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 .
Status of the Application
This is a Non-Final Action in response to the claims and remarks submitted on 06/02/2026.
Claim 1 is amended.
Claims 2-10 are canceled.
Claim 1 is pending and examined herein.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/02/2026 has been entered.
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: “a business data storage section comprising an operation table that stores data on an operation information”, “the malfunction prediction section that performs a data processing for predicting a malfunction of the machine”, “the area/customer characteristic estimation section performs a data processing for calculating a numerical value”, “the order reception probability calculation section calculates a parameter of a statistical model implemented by a probabilistic programming language”, “the advance deployment profit/loss calculation section calculates a profit/loss in a case of advance deployment of the component to the distributor and that stores a calculated result into the order reception prediction result storage” 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.
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.
Claim 1 is 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.
Claim limitation ““a business data storage section comprising an operation table that stores data on an operation information”, “the malfunction prediction section that performs a data processing for predicting a malfunction of the machine”, “the area/customer characteristic estimation section performs a data processing for calculating a numerical value”, “the order reception probability calculation section calculates a parameter of a statistical model implemented by a probabilistic programming language”, “the advance deployment profit/loss calculation section calculates a profit/loss in a case of advance deployment of the component to the distributor and that stores a calculated result into the order reception prediction result storage”” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. It is unclear from the originally filled specification what are the structural elements of the sections claimed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the system (claim 1) is directed to at least one potentially eligible category of subject matter (i.e., process and machine, respectively). Thus, Step 1 of the Subject Matter Eligibility test for claim 1 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Mental Processes” and “Mathematical Concepts” group within the enumerated groupings of abstract ideas set forth in the MPEP 2106 since the claims set forth steps that recite concepts performed in the human mind (including an observation, evaluation, judgment, opinion) s. Claims 1 and 10 recites the abstract idea of deployment of replacement components of a construction machine (011). This idea is described by the following claim steps:
an operation information table that stores data on an operation information about the machine measured and transmitted and also comprising an alarm history table that stores alarm history data, which is a history of fault alerts issued by the machine, and also comprising an order history table that stores order history data for parts of the machine issued from the customer;
perform a data processing for predicting a malfunction of the machine based on the data on the operation information table about the machine and on the alarm history stored and store results as an alarm prediction table;
perform a data processing for calculating a numerical value that represents an availability of a non-genuine component as a characteristic of an area where the customer owns or uses the machine, or a numerical value that represents a positive attitude regarding maintenance of the machine as a characteristic of the customer or a numerical value representing a busy month, based on the operation information table, the alarm history table, and the order history table stored and storing a processes result as an area customer attribute table;
calculate a parameter of a statistical model implemented by a probabilistic language, the statistical model being implemented for calculating an order reception probability that is a probability of receiving an order of a component associated with the machine, and also calculated an average of probability distribution obtained by posterior distribution of the parameter as the order reception probability, and store a calculated result as an order reception prediction table, based on the alarm prediction table stored, the area customer attribute table and the order history table stored;
calculating a profit/loss in a case of advance deployment of the component to a distributor and store a calculated result as an advance deployment profit/loss table, based on an equation of: (a profit loss when an order for an order for the component is received after performing the advance deployment) * the order reception probability + (a profit loss when an order for the component is not received after performing the advancement deployment) * (1- the order reception probability) – (a profit/loss when an order for the component is received after performing post deployment) * the order reception probability;
wherein when a user of the distributor input a machine ID of the machine and an expected date for predicting failure, a profit/loss calculated when the component is deployed to the distributor in advance is transmitted to the distributor together with the order reception probability calculated, an alarm probability of the machine on the expected date, and a content of the advancement deployment and is displayed on an advancement deployment plan.
This idea falls within the certain methods of Mental Processes and Mathematical Concepts of abstract ideas because it is directed towards observation, evaluation and opinion such that as required when determining deployment of components of a construction machine.
Because the above-noted limitations recite steps falling within the Mental Processes abstract idea groupings of the MPEP 2106, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the Mental Processes abstract idea groupings described in the MPEP 2106, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below. Claim 10 recites similar limitations as claim 1 and is therefore determined to recite the same abstract idea.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements that fail to integrate the abstract idea into a practical application are:
a network connected to a distributor terminal;
a business data storage section;
a sensor attached to the machine;
wireless communication;
a server comprising a malfunction prediction section, an area/customer characteristic estimation section, an order reception probability calculation section and an advance deployment profit/loss calculation section;
an order reception prediction data storage section;
an order reception prediction result storage section;
a probabilistic programming language; and
an advance deployment plan display section.
However, using a computer environment such as a network and other recited computer elements amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Determining deployment of replacement components of a construction machine can reasonably be performed by pencil and paper until limited to a computerized environment by requiring a server.
These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and alternatively serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
For the reasons identified with respect to Step 2A, prong 2, claims 1, and 10 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)). In addition, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)).
The ordered combination of elements in the claim add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide high level of generality computer implementation. Therefore, whether taken individually or as an order combination, the claim is nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information see MPEP 2106.
Response to Arguments
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive.
In regards to the pending 35 USC 101 Applicant argues:
“When considering claim 1 as a whole, as required, the claim sets forth an improvement to the field of construction machine maintenance by strategically deploying components of construction machines that require replacement or maintenance before the machine breaks down of a function of the machine is degraded…The claimed invention addresses the shortcomings of the conventional systems in the field that enables appropriate execution of advance deployment of components” ” Examiner respectfully disagrees. Contrary to Applicant’s assertions, the claimed invention does not provide a technical solution to a technical problem. The invention is directed to improving a business practice by a ensuring a replacement before machine operation is interrupted or degraded. While this improvement enhances customer satisfaction and operational efficiency such benefits arise from an improved business planning and resource management rather than from any technological improvement to the machines or the technology claimed. The claimed invention does not alter how the machines function, improve machine performance, or introduce a technological advancement in computer or machine operation. Instead, the claimed invention focuses the timing and delivery of the components to achieve a more effective business outcome. As MPEP 2106.05 (a) states “Notably, the court did not distinguish between the types of technology when determining the invention improved technology. However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”
“The calculations identified by the amended claim 1, including the statistical model used to determine the probability of receiving orders by the server, the calculations using the formula for pre-deployment profit and loss, and the server's processing and operation in response to input from agent terminals, as well as the display and input operations on agent terminals, cannot be considered to recite a mental process or a mathematical concept and go beyond mere general information processing within a computer.” Examiner respectfully disagrees. As explained in the rejection above, the claim is directed to judicial exceptions in the form of Mental Processes and Mathematical Concepts. Specifically, the claim recite evaluating and analyzing equipment related information to make a determination that can be performed through observation, or reasoning, thereby falling with the mental process category. The claim further requires the application of mathematical relationships and calculations to generate the desired result, thereby reciting mathematical concepts. Consistent with MPEP 2106.04(a)(2) the mathematical concepts group includes mathematical relationships, formulas, equations and calculations. The claimed calculations are used to analyze the equipment information received and generate the profit/loss, and order reception probability which are related to the component replenishment. Such mathematical processing does not improve the functioning of a computer, machine or technology. Rather, it serves as a tool for evaluating information and facilitating decision-making of a user. Therefore, when considered as a whole, the claim is directed to the collection and analysis of data elements, and mathematical calculations in order to generate a desired result.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kashi, US 20150134400, MAINTENANCE PARTS INVENTORY PLANNING SYSTEM, MAINTENANCE PARTS INVENTORY PLANNING SYSTEM SERVER, AND MAINTENANCE PARTS INVENTORY PLANNING SYSTEM CLIENT TERMINAL. The present invention relates to a maintenance parts inventory planning system, and particularly relates to a stand-alone type maintenance parts inventory planning system, and further relates to a technique that is applied to and effective for a client-server type maintenance parts inventory planning system server and a maintenance parts inventory planning system client terminal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629
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