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 Claims
This Office Action is responsive to communication filed on 9/1/2023
Claims 1-11 are presented for examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-2 and 9-11 are objected to because of the following informalities:
Claims 1 and 9-11 each recite “the number of generators” however this lacks antecedent basis. Amending the claims to recite “a number of generators” will overcome this objection.
Claim 2 recites “the number of contact points” however this lacks antecedent basis. Amending the claim to recite “a number of contact points” will overcome this objection.
Appropriate correction is required.
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 limitations use 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 limitations are:
“an information processing device” in claim 1;
“a data generation unit” in claim 1;
“a first calculation unit” in claim 2;
“a determination unit” in claim 3;
“a second calculation unit” in claim 4;
“a storage unit” in claim 5;
“an image generation unit” in claim 6;
“a processing device” in claim 8.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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 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.
Claim 4 is rejected as a formality because the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph language in these claims does not have sufficient structure in the specification. The rejection matches the below indefiniteness rejection for the same language. Once that rejection is overcome, this one will be as well.
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 4 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 4, the claim limitation “a second calculation unit” 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. The disclosure is devoid of any structure that performs the function in the claim. 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.
Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1:
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
Yes. The claim recites a device (machine), which is a statutory category of invention.
Step 2A – Is the claim directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea?
Yes. The claim is directed to an abstract idea.
Step 2A Prong One – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes.
MPEP 2106.04(a): “Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion).”
Limitation (a) in the claim recites “acquiring input information including the number of generators, a processing width, and a processing shape;” Acquiring input information is an example of an observation and can be performed in the human mind.
Limitation (b) in the claim recites “setting, in a virtual processing area, a plurality of generators corresponding to the number of generators included in the input information at respective coordinates determined by uniform random numbers;” and limitation (c) in the claim recites “forming, in the virtual processing area, a plurality of dividing lines by a prescribed dividing algorithm on a basis of the plurality of generators;”. Limitations (b) and (c) together amount to forming a pattern using the observed generators as nodes, which are examples of evaluation and judgement and can be performed in the human mind.
Thus, the claim does recite an abstract idea.
Step 2A Prong Two – Does the claim recite additional elements that integrate the judicial exception into a practical application?
No.
Limitation (d) in the claim recites “generating, in the virtual processing area, processing instruction data for causing a processing device to perform scraping to realize a first virtual cutting pattern formed by performing virtual scraping along respective dividing lines on a basis of the processing width and the processing shape included in the input information.” However, this additional element is amount to no more than mere instruction to apply an exception.
Thus, the claim does not recite additional elements that integrate the judicial exception into a practical application.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
No.
The additional element to consider is limitation (d), which was identified as mere instructions to apply an exception. Even when considered in combination, these additional elements represent no more than mere instruction to implement an abstract idea. Thus, the claim does not recite additional elements that amount to an inventive concept or significantly more than the judicial exception.
The claim is not eligible.
Amending the claim to include the limitations of claim 8 would integrate the claimed invention into a practical application and would overcome this rejection.
Dependent claims 2-7 fail to integrate the claimed invention into a practical application, do not amount to significantly more, and are also rejected due to inheriting the deficiencies of claim 1.
Claims 9-11 are rejected as per claim 1.
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.
Claims 1, 3, 6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over HSIEH (“Design, manufacture, and development of a novel automatic scraping machine", published 10/20/2016. Retrieved from https://link.springer.com/article/10.1007/s00170-016-9590-4. Retrieved on 12/31/2025)1 in view of INOUE (US20160195139A1) (hereinafter – “HSIEH-INOUE”).
Regarding claim 1, HSIEH teaches an information processing device comprising a data generation unit that performs data generation processing (Pg. 1, Abstract: computer program), the data generation processing including:
acquiring input information including the number of generators, a processing width, and a processing shape (Pg. 6, Col. 2, 2.4 Automation of scraping operation: “the 3-D surface of the workpiece is measured before scraping, and then the flatness of the pre-scraped workpiece is analyzed; i.e., it is determined whether it conforms to the specifications of the workpiece”; Pg. 7 & Fig. 11: high points per square inch PPI; W1 width of scrape; A scrapping pattern (i.e., quadrate, triangular, plover), see Pg. 12 Table 3);
setting, in a virtual processing area, a plurality of generators corresponding to the number of generators included in the input information (see Fig. 11 below);
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forming, in the virtual processing area, a plurality of dividing lines by a prescribed dividing algorithm on a basis of the plurality of generators (see Fig. 11 above); and
generating, in the virtual processing area, processing instruction data for causing a processing device to perform scraping to realize a first virtual cutting pattern formed by performing virtual scraping along respective dividing lines on a basis of the processing width and the processing shape included in the input information (Pg. 1, Abstract: “computer program is utilized to automatically determine the scraping location, depth, and pattern of the 3-D surface of a workpiece before scraping and then to generate a set of NC code which is sent to the machine tool to process the scraping motion”).
HSIEH is not relied on for wherein the setting of a plurality of generators is determined by uniform random numbers.
However, INOUE in an analogous art teaches a method to reduce friction between sliding parts, comprising:
setting a plurality of generators determined by uniform random numbers ([0009]: objective of invention is “improving a sliding characteristic in a wide range of a bearing characteristic number on a sealing face by randomly arranging dimples provided on the sealing face”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify HSIEH’s scraping pattern to include INOUE’s random dimple distribution because such a modification is the result of applying a known technique to a known device ready for improvement to yield predictable results. More specifically, INOUE’s random distribution permits improved sliding characteristics between sliding surfaces. This known benefit is applicable to HSIEH’s scraping pattern as they both share characteristics and capabilities, namely, they are directed to lubricity and sliding surfaces. Therefore, it would have been recognized that modifying HSIEH’s scraping pattern generation to include INOUE’s random distribution would have yielded predictable results because (i) the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate INOUE’s method of random distribution in the computing environment of HSIEH and (ii) the benefits of such a combination would have been recognized by those of ordinary skill in the art.
Regarding claim 3, HSIEH-INOUE teaches the elements of claim 1 as outlined above. HSIEH also teaches a determination unit that determines the input information on a basis of cutting pattern information showing a contact area ratio, the number of contact points, and a processing shape in a desired cutting pattern (Fig. 4 (below) scraping parameter input label).
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Regarding claim 6, HSIEH-INOUE teaches the elements of claim 1 as outlined above. HSIEH also teaches an image generation unit that generates an image showing the first virtual cutting pattern (Fig. 4 (above) image showing the first virtual cutting pattern label).
Regarding claim 8, HSIEH-INOUE teaches the elements of claim 8 as outlined above. HSIEH also teaches a processing device that performs scraping on a basis of the processing instruction data generated by the information processing device (Pg. 1, Abstract: generates a set of NC codes which is sent to the machine tool to process the scraping motion).
Regarding claims 9-11, the limitations of claims 9-11 are substantially the same as claim 1 and are rejected as per claim 1 above.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over HSIEH (“Design, manufacture, and development of a novel automatic scraping machine", published 10/20/2016. Retrieved from https://link.springer.com/article/10.1007/s00170-016-9590-4. Retrieved on 12/31/2025) in view of INOUE (US20160195139A1), in further view of OTOMO (US20160224006A1) (hereinafter – “HSIEH-INOUE-OTOMO”).
Regarding claim 2, HSIEH-INOUE teaches the elements of claim 1 as outlined above.
HSIEH-INOUE are not relied on for a first calculating unit that calculates a contact area ratio and the number of contact points corresponding to the first virtual cutting pattern.
However, OTOMO in an analogous art does teach this claim limitation. OTOMO teaches methods and system related to toolpath evaluation and generation, comprising:
a calculation unit that calculates a contact area ratio and the number of contact points corresponding to a first virtual cutting pattern ([0059]-[0061]: contact area calculating unit 32a calculates the ratio of the contact area).
Before the effective filing date of the claimed invention, it would have been obvious to one or ordinary skill in the art to apply the teachings of OTOMO to the teachings of HSIEH-INOUE such that OTOMO’s contact area ratio is used with HSIEH-INOUE’s scraping system for the purposes of accurately calculating how much metal will be removed depending on the removal tool shape and dimension.
Regarding claim 7, HSIEH-INOUE teaches the elements of claim 1 as outlined above.
HSIEH teaches the data generation unit generates data for causing the processing device to perform scraping to realize the first virtual cutting pattern (Pg. 1, Abstract: computer program is
utilized to automatically determine the scraping location, depth, and pattern of the 3-D surface of a workpiece before scraping and then generate a set of NC codes which is sent to the machine tool to process the scraping motion).
HSIEH-INOUE not relied on for calculating a contact area ratio and the number of contact points corresponding to the first virtual cutting pattern. HSIEH-INOUE is not relied on for generating data in a case where a desired contact area ratio and a desired number of contact points are calculated in the data generation processing.
However, OTOMO in an analogous art does teach these claim limitations. OTOMO teaches methods and system related to toolpath evaluation and generation, comprising:
a calculation unit that calculates a contact area ratio and the number of contact points corresponding to a first virtual cutting pattern ([0059]-[0061]: contact area calculating unit 32a calculates the ratio of the contact area), and
generating data in a case where a desired contact area ratio and a desired number of contact points are calculated in the data generation processing ([0051]: CAM system 20 is provided with a processing program changing unit 30. The processing program changing unit 30 changes the target toolpath R1 to generate a changed toolpath R2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the teachings of OTOMO to the teachings of HSIEH-INOUE such that OTOMO’s contact area ratio is used with HSIEH-INOUE’s scraping system for the purposes of generating a toolpath to implement the accurately calculated removal of metal depending on the removal tool shape and dimension.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(a) and 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCutcheon et al. (US20230139651A1) discloses a three-dimensional Voronoi structure fabrication system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael V Farina whose telephone number is (571)272-4982. The examiner can normally be reached Mon-Thu 8:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Lee can be reached at (571) 272-3667. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.V.F./Examiner, Art Unit 2115
/VINCENT H TRAN/Primary Examiner, Art Unit 2115
1 Page number citations for HSIEH reference refer to the attached PDF document page number and not the journal page number.