DETAILED ACTION1
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites that the processor [is]…configured to…determine from analysis results whether a chip is being generated…and whether to cut the chip away from the surface. This feature is not enabled. MPEP 2164.01 states that the test of enablement is whether undue experimentation would be needed to practice the invention. The MPEP lays out eight factors to consider whether the level of experimentation would be undue. These factors are: (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the context of the disclosure. See MPEP 2164.01(a) citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The nature of the invention is that of a device or method for removing chips during machine tool fabrication. The breadth of the claim is that the system determine[s] from analysis results whether a chip is being generated…and whether to cut the chip away from the surface mid fabrication. The specification explains that this analysis is done via some form of machine learning artificial intelligence system. See [0044]-[0045]. No other system is described. Thus, enablement of this feature requires enablement of the underlying AI system. The level of ordinary skill is either a person having a computer science degree and 3-5 years of experience in both machine learning and machining technologies. The state of the prior art is that machine learning systems were known, and was being used in the machining arts for predictive uses of chip removal during machining. The level of predictability in developing machine learning systems is high.
Turning now to the direction and examples provided by the inventor, the Supreme Court held in the case of Amgen v. Sanofi, that “if a patent claims an entire class of processes…the patent’s specification must enable the person skilled in the art to make and use the entire class.” See Amgen Inv. Et al. v. Sanofi, 598 U.S. 594 (2023), page 13 of Slip Decision. Applicant’s specification, in paragraph [0045] discusses that a wide variety of AI systems can be used to perform the determining step. Yet applicant’s specification only enables in detail a single type of machine learning, namely a convolutional neural network (CNN). See Specification [0047]-[0050]. Thus, enablement of the entire class of AI systems discussed in paragraph [0045] requires enablement of the training data and supervision of each AI system. As such, enablement of claim 1 would require limiting the claim to utilizing a CNN to determine from analysis results whether a chip is being generated. The same issue applies to independent claims 10 and 18. Claims 2-9, 11-17, and 19-20 are rejected based on their dependence.
ALLOWABLE SUBJECT MATTER
The prior art does not teach the combination of features recited in claims 1, 10, or 18. The prior art teaches a wide variety of chip removal systems. See e.g. U.S. 2019/0196454 to Tarui; U.S. 9,943,966 to Shirahata; & U.S. 2022/0179390 to Shimoike. Both Tarui and Shimoike teaches using machine learning systems in combination with sensors to determine if disconnected chips have built up in machining areas and based on a determination from the AI system using a blower to clean away the chips. Shirahata using a robotic hand (i.e. gripper) to remove chips and likewise uses an AI system to determine when to deploy the hand. The prior art also discusses using specifically shaped chip breaking apparatuses attached to the machining tool that cause the chips to curl and break away in predictable patterns. But none of the prior art systems use AI to determine if a still attached chip should be cut away via a laser system and then carried away by a gripper, as recited in the independent claims. The determination if a still attached chip is likely to become problematic is a different AI problem and there is no teaching or suggestion for machine learning of this nature.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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. 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.
/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.