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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/27/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to the amended claim(s) in regards to the 103 rejections have been considered but are moot because the new ground of rejection does not rely on the same combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed to the 101 rejections have been fully considered but they are not persuasive. The claims have been amended to include the steps of calculating a formation error based on the monitored activity and moving one or more components in the one or more regions based on the difference to change the formation error.
The instant application fails prong 2 as there is no practical application claimed. The entirety of the claim is directed to monitoring (with a camera), determining an "activity", comparing the current activity to a reference to determine a difference, and then calculating a formation error.
The only actionable steps are to move one or more components in the one or more regions based on the difference to change the formation error.
This new step is not sufficient to overcome the standard to be sufficient to amount to significantly more than the judicial exception
The steps do not provide any specificity to the actions that are to occur. The activity of the claims can be any property or value as there is no restrains or guidance on what this is to be. The new formation errors is simply the difference between the determined activity and a reference stock activity that is also undefined. The additional new step simply states to move at least one component in at least one region to change the formation error. It does not require removing the formation error or any guidance on this action or even what component is modified. An action that makes the error worse would still read on the claims.
It is recommended to specify what the activity is and how it is determined, what the reference activity is or what it is based on, and what components are moved where in the process and how this is activated based on the calculated actions.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Regarding claims 18, 21-23, 25-31, and 40, the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the acts of monitoring, comparing, determining, and characterizing the difference, without any additional actionable steps.
The claims pass the first eligibility step as they are directed to a process.
Eligibility step 2A prong 1 identifies the judicially recognized exemption defined as mental processes and disembodied concepts as part of an abstract idea. The second prong determines if there are additional elements that integrate the judicial exemption into a practical application.
The instant application fails prong 2 as there is no practical application claimed without significantly more. The only actionable step is to for moving one or more components in the one or more regions based on the difference to change the formation error.
This conceptual step does not provide a practical application without significantly more.
The mathematical relationship of the claims of comparing has not been found to be integrated as stated in MPEP2106.04a2:
organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC V. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721.
MPEP 2106.04A2 further states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the 'basic tools of scientific and technological work' that are open to all." 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk V. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. V. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker V. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.
In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group V. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation V. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. V. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011); and
a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer's shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no clear instructions or a nexus between the steps and actions to be taken by the method. The act of moving one or more components based on the difference to change the error is not significantly more as it is only the basic of an idea without any direction or requirements.
Please see MPEP 2106.05.
Claim Rejections - 35 USC § 102/103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 18, 21-23, 25-31, and 40 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Muhonen et al, US Patent Publication 2005/0006044.
Regarding claim 18, 21-23, 25-31, and 40, Muhonen teaches a method for monitoring multiple regions of a papermaking machine (see abstract) to determine current activity of a stock (see figure 2) and then comparing that activity to a database of boundary conditions [0033] to find the high and lower levels of acceptable ranges (see figure 3 which depicts this using consistency as the activity) and then moving the slice opening of the headbox in order to make adjustments based on these calculations (see figure 3).
While Muhonen is silent to the term “formation error” is it clear that the same actions occur utilizing different terminology. The act of comparing the measurement values (figure 2) to the multivariable controller (item 16) that then compares to boundaries from a data base to determine if it is too high or low (see figure 3) must perform the steps of calculating the formation error in order for the adjustment measures to be actionable.
In the alternative it would be obvious to produce the specific error from the difference as the same end result occurs even if the intermediate steps utilize a multivariable process. The act of a computer utilizing one activity is a simpler and obvious version of the multivariable calculations the Muhonen teaches.
Furthermore, Muhonen teaches that the adjustments occur int eh headbox (reads on first section) with multiple activity measurements being taken (items 14 and 15) with multiple types of readings (see figure 2) to predict the properties of the paper being made (see figure 2). Muhonen additional utilizes optical measurements to monitor the activates [0033] to make adjustments to the machine to control the measurable variables like turbulence (shown as a known measurable value in [0011]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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