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 .
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 1-20 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. A subject matter eligibility analysis is set forth below. See MPEP 2106.
Under step 1, claim 1 belongs to a statutory category, namely it is a method claim.
Under step 2A, prong 1: claims 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. “mathematical relationships” i.e. modeling ) which the court has identified as abstract without significantly more. Claim 1 is directed to the abstract idea of b) using the measured values to perform a model-based determination of at least one parameter at further positions of the optical system, none of which correspond to a sensor position; c) using the model-based determination to diagnose an existing or expected malfunction of the optical system; and d) implementing a countermeasure to remedy or avoid the existing or expected malfunction of the optical system. These limitations fall under mathematical concepts (i.e. see equations 3 and 4 in page 8 of the disclosure as filed). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are a) measuring, with sensor assistance, values of at least one physical variable at a plurality of different sensor positions within an optical system; which is mere data gathering recited at a high level of generality and an optical system with sensors which are conventional or generic equipment which does not add anything significant to the judicial exception because these elements are needed in order to determine a malfunction. analysis. The claim as a whole does not amount to significantly more than the abstract idea itself.
The generic data gathering and processing are recited so generically (no details whatsoever are provided other than e.g., “d) implementing a countermeasure to remedy or avoid the existing or expected malfunction of the optical system.”) that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed system. For instance, there’s no mention of what or how the counter measurements are done in order to avoid a malfunction in the optical system.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use.
Dependent claims 2-20 merely expand upon the abstract idea further defining the abstract steps of claim 1, and therefore stand rejected under 35 USC 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed 8/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the claims now recite a non abstract limitation, has a practical application and is patent eligible under 35 USC section 101.
In response the Examiner respectfully disagrees and draws attention to the rejection above. The newly added limitations: “d) implementing a countermeasure to remedy or avoid the existing or expected malfunction of the optical system.” are recited generically broad with no details on how or what countermeasures are taken place in order to be considered significantly more. There isn’t a positively recited limitation of the countermeasure, therefore, a countermeasure can be considered as the system changing a value in the model to update a parameter.
Regarding the DDR Holdings case the court found that the claims were patent eligible under 35 USC § 101 because the claims were geared towards interactions with the Internet with significant added activity and the data was manipulated to yield unconventional results. A result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. Therefore the claims recited an invention that is not merely routine or conventional in the art or in use of the Internet. In the current application Applicants are merely using a computer model to diagnose an existing or expected malfunction in the optical system and therefore considered abstract. No details are described on what countermeasures are taken place in order to avoid a malfunction.
Applicant argues that the claims are geared towards an improvement of optical systems for quality control technology.
In response the Examiner points to the fact that no details are recited as being an improvement to an optical system. The claims merely recite a model determining an existing or expected malfunction of an optical system. The claim does not recite any positively countermeasures being implemented.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 MANUEL A RIVERA VARGAS whose telephone number is (571)270-7870. The examiner can normally be reached M-F 9:00-6:00.
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/MANUEL A RIVERA VARGAS/Primary Examiner, Art Unit 2857
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