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 .
Status of Claims
Claims 1, 3-4, 6-12, 14-15, and 17-20 are currently pending in this application in response to the claim amendments filed 04/23/2026.
Response to Applicant’s Remarks
With respect to 35 U.S.C. §101 rejections:
Applicant’s remarks filed on 04/23/2026 have been fully considered but are not persuasive. Applicant argues that the amended limitation (wherein the second function module is used to operate equipment at an industrial plant) “involves the control and operation of industrial equipment at an industrial plant. This feature cannot be performed in a person’s head or on a pad of paper…these additional features integrate any exception into a practical application”. See Remarks at 8.
Examiner disagrees. The amended limitation “wherein the second function module is used to operate equipment at an industrial plant” does qualify as additional element under step 2A, Prong 2 analysis. However, the control and operating the industrial equipment at an industrial plant based on the generation of the second function module is not positively/actively being recited in the claim. Rather, the limitation is merely to link/apply the result of the judicial exception to the field of use (the second function module is used to operate equipment at an industrial plant). For example, if rephrasing the limitation to state “; and controlling operation of equipment at an industrial plant in response to the at least second function module” would qualify this additional element as integrating the abstract idea into a practical application. For this reason, Examiner will maintain the 101 rejections as set forth below.
With respect to 35 U.S.C. §102 rejections:
Applicant argues that Resnick does not teach or suggest that the function information of the first function module comprises at least one service defining at least a basic function of the first function module that is inherited by the derived at least second function module, and that the first function module further implements at least an interface information only defining said service that must be implemented by the at least derived second function module. In other words, the second function module implements only details of the service and not how the service is to be implemented. See Remarks at 9. Applicant argues further that Resnick not only discloses that a child template (as an instance of the parent template) inherits its characteristics, but also inherits a template type that specifies how to implement the inherited property from its parent template (e.g., the $Vessel template is refined to derive a $Hopper). Thus, a concrete implementation manner is inherited from the base template to a new child template in Resnick's system…Applicant actually seeks to avoid Resnick's approach. By using the Applicant's approach, the description of the first function module can be kept very general allowing the first function module to be used in multiple and different technical fields. See Remarks at 9-10.
Examiner disagrees. The exclusion that “the second function module inherits only the details of the service and not how the service is to be implemented” is not recited in the disputed claim limitation: “wherein the function information of the first function module comprises at least one service defining at least a basic function of the first function module that is inherited by the derived at least second function module, wherein the first function module further implements at least an interface information only defining said service that must be implemented by the at least derived second function module”. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims1. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, under a broadest reasonable interpretation, the second function module (the child) inherits the function information (a service that defines a basic function) of the first function module (the parent) does not exclude the details how the service is to be implemented. As stated by Applicant, Resnick teaches a child template inherits its (parent template) characteristics as such:
“the user derives from a $DiscreteDevice base template a $ Valve, a $SliceGate, a $ Agitator, and a $Conveyor custom application object template type. Under the $Conveyor template, the user further defines a $SingleDirectionConveyor, a $BiDirectionalConveyor, and an $Elevator template type. Under a $UserDefined base template the user derived a $ Vessel application object template. The $ Vessel template is further refined to derive a $Hopper and a $Bin application object” and further teaches “the children inherit the designated characteristics of their parent templates. The derivation relationship between a child and its parent template is registered in the derived from attribute 314 of the template object” (See page 28 lines 23-25).
“The derivation relationship between a child and its parent template is registered in the derived from attribute 314 of the template object” does not construe as “how the service is to be implemented”, but rather, it inherits only the details of the service. For this reason, Examiner will maintain the 102 rejections as set forth below.
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, 3-4, 6-12, 14-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Independent claim 1:
Step 1:
Claim 1 is drawn to a method of providing a software configuration for a modular plant and Claim 12 is drawn to a non-transitory computer-readable storage medium comprising instructions, therefore claims 1 and 12 fall under one of four categories of statutory subject matter (process/method, machines/products/apparatus, manufactures, and compositions of matter).
Step 2A, Prong 1:
Nonetheless, claims 1 and 12 are directed to a judicially recognized exception of an abstract idea without significantly more.
Claims 1 and 12 recite a step of “generating at least a second function module, wherein the second function module is a derived child object of the first function module that inherits the function information of the first function module” that under its broadest reasonable interpretation, enumerates a mental concept. Other than reciting a generic “processor of a computer” (claim 12), nothing in the claims preclude the steps from the mathematical concept and/or mental thought process evaluation. For example, a human can mentally evaluate changes through inheritance, such as to model the child objects with the inherit changes to a referenced parent function information. Thus, the recited step to generate a child object based on the inherit function information of the parent object is a judicial exception that is no more than a mental abstract idea (See MPEP 2106.04(a)(2)(III)).
Step 2A, Prong 2:
Claims 1 and 12 recite an additional step “providing a first function module as a parent object, wherein the first function module comprises a function information of the first function module…wherein the function information of the first function module comprises at least one service defining at least a basic function of the first function module that is inherited by the derived at least second function module, wherein the first function module further implements at least an interface information only defining said service that must be implemented by the at least derived second function module” that fails to integrate the abstract idea into a practical application. The step of providing a function information of the parent object is a form of insignificant input-solution activity, such that data gathering (and defining data) is necessary for the use of the judicial exception (See MPEP 2106.05(g)). The additional element “wherein the second function module is used to operate equipment at an industrial plant” is merely to link/apply the result of the judicial exception to the field of use (is used to operate equipment at an industrial plant). The control and operating the industrial equipment at an industrial plant based on the generation of the second function module is not positively/actively being recited in the claim (See MPEP 2106.05(h))2.
Step 2B:
The additional element that is a form of insignificant extra-solution activity, does not amount to significantly more than an abstract idea because the court decisions have determined that this additional element to be well-understood, routine, and conventional when claimed in a merely generic manner for data receiving/retrieving (See MPEP § 2106.05(d)(II)(i/iv)). As such, claims 1 and 12 are not patent eligible.
Dependent claims 3-4, 6-11, 14-15, and 17-20:
Step 1:
Claims 3-4 and 6-11 are drawn to a method of providing a software configuration for a modular plant and Claims 14-15, and 17-20 are drawn to a non-transitory computer-readable storage medium comprising instructions, therefore the claims fall under one of four categories of statutory subject matter (process/method, machines/products/apparatus, manufactures, and compositions of matter). Nonetheless, dependent claims 3-4, 6-11, 14-15, and 17-20 are also ineligible for the same reasons given with respect to claims 1 and 12 respectively.
Steps 2A-2B:
Claims 3-4, 6-11, 14-15, and 17-20 each recites further the insignificant extra-solution activity by narrowing in scope of the type of function information: “wherein the at least one service comprises a signature which comprises at least a characteristic property of said service” (claims 3/2/1 and 14/12), “wherein the function information of the first function module further comprises at least one device used to implement said defined service” (claims 4/2/1 and 15/12), “wherein the function information in said derived second function module comprises a protected feature that allows to adjust, whether a defined basic function of a service and/or a device from the derived second function module can be used in a further instance of said derived second function module” (claims 6/2/1 and 17/12), “wherein the at least first function module further comprises at least a conditional feature that allows activating/enforcing or disabling the usage of the device and/or service of the first function module and/or the derived second function module” (claims 7/2/1 and 18/12), “wherein the service comprises at least one optional feature” (claim 8/2/1), “wherein the at least second function module comprises a selection function allowing to enforce or disable the usage of the optional function of the service derived from the at least first function module” (claims 9/8/2/1 and 19/12), “wherein the at least second function module comprises a sealed feature allowing to disable inheritance of the at least second function module” (claims 10/1 and 20/12), and “wherein the service is a virtual-typed service, and wherein the at least derived second function module implements the at least service inherited from the parent first function module” (claim 11/2/1) (See MPEP 2106.05(g)). The additional element that is a form of insignificant extra-solution activity, does not amount to significantly more than an abstract idea because the court decisions have determined that this additional element to be well-understood, routine, and conventional when claimed in a merely generic manner for data receiving/retrieving (See MPEP § 2106.05(d)(II)(i/iv)). As such, claims 3-4, 6-11, 14-15, and 17-20 are not patent eligible.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Resnick et al. (WO 03/001343-A2).
With respect to claims 1 and 12, Resnick teaches a method and a computer program product comprising instructions which, when the program is executed by a processor of a computer, cause the computer to execute a method of providing a software configuration for a modular plant, the method comprising:
providing a first function module as a parent object, wherein the first function module comprises a function information of the first function module; generating at least a second function module, wherein the second function module is a derived child object of the first function module that inherits the function information of the first function module (application model also supports propagating changes through inheritance…child objects inherit changes to a referenced parent template definition, p.7 and lines 23-27; children inherit the designated characteristics of their parent templates…derivation relationship between a child and its parent template is registered in the derived from attribute 314 of the template object, p.28 lines 23-25; templates incorporate an inheritance behavior between a parent template and a child template derived from the parent, p.34 lines 32-33, a generic "$DiscreteDevice" template is customized by a control engineer to create domain-specific "valve," "motor," and "pump" templates…customization of a generic SDiscreteDevice template into domain-specific "valve", "motor", and "pump" templates is performed through the IDE, and only within the IDE, p.35 lines 1-4); wherein the function information of the first function module comprises at least one service defining at least a basic function of the first function module that is inherited by the derived at least second function module (LMX incorporated into the engine objects (e.g., application engine objects) provides services enabling application objects to access data maintained as attributes on other objects, p.21 and lines 26-33; the children inherit the designated characteristics of their parent templates. The derivation relationship between a child and its parent template is registered in the derived from attribute 314 of the template object, p.28 lines 23-25); wherein the first function module further implements at least an interface information only defining said service that must be implemented by the at least derived second function module (The LMX of the application engine includes, by way of example, a set of interfaces…The set of interfaces comprises: IMxSupervisoryConnection and IMxUserConnection… IMxSupervisoryConnection interface defines methods used by application objects to access information from physical devices in a plant, p.22 lines 4-7).
With respect to claims 3 and 14, Resnick teaches further wherein the at least one service comprises a signature which comprises at least a characteristic property of said service (The LMX of the application engine includes, by way of example, a set of interfaces…The set of interfaces comprises: IMxSupervisoryConnection and IMxUserConnection… IMxSupervisoryConnection interface defines methods used by application objects to access information from physical devices in a plant, p.22 lines 4-7).
With respect to claims 4 and 15, Resnick teaches further wherein the function information of the first function module further comprises at least one device used to implement said defined service (A model view depicts the application in terms of logical associations between plant/process equipment within a controlled plant process - e.g., a representation of a physical plant layout. A deployment view depicts the physical computer devices and assignment of instantiated objects identified in the model view to the computer devices and engines executing upon the computer devices. A derivation view depicts the sources (inherited property relationships from base template to instance) of objects instantiated from templates to carry out the functionality of the model view elements, p.25 lines 1-7).
With respect to claims 6 and 17, Resnick teaches further wherein the function information in said derived second function module comprises a protected feature that allows to adjust, whether a defined basic function of a service and/or a device from the derived second function module can be used in a further instance of said derived second function module (An attribute in a template or instance can be unlocked, locked in parent, or locked in me. Both templates and instances can have unlocked attributes. An unlocked attribute is read-write, and the object has its own copy of the attribute value - i.e., it is not shared by derived objects. A template, but not an instance can have a locked in me attribute status. In the case of a locked in me attribute, the value is read-write. Derived objects do not get their own copy of the attribute value, but instead share the locked value by reference to an ancestor where the attribute is locked. The status of the attribute in the children of a locked in me attribute is "locked in parent." Thus, changes to the value of a locked in me template attribute propagate to all children…. a locked in me attribute in a template can be changed, and the change is cascaded down through all templates and instances derived from the template containing the locked attribute, p.30 lines 16-33).
With respect to claims 7 and 18, Resnick teaches further wherein the at least first function module further comprises at least a conditional feature that allows activating/enforcing or disabling the usage of the device and/or service of the first function module and/or the derived second function module (all alarms in a particular area can be disabled by a single attribute designation within the area object. The compatibility of the host area and hosted objects is determined by checking the "required host features" of the hosted object and the "supported features" specified by the hosting area object. These object attributes are established when the objects are built. If the "required host features" are met by the "supported features," then the host assignment is completed by assigning appropriate values to hosted objects. An object is placed within an area by designating the area name in the area attribute 328 of the common primitive of an application or area object, p.26 lines 7-14).
With respect to claim 8, Resnick teaches further wherein the service comprises at least one optional feature that is only described in the at least second function module (Attribute locking and its effect upon change propagation in templates are yet other aspects of the derivation architecture of the exemplary configuration utilities disclosed herein. The derivation architecture enables information within an object template to be propagated tb derived objects or alternatively a default value is specified for a derived template that can be overridden by a developer. In an embodiment of the invention, propagation is affected automatically by storing a reference to a parent's copy of a locked attribute. An attribute in a template or instance can be unlocked, locked in parent, or locked in me. Both templates and instances can have unlocked attributes. An unlocked attribute is read- write, and the object has its own copy of the attribute value - i.e., it is not shared by derived objects. A template, but not an instance can have a locked in me attribute status. In the case of a locked in me attribute, the value is read-write. Derived objects do not get their own copy of the attribute value, but instead share the locked value by reference to an ancestor where the attribute is locked. The status of the attribute in the children of a locked in me attribute is "locked in parent." Thus, changes to the value of a locked in me template attribute propagate to all children. Both templates and instances can have a locked in parent attribute. A locked in parent attribute is read-only. The interface for getting and setting a locked status of an attribute is exposed to configuration clients. The client obtains a reference to the attribute and sets its locked status. Whether a change to an attribute is permitted and/or propagated to derived children is based upon whether a particular attribute in a template is locked. Locking an attribute has two consequences. First, a locked in parent attribute cannot be modified in a derived template or instance. Second, a locked in me attribute in a template can be changed, and the change is cascaded down through all templates and instances derived from the template containing the locked attribute. On the other hand, if an attribute is not locked, then the attribute specifies a default value that can be overridden in a derived template. Furthermore, if the value of a non- locked attribute is changed, then the change is not cascaded to derived templates, p.30 lines 10-34).
With respect to claims 9 and 19, Resnick teaches further wherein the at least second function module comprises a selection function allowing to enforce or disable the usage of the optional function of the service derived from the at least first function module (The SetAttribute method is used to set a value and/or invoke an action by the object (a pseudo-remote procedure call. The SetAttribute call includes the following inputs: attribute handle, confirmation handle, write type, access level, access level verifier, data in. The SetAttribute call returns an optional response value, p.38 lines 6-9).
With respect to claims 10 and 20, Resnick teaches further wherein the at least second function module comprises a sealed feature allowing to disable inheritance of the at least second function module (The status of the attribute in the children of a locked in me attribute is "locked in parent." Thus, changes to the value of a locked in me template attribute propagate to all children. Both templates and instances can have a locked in parent attribute. A locked in parent attribute is read-only, p.30 lines 22-25).
With respect to claim 11, Resnick teaches further wherein the service is a virtual-typed service, and wherein the at least derived second function module implements the at least service inherited from the parent first function module (the application objects comprise a virtually limitless spectrum of classes of executable objects that perform desired supervisory control and data acquisition/integration functions in the context of the supervisory process control and manufacturing information application, p.10 lines 3-6; primitives can be concrete (i.e., they exist within an instance of an object), virtual (i.e., they exist as templates to create concrete primitives, or utility (i.e., they are used by an object or primitive developer to add functionality to the object or primitive such as alarming, history, input, output, output with feedback, etc.). Virtual primitives are used when it is uncertain how may primitives of the specified type will be needed by the object when it is configured, p.36 lines 23-28).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HIEN (CINDY) D KHUU whose telephone number is (571)272-8585. The examiner can normally be reached on Monday-Friday 8a-8p.
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/HIEN D KHUU/Primary Examiner, Art Unit 2116 June 26, 2026
1 See Specification at [0042] for the precise teaching of “the parent first function module 10 only defines a service by a signature and the derived child second function module 12 contains the information of the detailed implementation of that service” that are not read into the claims. As disclosed herein, the child does inherit the ‘detailed’ implementation of that service, which is contrary to Applicant’s argument.
2 Rephrasing the limitation to “controlling operation of equipment at an industrial plant in response to the at least second function module” would qualify as integrating the abstract idea into a practical application.
Prosecution Insights