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 .
Response to Amendment
The amendment filed on 06/03/2026 has been entered. Claim(s) 1-9, 11, 13-16 is/are now pending in the application. Applicant's amendments have addressed all informalities as previously set forth in the non-final action mailed on 03/06/2026.
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(s) 1-9, 11, 13-16 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more (See 2019 Update: Eligibility Guidance).
Independent Claim(s) 1, 13, 14 recites
certification of the control device,
a device unit test
to
determine whether a function set in the control device satisfies a predetermined condition specified by a standards organization and works normally,
a standard application operation test
to
determine whether the control device satisfies a predetermined condition specified by the standards organization and is capable of installing and operating a standard application specified by the standards organization,
and
a software load test
to
determine whether software of the control device satisfies a predetermined condition specified by the standards organization and is capable of withstanding a predetermined load;
a determiner
configured to
determine whether each of test results of the device unit test, the standard application operation test, and the software load test satisfies a predetermined condition;
and
a certifier
configured to
certify that the control device is compliant with standards of the standards organization, based on the determination result,
output a certification result indicating whether each of the test results satisfies the predetermined condition;
in response to the indication of the certification result indicating that the control device is compliant with the standards of the standards organization, calculate a score or a rank indicating an evaluation of the control device as an evaluation result, based on a degree to which each test result satisfies the predetermined condition.
[Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation] and/or [Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion)].
In combination with Independent Claim(s) 1, Claim(s) 2-9, 11, 15, 16 recite(s)
the standards organization is
Open Process Automation (OPA), Module Type Package (MTP), or NAMUR Open Architecture (NOA).
a device interconnection test
to
determine whether the control device is capable of interconnecting with a control device from a different manufacturer,
determines whether a test result of the device interconnection test satisfies a predetermined condition,
and
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the device interconnection test.
a device data linkage test
to
determine whether the control device is capable of transmitting and receiving predetermined data to/from a control device from a different manufacturer,
determines whether a test result of the device data linkage test satisfies a predetermined condition,
and
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the device data linkage test.
an external application operation test
to
determine whether the control device is capable of installing and operating a predetermined external application different from the standard application,
determines whether a test result of the external application operation test satisfies a predetermined condition,
and
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the external application operation test.
an application migration test to
determine whether the control device is capable of migrating an installed application to a control device from a different manufacturer,
determines whether a test result of the application migration test satisfies a predetermined condition,
and
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the application migration test.
a trouble test
to
determine whether the control device is capable of withstanding a predetermined trouble,
determines whether a test result of the trouble test satisfies a predetermined condition,
and
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the trouble test.
creates a device list of the control device certified as compliant with standards of the standards organization.
issues a certificate for the control device certified as compliant with standards of the standards organization.
notifies a product provider of the control device of an evaluation result.
inputting to the control device a predetermined signal specified by communication standards;
and
checking whether the control device successfully outputs the signal as specified by the standards organization.
the software load test comprises:
checking whether the software of the control device is capable of withstanding actual or virtual increase in a data communication volume or a data processing volume in a predetermined control period.
[Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation] and/or [Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion)].
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)) (i.e. A certification system comprising a control device that constitutes a plant control system, and a certification device that executes; the certification device comprising: an executer configured to execute, a determiner configured to; a certifier configured to);
Adding insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)) (i.e. generic data output (e.g., notifies a product provider of the control device; notifies the standards organization; transmit the certification result and the evaluation result to a standards organization terminal of the standards organization)); or
Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP § 2106.05(h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)) (i.e. See Alice Corp. and cited references for evidence of additional elements (i.e., generic computer structure)).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 3-9, 11, 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over TRACY ET AL. (US 20020042687 A1) (hereinafter “TRACY”) in view of ALLS ET AL. (US 20140130033 A1) (hereinafter “ALLS”).
With respect to Claim(s) 1, 13, 14, TRACY teaches assessing the risk of and/or determining the suitability of a system to comply with at least one predefined standard, regulation and/or requirement and the BRI of:
A certification system (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32)
comprising
a control device (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32),
and
a certification device (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32)
that executes
certification of the control device (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32),
the certification device comprising:
an executer (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32)
configured to
execute
a device unit test
to
determine whether a function set in the control device satisfies a predetermined condition specified by a standards organization and works normally (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
execute
a standard application operation test
to
determine whether the control device satisfies a predetermined condition specified by the standards organization and is capable of installing and operating a standard application specified by the standards organization (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
execute
a software load test
to
determine whether software of the control device satisfies a predetermined condition specified by the standards organization and is capable of withstanding a predetermined load (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26);
a determiner (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32)
configured to
determine whether each of test results of the device unit test, the standard application operation test, and the software load test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26);
and
a certifier (See, e.g., ¶ ABSTRACT; See also, e.g., Fig(s). 6, 7, 9, 31, 32)
configured to
certify that the control device is compliant with standards of the standards organization, based on the determination result (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26);
output a certification result indicating whether each of the test results satisfies the predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26);
in response to the indication of the certification result indicating that the control device is compliant with the standards of the standards organization, calculate a score or a rank indicating an evaluation of the control device as an evaluation result, based on a degree to which each test result satisfies the predetermined condition (See, e.g., ¶ ABSTRACT, 0006, 0129, 0133, 0141; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26);
and
transmit the certification result and the evaluation result to a standards organization terminal of the standards organization (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
However, TRACY is lacking the explicit language of:
a plant control system.
ALLS teaches a management system for an industrial facility and the BRI of:
a plant control system (See, e.g., ¶ 0023).
It would have been obvious to one ordinary skill in the art, at the time before the effective filing date of the claimed invention, to modify TRACY to include a plant control system.
One of ordinary skill in the art would have been motivated to modify TRACY because it would be beneficial to monitor at least a portion of an industrial facility. Further, it would be obvious to combine prior art elements according to known methods to yield predictable results, simply substitute one known element for another to obtain predictable results, use known techniques to improve similar devices in the same way, and/or apply a known technique to a known device ready for improvement to yield predictable results.
With respect to Claim(s) 3, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the executer further executes
a device interconnection test
to
determine whether the control device is capable of interconnecting with a control device from a different manufacturer (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
the determiner further
determines whether a test result of the device interconnection test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
the certifier
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the device interconnection test (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 4, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the executer further executes
a device data linkage test
to
determine whether the control device is capable of transmitting and receiving predetermined data to/from a control device from a different manufacturer (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
the determiner further
determines whether a test result of the device data linkage test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
the certifier
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the device data linkage test (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 5, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the executer further executes
an external application operation test
to
determine whether the control device is capable of installing and operating a predetermined external application different from the standard application (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
the determiner further
determines whether a test result of the external application operation test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
the certifier
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the external application operation test (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 6, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the executer further executes
an application migration test to
determine whether the control device is capable of migrating an installed application to a control device from a different manufacturer (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
the determiner further
determines whether a test result of the application migration test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
the certifier
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the application migration test (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 7, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the executer further executes
a trouble test
to
determine whether the control device is capable of withstanding a predetermined trouble (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
the determiner further
determines whether a test result of the trouble test satisfies a predetermined condition (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26),
and
the certifier
certifies that the control device is compliant with standards of the standards organization, based on the determination result further including a determination result of the trouble test (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 8, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the certifier
creates a device list of the control device certified as compliant with standards of the standards organization (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 9, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the certifier
issues a certificate for the control device certified as compliant with standards of the standards organization (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 11, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
wherein
the certifier
notifies a product provider of the control device of an evaluation result (See, e.g., ¶ ABSTRACT, 0006; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 15, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
the executer further executes, as the device unit test, a process comprising:
inputting to the control device a predetermined signal specified by communication standards; and checking whether the control device successfully outputs the signal as specified by the standards organization (See, e.g., ¶ 0121; Claim(s) 1, 14; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
With respect to Claim(s) 16, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
TRACY further teaches the BRI of:
the software load test comprises:
checking whether the software of the control device is capable of withstanding actual or virtual increase in a data communication volume or a data processing volume in a predetermined control period (See, e.g., ¶ 0121; Claim(s) 1, 14; See also, e.g., Fig(s). 1, 11, 14, 17, 21, 25, 26).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the cited prior art of the parent claim(s) in view of NANDOLA ET AL. (US 20250216836 A1) (hereinafter “NANDOLA”).
With respect to Claim(s) 2, the cited reference(s) of the parent claim(s) teaches the BRI of the parent claim(s).
However, TRACY is lacking the explicit language of:
Open Process Automation (OPA), Module Type Package (MTP), or NAMUR Open Architecture (NOA).
NANDOLA teaches automating a process plant and the BRI of:
Open Process Automation (OPA), Module Type Package (MTP), or NAMUR Open Architecture (NOA) (See, e.g., ¶ 0005).
It would have been obvious to one ordinary skill in the art, at the time before the effective filing date of the claimed invention, to modify TRACY to include Open Process Automation (OPA), Module Type Package (MTP), or NAMUR Open Architecture (NOA).
One of ordinary skill in the art would have been motivated to modify TRACY because it would be beneficial to automating a process plant. Further, it would be obvious to combine prior art elements according to known methods to yield predictable results, simply substitute one known element for another to obtain predictable results, use known techniques to improve similar devices in the same way, and/or apply a known technique to a known device ready for improvement to yield predictable results.
Response to Arguments
Applicant’s amendments, filed on 06/03/2026, have been entered and fully considered. In light of the applicant’s amendments changing the scope of the claimed invention, the rejection(s) have been withdrawn or updated. However, upon further consideration, a new or updated ground(s) of rejection(s) have been made, and applicant's argument(s)/remark(s) pertaining to the amended language have been rendered moot.
Applicant's argument(s)/remark(s), see page(s) 10-15, filed 06/03/2026, with respect to the 101 rejection(s) has/have been fully considered.
-Applicant states
“Claim 14 has been rejected as being directed toward non-statutory subject matter. Claim 14 has been amended as suggested by the Examiner, and is now believed to be directed toward statutory subject matter.”.
Examiner agrees with the underlined argument(s)/remark(s).
Said rejection(s) has/have been withdrawn.
-Applicant states
“Claims 1-14 have been rejected under 35 USC 101 as being directed toward an abstract idea, without significantly more. Claims 1-14 have been amended to overcome the Examiner's rejections. Support for the amendments can be found, for example, in claims 10, 12, as well as paragraphs [0074], [0083], [0128], [0137], and [0147]. Applicant respectfully traverses the rejection for the reasons set forth below.”
“I. The Claims Are Directed to a Specific Technical Improvement, Not an Abstract Idea (Alice Step 2A, Prong 1)
The Examiner characterizes the claims as directed to mathematical concepts or mental processes. For the following reasons, Applicant respectfully submits that this characterization misreads the claims.
The claims are directed to a specific automated hardware-and-software system for certifying that a control device constituting a plant control system is compliant with the standards of a standards organization (e.g., OPA, MTP, or NOA). The claimed certification system comprises a particular machine - a certification device with an executer, a determiner, and a certifier - that physically interacts with the control device under test to execute a defined battery of technical tests, evaluate the results against predetermined conditions, and transmit a structured certification result and scored evaluation to a standards organization terminal.
This is analogous to the claims found patent-eligible in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where the Federal Circuit held that claims directed to a specific improvement in the way computers operate - rather than merely using a computer as a tool to implement an abstract idea - are not directed to an abstract idea at Step 2A, Prong 1. Here, the claimed system does not merely use a computer as a tool to implement a generic certification concept. Rather, the certification device is itself a specific technical machine that performs a defined set of hardware-level and software-level tests (device unit test, standard application operation test, software load test, and optionally device interconnection, data linkage, external application, migration, and trouble tests) against predetermined conditions specified by standards organizations governing industrial plant automation. The claimed invention thus improves the technological process of certifying industrial control devices by providing an automated, standards-based evaluation system that produces objective, scored results, in contrast to prior manual or ad hoc assessment approaches.
Furthermore, the Examiner's characterization of the claims as directed to "mental processes-concepts performed in the human mind (including an observation, evaluation, judgement, opinion)" is respectfully incorrect. The claimed tests require physically running software on a hardware control device under defined load conditions, physically testing device interconnection with hardware from different manufacturers, and physically testing data transmission and reception between devices. These operations cannot practically be performed in the human mind. Per the USPTO's 2019 Revised Guidance and Federal Circuit precedent (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)), a process is not a mental process if it cannot be practically performed mentally. The physical, hardware-level interactions required by the claimed tests foreclose any mental process characterization.”.
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
Examiner’s BRI of the claimed inventions is generic computer structure being used as a tool to certify/verify if a device is compliant with a standard/condition and outputting the result.
When examining step 2A Prong 1, Examiner determines if there is an abstract idea present. One skilled in the art can at least perform the identified abstract idea utilizing Mathematical Concepts – mathematical relationships; mathematical formulas or equations or mathematical calculation. One skilled in the art can at least perform the identified abstract idea utilizing Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion). The arguments, in light of the specification, fail to convince the Examiner that utilizing Mathematical Concepts and/or Mental Processes does not fit within the scope of the identified abstract limitations.
Examiner relies on the 2019 Patent Eligibility Guidance (2-Prong Analysis) and precedential cases utilizing said guidance. Any remarks pertaining to case law not utilizing the most current Patent Eligibility Guidance is moot. Any remarks pertaining to non-precedential case law is also moot.
For the sake of argument:
Applicant compares the claimed invention to Court Decision Enfish, LLC v. Microsoft Corp. In contrast to the claimed invention, the Enfish courts found that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. The claims of the patents at issue in this case (Enfish) describe the steps of configuring a computer memory in accordance with a self-referential table. Specifically, the court identified the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Further, the Enfish courts found the invention to be directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A).
-Applicant states
“II. The Claims Integrate Any Alleged Judicial Exception Into a Practical Application (Alice Step 2A, Prong 2)
Even assuming arguendo that the claims recite a judicial exception, the claims nonetheless integrate that exception into a practical application under Alice Step 2A, Prong 2, and are therefore patent-eligible. Under the USPTO's 2019 Revised Guidance, a claim that applies a judicial exception using a particular machine integrates the exception into a practical application. Here, the claims require a specific certification device - comprising a hardware executer, determiner, and certifier - applied to a specific machine: a control device that constitutes a plant control system. The claimed system operates within the bounded, specific technological field of industrial plant automation and standardization (OPA, MTP, NOA), and produces concrete, real-world outcomes: a transmitted certification result and a calculated score or rank that directly affects the qualification and deployment of industrial equipment in a plant control environment.
The Examiner relies on MPEP § 2106.05(f) to suggest that the claims merely use a computer to implement an abstract idea. Applicant respectfully disagrees. The claimed certification device is not a generic computer performing generic functions; it is a specialized system executing a defined protocol of tests against standards-specified conditions for industrial control devices, calculating a degree of conformance, and communicating structured results to a standards organization terminal. This is the type of specific, concrete application that courts and the USPTO have found to constitute a practical application. See also McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (claims directed to a specific set of rules producing a concrete, technological result are patent-eligible even if the rules involve some evaluative component).
The Examiner also relies on MPEP § 2106.05(g) to characterize the notification steps as "insignificant extra-solution activity." Applicant respectfully submits that transmitting a certification result and a calculated evaluation score to a standards organization terminal is not insignificant post-solution activity. Rather, it is an integral part of the claimed invention's purpose: enabling the standards organization to maintain accurate device lists, issue certificates, and administer the standardization program for plant control systems. This transmission is a functional, operative step that produces a tangible result in the real world - the recognition and official recording of a control device's compliance status - and is not merely appended data output.”.
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
When examining step 2A Prong 2, Examiner examines the additional elements to determine if the identified abstract idea has been practically applied in a particular way in a particular technology. Limitations that are not indicative of integration into a practical application: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)); Adding insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)); or Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP § 2106.05(h)). The additional elements, when viewed individually and in combination with the identified abstract idea, do not add anything beyond mere instructions to implement an abstract idea on a computer, adding generic ‘apply it’ language, and generically linking the identified abstract idea to a technological environment or field of use.
Examiner relies on the 2019 Patent Eligibility Guidance (2-Prong Analysis) and precedential cases utilizing said guidance. Any remarks pertaining to case law not utilizing the most current Patent Eligibility Guidance is moot. Any remarks pertaining to non-precedential case law is also moot.
For the sake of argument:
Applicant compares the claimed invention to Court Decision McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016). In contrast to the claimed invention, the McRO courts found that the invention was improving computer animation through the use of specific rules, rather than human artists. As explained in the specification (McRO), human artists did not use the claimed rules, and instead relied on subjective determinations to set the morph weights and manipulate the animated face to match pronounced phonemes. The McRO court also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome, and thus were not directed to an abstract idea. Further, McRO claimed a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.
-Applicant states
“III. The Amended Claims Include Significantly More Than Any Alleged Abstract Idea (Alice Step 2B)
Even under Alice Step 2B, the amended claims recite significantly more than any alleged abstract idea. The Examiner concludes that the additional elements amount to no more than a generic computer structure. Applicant respectfully disagrees. The amended claims add specific, non-generic functional elements that go well beyond any generic computer implementation: (1) calculating a score or rank based on the degree to which each test result satisfies the predetermined condition - a specific, quantitative evaluation of conformance; (2) outputting a structured certification result indicating whether each individual test result satisfies the predetermined condition; and (3) transmitting both the certification result and the evaluation result to a standards organization terminal. These are not conventional, routine, or well-understood steps in the field of plant control system certification.
The Examiner cites Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), for the proposition that the claims merely add generic computer structure to an abstract idea. However, Alice concerned claims directed to the abstract concept of intermediated settlement, with computer implementation added as nothing more than a field-of-use limitation. The present claims are fundamentally different: the certification device, executer, determiner, and certifier are not a generic computer performing the abstract idea; they are the claimed invention itself. The specific combination of executing a defined battery of hardware and software tests, determining whether results satisfy standards-specified conditions, calculating a degree-based score, and transmitting structured results to a standards body terminal is an ordered combination of elements that together provide a concrete, practical system that did not previously exist - namely, an automated, objective, scored certification pipeline for industrial plant control devices under open standards frameworks such as OPA, MTP, and NOA.
In summary, the amended claims are patent-eligible under 35 U.S.C. § 101 because: (i) they are directed to a specific technical system, not an abstract idea; (ii) even if an abstract idea were present, the claims integrate it into a practical application through a particular machine operating in a specific technological field with concrete real-world outcomes; and (iii) the amended claims include significantly more than any alleged abstract idea through the addition of non-generic, non-conventional functional elements. It is respectfully submitted that the amended claims clearly define patent-eligible subject matter, and that the § 101 rejection should be withdrawn.”.
Examiner respectfully disagrees with the underlined argument(s)/remark(s).
When examining step 2B, Examiner examines the additional elements to determine if they amount to significantly more than the abstract idea. The only additional element(s) is/are the generic computer structure being used as a tool to perform the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Applicant's argument(s)/remark(s), see page(s) 15-16, filed 06/03/2026, with respect to the art rejection(s) has/have been fully considered.
-Applicant states
“Claims 1-14 have been rejected as being unpatentable over US 2002/0042687 to Tracy et al. in view of US 2014/0130033 to Ails et al. The Examiner's rejections are traversed for the following reasons.
Tracy discloses assessing the risk of and/or determine the suitability of a system, and in particular, discloses: automatically or manually collecting information on the system; selecting one or more requirements that the system must comply with; testing the system with respect to the requirements; assessing the risk for the failed test procedure, and generating certification documentation.
AIls, in contrast, discloses an offline patch change management system for an industrial facility which includes process control systems.
On the other hand, the presently claimed invention proposes:
a technology to promote openness and improve the safe operation and availability of plants by constructing a system that efficiently certifies that a control device 50 that constitutes a plant control system is compliant with the standards of a standards organization (See paragraph[0020]).
As can be seen from the above, the claimed invention aims to dissolve the current situation of the industry prone to oligopoly by some existing system providers and accelerate the standardization of plant control systems by standards organizations such as OPA. Thus, the claimed invention is different in the technical background from Tracy, which assesses the risk and determines the suitability of a system.
Further, the claimed invention automates the certification of standards in a plant control system, which is different in the application phase from the Alls' offline patch change management.
Thus, it seems difficult to modify Tracy with Alls (which is different in the application phase) as being "beneficial to monitor at least a portion of an industrial facility" (page 8 of the Office Action).
For at least the foregoing reasons, it is respectfully submitted that the presently claimed invention is not disclosed or suggested in the cited art, and is therefore not obvious in light of the art of record. Reconsideration and withdrawal of the art-based rejections is requested.”.
The underlined argument(s)/remark(s) are moot because the arguments do not apply to any of the previous rejected limitations.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND NIMOX whose telephone number is (469)295-9226. The examiner can normally be reached Mon-Thu 10am-8pm CT.
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, ANDREW SCHECHTER can be reached at (571) 272-2302. 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.
RAYMOND NIMOX
Primary Examiner
Art Unit 2857
/RAYMOND L NIMOX/Primary Examiner, Art Unit
Prosecution Insights