MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
With respect to the factors stated above, the claims are directed to correcting a leading and following value of a synchronism function (A, B). The specification describes use in systems that require coordination between separate machines (i.e., cross-cutting machines (F)) which are known to require coordination and synchronization between, for example, a conveyor belt and cross cutting device (B, C, D). It is the examiners understanding that adjustments are made in the above example to adjust speeds, adjust lead/lag of the conveyor/cross cutting blade if the two are out of sync (D, E, G).
What is unclear is how applicant is performing the actual correction of the leading and lagging values. It is known to adjust based on a detected error (i.e., the amount the devices are out of sync with one another) and adjust until synchronization is achieved (D, G). It is also known that instantaneous synchronization is likely not possible which requires convergence over time (D, G). While applicant uses the terms “leading value”, “following value”, “synchronism function”, “correction function”, “correction range” of the correction function, “effective leading value path”, “effective start” of the correction function, and “effective leading value position”, those terms are described in a general sense and do not provide a foundation for which the examiner can begin to understand what the above terms actually correspond to (F).
Due to the number of undefined terms, it would require significant experimentation to make or use the invention since one would have to guess how each term should be interpreted. (H).
Overall, the examiner asserts that the totality of evidence suggests that applicant has not enabled one of ordinary skill to make/use an invention that corrects a leading or following value
Claims 13-22 are rejected due to their dependency on claims 1.
Claim 23 is rejected on the same basis set forth above for claim 12.
Claim 24 is rejected due to its dependency on claim 23.
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 12-24 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.
Claims 12 and 23 recite the limitations "the corrected leading value" and "the corrected following value" each in lines 8-10 and 10-12 respectively. There is insufficient antecedent basis for these limitations in the claim.
It should be further noted that the claims only recite that a “correction range” and “effective start” for the corrective function are predefined. The claims do not appear to calculate the “corrected leading value” or the “corrected following value” and thus, there are no corrected leading or following values.
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 12-24 are rejected under 35 U.S.C. 101 because:
Claim 12: A method for correcting at least one of a leading value and a following value of a synchronism function, at least one of the leading value and the following value being corrected via a correction function, the method comprising:
predefining a correction range of the correction function via an effective leading value path.
predefining an effective start of the correction function via an effective leading value position.
performing at least one of (i) a transference of the corrected leading value as an input to the synchronism function and (ii) an output of the corrected following value as a setpoint to a following axis.
Step 1: The claim is directed to a “method for correcting at least one of a leading value and a following value of a synchronism function” which is a process and thus a statutory category of invention.
Step 2A Prong One: Limitation (a) in the claim recites “predefining a correction range of the correction function via an effective leading value path”. This represents the Mathematical Concepts group of abstract ideas since it is defining a range of a function via leading path which represents an algorithmic approach. Algorithms represent mathematical relationships, formulas, equations and calculations which fall under the Mathematical Concepts group of abstract ideas. Additionally, this also represents a Mental Process (i.e., observation, evaluation, judgement, opinion) group of abstract ideas because predefining a correction range is simple enough that it can be practically performed in the mind.
Limitation (b) in the claim recites “predefining an effective start of the correction function via an effective leading value position”. This represents the Mathematical Concepts group of abstract ideas since it is defining a start of a function via leading value position which represents an algorithmic approach. Algorithms represent mathematical relationships, formulas, equations and calculations which fall under the Mathematical Concepts group of abstract ideas. Additionally, this also represents a Mental Process (i.e., observation, evaluation, judgement, opinion) group of abstract ideas because predefining an effective start is simple enough that it can be practically performed in the mind.
Step 2A Prong Two: Besides the abstract ideas, the claim recites the additional elements of at least 1) transferring a corrected leading value as an input to the synchronism function and 2) outputting a corrected fowling value as a setpoint. These additional elements represent mere data gathering and insignificant application and are output recited at a high level of generality that is necessary for use of the recited judicial exception. See MPEP 2106.04(d). Thus, the input/output of the corrected leading/following value(s) are insignificant extra-solution activity.
A following axis is believed to be an additional element to be synchronized (the specification does not explicitly define “axis”). As such, it is nothing more than an attempt to generally link the use of the judicial exception to the technological environment. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
Step 2B: The claim as a whole does not amount to significantly more than the recited exception. The claim has an additional element. The element is a “following axis” which simply receives a corrected following value (i.e., setpoint). This at best the equivalent of merely adding the words “apply it” to the judicial exception. Thus, the limitation amounts to insignificant extra-solution activity
The claim is not patent eligible.
Regarding claim 23, this is rejected substantially on the same basis as set forth hereinabove. Claim 23 further includes a processor and memory having a control program function block for executing the same as the method of claim 12. These additional elements are also still recited at a high level of generality that at best, are the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.04(d). Thus, executing the method steps via processor is insignificant extra-solution activity.
The claim is not patent eligible.
Regarding claims 13-22, these claims fall under the Mathematical Concepts, Mental Processes group of abstract ideas.
Regarding claim 24, PLCopen function block is a known generic control function block (IEC 61131-3 standard) and thus is equivalent to merely adding the words “apply it” to the judicial exception.
Examiners Note
According to MPEP 2173.06(II), where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A CONNOLLY whose telephone number is (571)272-3666. The examiner can normally be reached Monday-Friday 9am-5pm.
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/MARK A CONNOLLY/Primary Examiner, Art Unit 2115 1/23/26