DETAILED ACTION
This action is filed in response to the amendments filed on 3/10/2026.
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive. Applicant argues the 35 USC 101 rejection should be withdrawn as the independent claims recite a particular machine, the magnetic heads. Examiner notes the method of Claim 1 recites a method that is applied to magnetic heads, and Claim 6 claims an inspection device which is used to inspect the heads. As cited in MPEP 2106.05(II) “Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. See CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011).”
Examiner notes in the instant claims the magnetic heads are an object on which the method and device of the independent claims operate and thus do not integrate the abstract ideas into a practical application or provide significantly more. The 35 USC 101 rejections of pending Claims 1,3,5-6, 8, and 10 are therefore maintained.
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 1,3 ,5-6, 8, and 10 are rejected under 35 U.S.C. 101. The claimed invention is directed to the abstract concept of performing mental steps without significantly more. Claim 1, and similarly Claim 6 recites the following abstract concepts in BOLD of:
A magnetic head inspection method comprising:
executing inspection of magnetic heads sequentially, the inspection of each magnetic head including:
acquiring, from a magnetic head under inspection, a characteristic value indicating a characteristic value and a threshold; and
determining whether the magnetic head passes the inspection based on the characteristic value and a threshold; and
varying setting, of the threshold during the executing inspection of magnetic heads sequentially, the varying including:
acquiring a moving average value of characteristic values of inspected magnetic heads, and
varying the threshold according to a relationship between the moving average value and a target value indicating a target moving average value the threshold being varied in a range of upper and lower limits.
wherein the varying the threshold is performed by:
comparing the moving average value with the target value, and
increasing the threshold when the moving average value is smaller than the target value, and decreasing the threshold when the moving average value is equal to or larger than the target value.
Under Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: process, machine, manufacture, or composition of matter. The above claims are considered to be in a statutory category as Claim 1 teaches a method and Claim 6 teaches a device.
Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers performing mathematics or mental steps. The steps of executing an inspection sequentially, acquiring a characteristic value indicating a characteristic, determining if the head passes inspection, and varying a threshold based on a comparison are all mental processes that can be practically performed in the human mind or with pen and paper. The step of acquiring a moving average value could either be considered as performing mathematics or a mental process depending on one's interpretation of the limitation.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because there is no improvement to another technology or technical field; improvements to the functioning of the computer itself; a particular machine; effecting a transformation or reduction of a particular article to a different state or thing. Examiner notes that the claimed methods and system are not tied to a particular machine or apparatus and therefore do not contain an improvement to another technology or technical field. Similarly there are no other meaningful limitations linking the use to a particular technological environment. Finally, there is nothing in the claims that indicates an improvement to the functioning of the computer itself or transform a particular article to a new state.
Under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the Claim 6 limitations teaching a memory and processor disclose generic computer elements and not considered significantly more than the abstract idea. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
Finally, while Examiner notes the Claim 1 and 6 limitations teaching acquiring a characteristic value and a target moving average value recite abstract ideas, they also recite necessary data gathering which does not integrate the abstract idea into a practical application. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
Claims 3, 5, 8 and 10 further limit the abstract idea of setting a threshold without integrating the abstract concept into a practical application or including additional limitations that can be considered significantly more than the abstract idea.
Allowable Subject Matter
Claims 1, 3, 5-6, 8, and 10 contain allowable subject matter. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claims 1 and 6, Examiner notes the closest prior art to be Ng (US8755136 B1) and Ueda (US8552716 B2). None of the prior art teaches or renders obvious the method as claimed comprising “increasing the threshold when the characteristic value is smaller than the moving average value, and decreasing the threshold when the characteristic value is equal to or larger than the moving average value.”
Examiner notes the prior art teaches changing the threshold based on a variety of characteristics (e.g. see Ng [Col 6 line 66- Col 7 line 12]) and also teaches the moving average value as one of the calculated characteristics (e.g. see Ng [Col 4 lines 32-41]). However, the prior art does not teach specifically increasing or decreasing the threshold based on the moving average. Application specification paragraph [0049] teaches the specific shifts in threshold are done so that “the inspection is automatically strengthened in a case where the characteristic of the magnetic head 22 to be inspected is poor, and the inspection is automatically relaxed in a case where the characteristic is good. As a result, in a group (production lot) having good characteristics on average, a difference from the average value to the worst value of the characteristic values becomes large since the inspection is relaxed.” Therefore it would not have been obvious to one of ordinary skill in the art before the effective filling date to perform this specific manipulation of the threshold.
Claims 3 and 5 would be allowable based on its dependence on Claim 1.
Claim 8 and 10 would be allowable based on its dependence on Claim 6.
Conclusion
Examiner notes while there are no prior art rejections, Examiner is unable to comment on the allowability of the claims until the 35 U.S.C. 101 Rejections are addressed.
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 NYLA GAVIA whose telephone number is (703)756-1592. The examiner can normally be reached M-F 8:30-5:30pm.
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/NYLA GAVIA/Examiner, Art Unit 2857
/Catherine T. Rastovski/Supervisory Primary Examiner, Art Unit 2857
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