DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
2. 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.
3. 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 (e.g., "unit," "part," "module") 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: "acquiring part configured to…" and "determining part configured to…" 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 § 101
4. 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 1-12 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 significantly more.
In view of the new 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register Vol. 84, No. 4, January 7, 2019), the Examiner has considered the claims and has determined that under step 1, claims 1-6 are to a machine and claims 7-12 are to a process. Next under the new step 2A prong 1 analysis, the claims are considered to determine if they recite an abstract idea (judicial exception) under the following groupings: (a) mathematical concepts, (b) certain methods of organizing human activity, or (c) mental processes. The independent claims contain at least the following bolded limitations (see representative independent claims) that fall into the grouping of mathematical concepts and/or mental processes:
1. A monitoring device comprising:
an acquiring part configured to acquire observed values of a variable that is sampled with respect to a behavior of a control system while the control system is running; and a determining part configured to determine a range of possible observed values that the variable possibly reaches upon a temporal change thereof, based on the acquired observed values, and determine whether a variation range of the acquired observed values satisfies a specification, based on an overlap between the range of the possible observed values and a range not satisfying the specification.
7. A computer-executable monitoring method comprising:
acquiring observed values of a variable that is sampled with respect to a behavior of a control system while the control system is running; and
determining a range of possible observed values that the variable possibly reaches upon a temporal change thereof, based on the acquired observed values, and determining whether a variation range of the acquired observed values satisfies a specification, based on an overlap between the range of the possible observed values and a range not satisfying the specification.
It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula."(see MPEP 2106.04(a)(2) I.). Thus, the above bolded limitations of “determining a range of possible observed values that the variable possibly reaches upon a temporal change thereof, based on the acquired values," and "determining whether a variation range of the acquired observed values satisfies a specification, based on an overlap between the range of the possible observed values and a range not satisfying the specification," are all considered as words serving the same purpose as a formula. The determining of a range of possible observed values that the variable possibly reaches can either be a mental step in its simplest form to evaluate data and estimate a numerical range, or a mathematical analysis when the determination requires a mathematical analysis. The determining whether a variation range of the observed values satisfies a specification based on an overlap amounts to a mental process to compare between two sets of data, or a mathematical process to determine an intersection of data values. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (or on pen and paper) but for the recitation of generic computer components, then it is still in the mental processes grouping unless the claim limitation cannot practically be performed in the mind (or on pen and paper).
Next in step 2A prong 2, the independent claims are analyzed to determine whether there are additional elements or combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception such that it is more than a drafting effort designed to monopolize the exception, in order to integrate the judicial exception into a practical application. These limitations have been identified and underlined above, and are not indicative of integration into a practical application because: (1) the limitation of acquiring observed values of a variable that is sampled with respect to a behavior of a control system while the control system is running amounts to adding insignificant extra-solution data gathering activity to the judicial exception (see MPEP 2106.05(g)) to gather the necessary data; and (2) the limitations of a monitoring device, acquiring part, determining part, or computer amount to mere instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Next in step 2B, the independent claims are considered to determine if they recite additional elements that amount to an inventive concept (“significantly more”) than the recited judicial exception. The acquiring of observed values of a variable do not add something significantly more because they amount to adding insignificant extra-solution data gathering activity to the judicial exception (see MPEP 2106.05(g)), and do not describe any gathering of data in an unconventional way. The monitoring device comprising an acquiring part and a determining part, or a computer, are generic hardware elements that do not add something significantly more because they amount to mere instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Dependent claims 2-5 and 7-12 contain additional limitations that fall under the abstract idea grouping of a mental process or mathematical concept, as hybrid automatons amount to mathematical models, and the remaining limitations amount to further details of the calculations of ranges, overlaps, and determinations of whether a specification is satisfied.
5. An invention is not rendered ineligible for patent simply because it involves an abstract concept. Applications of such concepts "to a new and useful end" remain eligible for patent protection (see Alice Corp., 134 S. Ct. at 2354 (quoting Benson, 409 U.S. at 67)). However, "a claim for a new abstract idea is still an abstract idea" (see Synopsys v. Mentor Graphics Corp. _F.3d_, 120 U.S.P.Q. 2d1473 (Fed. Cir. 2016)). The claims as they stand do not provide a further application beyond the mathematical/mental determination of whether a variation range of the acquired observed values satisfies a specification, and lie solely within an abstract informational-based "data" realm. There needs to be additional elements or combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception or render the claim as a whole to be significantly more than the exception itself in order to demonstrate “integration into a practical application” or an “inventive concept.” For instance, particular physical/structural arrangements for actively obtaining the observed values, or further physical applications using the calculated determination of whether a specification is satisfied to drive a physical change in operation, transformation, or maintenance/repair of a technology or technical process could provide integration into a practical application to demonstrate an improvement to the technology or technical field.
Allowable Subject Matter
6. Claims 1-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
7. The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 1, the closest prior art, Matsumoto et al. (US Pat. Pub. 2016/0163179, hereinafter "Matsumoto") at least teaches a monitoring device (Matsumoto abstract teaches a plant monitoring system) comprising:
an acquiring part configured to acquire observed values of a variable that is sampled with respect to a behavior of a control system while the control system is running (Matsumoto Fig. 1 and paragraphs [0051] and [0055] teach sensors as an acquiring part configured to acquire observed values of a process quantity/value (variable) at process quantity inputting points (PID) that are sampled with respect to a behavior of a state of a monitoring object of a plant while the plant is running); and
a determining part configured to determine a range of possible observed values that the variable possibly reaches upon a temporal change thereof, based on the acquired observed values (Matsumoto abstract and paragraph [0049] teach a threshold acquiring module as a determining part that determines a first threshold range of a dispersion (range of possible values) based on the acquired first process values (variables), and paragraph [0135] teach where threshold ranges of the rate of chronological (temporal) change of the monitored object PID variable can be calculated).
8. However, claim 1 contains allowable subject matter because the closest prior art, Matsumoto et al. (US Pat. Pub. 2016/0163179) fails to anticipate or render obvious a monitoring device comprising: a determining part configured to determine whether a variation range of the acquired observed values satisfies a specification, based on an overlap between the range of the possible observed values and a range not satisfying the specification, in combination with the rest of the claim limitations as claimed and defined by the Applicant.
Similarly, claim 7 contains allowable subject matter because the closest prior art, Matsumoto et al. (US Pat. Pub. 2016/0163179) fails to anticipate or render obvious a computer-executable monitoring method comprising: determining whether a variation range of the acquired observed values satisfies a specification, based on an overlap between the range of the possible observed values and a range not satisfying the specification, in combination with the rest of the claim limitations as claimed and defined by the Applicant.
9. Dependent claims 2-6 depend from claim 1 and contain allowable subject matter for at least the same reasons as given for claim 1. Dependent claims 8-12 depend from claim 7 and contain allowable subject matter for at least the same reasons as given for claim 7.
Pertinent Art
10. Applicants are directed to consider additional pertinent prior art included on the Notice of References Cited (PTOL 892) attached herewith. The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply. Applicant, in preparing the response, should consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the of the passage as taught by the prior art or disclosed by the Examiner. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A. Malik et al. (US Pat. Pub. 2019/0179988) discloses a System and Method for Emulating Hybrid Systems. B. Kapoor et al. (US Pat. Pub. 2018/0005118) discloses Control of Cyber-Physical Systems Under Uncertainty.
C. Gagne (US Pat. Pub. 2002/0016640) discloses Multi-Variable Matrix Process Control. D. Schloegel et al. (US Pat. Pub. 2012/0210173) discloses Error Propagation in a System Model. E. Kang et al. (US Pat. Pub. 2019/0051547) discloses Process Management Method and Apparatus. F. Fujita et al. (US Pat. Pub. 2018/0314238) discloses Data Processing Apparatus, Data Processing System, Data Processing Method, and Program.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL D LEE whose telephone number is (571)270-1598. The examiner can normally be reached on M to F, 9:30 am to 6 pm.
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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.
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/PAUL D LEE/Primary Examiner, Art Unit 2857 11/21/2025