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 .
DETAILED ACTION
This communication is a non-final action in response to application filed on 11/01/2023. Claims 1-4 are pending.
Information Disclosure Statement
The IDS filed on 11/01/2023 has been considered.
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: various “units” in claim 4.
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.
Examiner notes the “units” in claim 1-3 does NOT invoke 112(f) because “numerical controller” provides sufficient structure to perform the entire function.
Examiner recommends deleting the word “unit” in its entirety in situation where 112(f) is not meant to be invoked and modify “unit” to “means for” in situation where 112(f) is invoked to clarify the claim interpretation.
Claim Interpretation
Claims 1 and 4 includes reference to “the analysis” at the end but the claims involves multiple analysis. Examiner suggests properly naming the analysis to clearly identify proper antecedent basis as this appears to be a drafting oversight.
Claim 2 is objected because the “and” connecting “data fed back from the machine” and “result of computation conducted by the control unit” appears to be a typographical error of “or”.
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 1-4 are rejected under 35 U.S.C. 101 because they recite an abstract idea without significantly more.
Step 1
Claim 4 is directed to a computer-readable storage medium. Specification is silent regarding whether this medium is broad enough to encompass transitory signals per se. Therefore, one ordinary skilled in the art would understand this medium as being broad enough to encompass signals per se. Therefore, it would not fall within any one of the four statutory categories. For the purpose of examination, claim 4 is being interpreted as non-transitory computer readable storage medium.
Step 2A prong 1
Using claim 1 as example, with the exception of physical hardware such as various units and the machine, all the other steps would recite abstract idea. Specifically, the steps can be performed completely in human man exercising judgment and determination regarding whether certain analysis step should be performed, paused, or resumed. Examiner particularly notes that state of control and the control associated with it can be broad enough to encompass alarm limit or merely displaying information, which can be similar to Flook and EPG’s displaying information. Lastly, examiner notes the steps can be performed following the few decision steps outlined in flowchart shown in Fig. 5, which are broad enough to be performed mentally. Therefore, it can be part of the mental process. Therefore, claim 1 recites an abstract idea.
Step 2A prong 2
Claim 1 includes additional elements of numeric controller having various units to perform the abstract idea, blocks that’s being analyzed as part of abstract idea, machine that’s the subject of analysis. Numeric controller, units, and the blocks are all generic computer components discussed in high generality. They’re merely being used to generally linking the abstract idea on a computer. While the steps performed by these additional elements relates to controlling machine, physical controlling machine is not required. Machine supplies data and these generic computer components makes determination recited in the abstract idea. As noted above, the machine can be merely monitored for alarm limit without requiring any sort of physical movement. Therefore, the machine is also merely generally linking the abstract idea to a particular field of use. Even viewed in an ordered combination, the additional elements are still nothing more than generally linking the abstract idea into a particular field of use. Therefore, it does not integrate the abstract idea into practical application.
Step 2B
As discussed above in step 2A prong 2, of which the analysis is still applicable in step 2B, the additional elements are nothing more than generally linking the abstract idea into a particular field of use, whether viewed individually or as an ordered combination. This would not provide an inventive concept either and the claim is not eligible.
Claims 2-3 merely further limit the abstract idea with additional steps to be performed mentally using additional elements in the similar manner as discussed in claim 1. Examiner notes collecting data from machine is similar to collecting information of EPG and therefore would properly fall within mental process. They would be analyzed similarly and would still be not eligible.
Claim 4 contain limitations substantially similar to claim 1 when considered as a non-transitory CRM and would be rejected under similar rationale as claim 1.
Examiner suggest further reciting steps to physically control the machine based on the result of the analysis to overcome the 101 rejections above. Alternatively, Applicant may provide additional detail regarding these analysis to the point where it’s no longer reasonable to perform this determination in human mind.
The above suggestion is purely meant to be illustrational and as a suggestion. Examiner is NOT requiring the above suggested amendment to be incorporated as the only way to overcome 101 rejections.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Haga (US 20080294877)
As per claim 1, Haga discloses a numerical controller for controlling a machine based on a machining program, comprising:
a look-ahead analysis unit that sequentially looks ahead and analyzes blocks in the machining program (0054, look-ahead resumed);
a control unit that controls the machine based on a result of the analysis conducted by the look-ahead analysis unit (see at least Fig. 2, A7, generate execution data based on look-ahead analysis (analysis continue));
a condition data storage unit that stores condition data including an analysis restriction condition for specifying a look-ahead restriction condition and an analysis resumption condition corresponding to the analysis restriction condition for an arbitrary instruction (see at least Fig. 2, step A6, based on stop code, whether to suspend look-ahead analysis, See also A4, depending on whether F1 =1, analysis can resume in step A12 after another B loop past step A10);
an analysis restriction processing unit that restricts the analysis by the look-ahead analysis unit when the analysis restriction condition included in the condition data is satisfied (see at least Fig. 2, step A6, based on stop code, whether to suspend look-ahead analysis,);
an analysis resumption processing unit that monitors a state of control on the numerical controller and the machine during the restriction of the analysis by the look-ahead analysis unit, and when the state of control being monitored satisfies the analysis resumption condition included in the condition data, allows the look-ahead analysis unit to resume the analysis (See also A4, depending on whether F1 =1, analysis can resume in step A12 after another B loop past step A10); and
a speculation analysis unit that conducts speculative analysis on the blocks in the machining program when the analysis by the look-ahead analysis unit is restricted (see at least Fig. 2, A11, analysis can be resumed based on whether buffer is empty),
wherein the look-ahead analysis unit resumes the analysis on the blocks by using a result of the speculative analysis conducted by the speculation analysis unit (see at least Fig. 2, A12, analysis resumed).
As per claim 2, Haga further discloses the numerical controller according to claim 1, wherein the state of control on the numerical controller and the machine is at least one of a result of computation conducted by the control unit and data fed back from the machine (Fig. 2, step A4, value of F determines which loop to be run this round).
As per claim 3, Haga further discloses the numerical controller according to claim 1, wherein the processing by the analysis resumption processing unit and the processing by the speculation analysis unit are conducted in succession or concurrently with each other (see at least Fig. 2, A11-A12 performed in succession).
Claim 4 includes limitation substantially similar to claim 1 and would be rejected under similar rationale set forth above.
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 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of U.S. Patent No. 10338570 (‘570) in view of Haga.
Claim 1 of both ‘570 and Haga show look ahead analysis being suspended and based on resuming condition to resume (restart) the analysis. The only difference is the speculative analysis. Haga, as shown above, teaches speculative analysis.
It would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Haga’s speculative analysis with ‘570 for the purpose of creating additional branches within the workflow to accommodate customer needs.
Claims 2-3 would be similarly rejected. Examiner notes ‘570’s claim 2 further clarifies condition being monitored is based on data fed from machine, which is shown in claim 2. Claim 4 would have been oblivious to put claim 1 of ‘570’s controller logic on a computer readable medium for the purpose of allowing more machines to use the same logic.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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, Resha Desai can be reached at 571-270-7792. 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.
GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628