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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Legal Framework
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, the Office is guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, Examiners first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, Examiners turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101 and further updated this guidance in October 2019. This guidance is now found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly Sections 2103 through 2106.07(c). See MPEP §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020).
Under the 2019 Revised Guidance and the October 2019 Update, Examiners first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)) (“Step 2A, Prong Two”). 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do Examiners then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Analysis
Examiners consider the claim as a whole giving it the broadest reasonable construction as one of ordinary skill in the art would have interpreted it in light of the Specification at the time of filing.
The Examiner finds, under Step 1 of the 2019 Revised Guidance, that claims 1-12 are directed to a method and, therefore, all claims recite a statutory category of invention.
Revised Step 2A, Prong One –recites a judicial exception
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Memorandum instructs Examiners first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. Examiners primarily focus here on the first and third groupings - mathematical concepts and mental processes.
Claim 1 recites the method step of determining a health status of the infrastructure component based on the detected response because under broadest reasonable interpretation this method step can be considered a mental process comprised of observing data and making a judgement as to the health status.
Revised Step 2A, Prong Two – Practical Application
Having determined that claim 1 recites an abstract ideas, Examiners next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); 2019 Revised 101 Guidance, 84 Reg. at 53–54. Integration into a practical application requires an additional element or a 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, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application).
In the current instance, there are no limitations integrating the abstract ideas into a practical application as there is no improvement to the functioning of a computer or to any other technology or technical field, it is not used by a particular machine or to effect a particular transformation.
Step 2B–Inventive Concept
Because the Examiner has determined that claim 1 is directed to an abstract idea and does not include additional elements that integrate the abstract idea into a practical application, the Examiner looks to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 2019 Revised 101 Guidance, 84 Fed. Reg. at 56. That is not the case here. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”).
The additional limitations of claim 1 comprising transmitting and receiving a radio or microwave signal from a transmitting antenna to a receiving antenna to or through an infrastructure component. This is considered insignificant extra-solution activity because it amounts to necessary data gathering since all uses of the recited judicial exception require a detected response. See MPEP §2106.05(g).
Therefore, because there are no additional elements that can provide an inventive concept, we conclude that claim 1 does not recite patent eligible subject matter.
As to the dependent claims, claims 2-8 further define the abstract idea as either classifying, which is also considered a mental process, or the output of a machine learning algorithm which is broadly considered a mathematical concept and still an abstract idea.
Claim 9 recites converting the signal into a digital signal using an ADC which is a well-understood, routine and conventional activity in data processing and does not provide an inventive concept. See MPEP §2106.05(d).
Claims 10, 11, and 12 are drawn to the infrastructure component itself, recited at a high level of generality and thus are considered as only generally linking the abstract idea to a technological environment. See MPEP §2106.05(h).
Therefore, Applying the guidance set forth in the Memorandum, the Examiner concludes that claims 1-12 do not recite patent eligible subject matter.
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.
Claims 1-8, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vaissiere et al. (US 2022/0390344; “Vaissiere”).
Regarding claim 1, Vaissiere discloses in figure 9 a method of analyzing an infrastructure component (1) (¶¶ [0002], [0095]), the method comprising transmitting a transmit signal from a transmit antenna (51) to or into the infrastructure component (1), the transmit signal is in a radio or microwave frequency range of the electromagnetic spectrum (¶ [0125]), detecting a response at a receive antenna (51) that results from transmission of the transmit signal to or into the infrastructure component (1) (¶ [0125]) and determining a health status of the infrastructure component based on the detected response (¶ [0101]).
Regarding claim 2, Vaissiere discloses determining of the health status of the infrastructure component (1) further comprises using the detected response as an input for a pre-trained machine learning model (¶ [0099]).
Regarding claim 3, Vaissiere discloses the pre-trained machine learning model is trained using a plurality of reference signals as a training dataset (¶ [0099]).
Regarding claim 4, Vaissiere discloses the pre-trained machine learning model uses a classification algorithm to classify the health status as being acceptable or unacceptable (¶¶ [0102], [0136]-[0137]).
Regarding claim 5, Vaissiere discloses determining of the health status of the infrastructure component further comprises classifying the health status as being acceptable or unacceptable (¶¶ [0102], [0136]-[0137]).
Regarding claim 6, Vaissiere discloses the classifying of the health status as being acceptable or unacceptable further comprises comparing the detected response with one or more reference signals (¶¶ [0101]-[0102]).
Regarding claim 7, Vaissiere discloses the one or more reference signals comprise a signal indicative of an acceptable infrastructure component (1) (¶ [0099]).
Regarding claim 8, Vaissiere discloses the one or more reference signals comprise a signal indicative of an unacceptable infrastructure component (¶¶ [0136]-[0137]).
Regarding claim 10, Vaissiere discloses transmitting the transmit signal from the transmit antenna (51) to or into the infrastructure component (1) occurs while the infrastructure component is located on in-service infrastructure (¶ [0098]).
Regarding claim 12, Vaissiere discloses the infrastructure component (1) comprises a building foundation or a portion thereof, a building exterior or interior element or a portion thereof, a building roof or a portion thereof, a structural framing of a building or a portion thereof, a bridge deck or a portion thereof, a bridge foundation or a portion thereof, a bridge joint or a portion thereof, a bridge cable or a portion thereof, an inside of a pipeline or a portion thereof, a weld or joint connection of a pipeline (¶ [0095]).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Vaissiere in view of Kuo et al. (US 2002/0005812; “Kuo”).
Regarding claim 9, Vaissiere discloses all the limitations of claim 6 on which this claim depends.
Vaissiere does not explicitly disclose comparing of the detected response with the one or more reference signal comprises converting the detected response from an analog signal into a digital signal by an analog to digital (AD) converter, and comparing the digital signal with the one or more reference signal.
However, this step in signal processing is well known in the art.
In the same field of endeavor, Kuo teaches transmitting and receiving signals through a pipeline to monitor structural health (¶¶ [0068]-[0069]) comprising the step of converting the detected response from an analog signal into a digital signal by an analog to digital (AD) converter (¶ [0076]).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to convert Vaissiere’s detect response to a digital signal using an ADC as taught by Kuo for the purpose of enabling complex signal signal processing such as advanced algorithms utilizing machine learning or neural networks.
When this combination is made the modified digital signal is them compared with the reference signal without further modification necessary (all the reference signals were at one time detected responses as well, see Vaissiere ¶ [0099]).
Allowable Subject Matter
There is no prior art rejection for claim 11, however Examiner cannot comment on its allowability under the rejections under §101 are overcome.
It is noted that Vaissiere discloses in multiple places that an advantage of the invention of the invention is not having to remove the pipe from service and failure is predicted using a time series algorithm so there is no reason to remove it until it is time to replace it (after which testing is no longer necessary). A search for explicit recitation of testing a piece of infrastructure after it has been removed from serve (as opposed to pre-installation) did not turn up an adequate reference.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and represents the general state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached T-F 7-4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Rastovski can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATALIE HULS/Primary Examiner, Art Unit 2863