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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “device that calculates” and “device that acquires” in claims 17-18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 therefore, subject to the conditions and requirements of this title.
Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) mental processes and mathematical concepts of predicting a silica scale using a mathematical equation calculation including mere data gathering steps of collecting sensor information to perform the calculations. This judicial exception is not integrated into a practical application because the data gathering steps do not add meaningful limitations to the method as they are insignificant extra solution activities. (See MPEP 2106(g)). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because (to determine subject matter eligibility a two step process analysis is required outlined in MPEP 2106):
In Reference to Claims 1-18
a. Step 1: is the claim a process, machine, manufacture or composition of matter?
-Yes
b. Step 2A prong 1: is the claim directed to an abstract idea?
-Yes, because it falls under the grouping of a mental process and mathematical concept of calculating a value. Specifically, the step of ‘calculating’ is based on a mathematical concept using values output by the retrieved sensors and/or a user’s mental process performed within the human mind, given its broadest reasonable interpretation, falls within the mental processes and mathematical concepts groupings of abstract ideas. A person can identify, in their mind, a value from an equation . Additionally, the data is merely gathered and evaluated and then nothing is done with this information (i.e.-no active step as a result of the calculation).
c. Step 2A prong 2: Does the claim recited additional elements that integrate the judicial exception into a practical application?
-No, because the data gathering steps do not add meaningful limitations as they are insignificant extra solution activities. (See MPEP 2106(g)). Additionally, the “device that calculates” is recited with a high level of generality. The computer and associated components do not add meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. (See MPEP 2106.05(f)).
d. Step 2B asks whether the claim is drawn to significantly more and since it does not apply this judicial exception in a meaningful way it cannot be said to be significantly more.
Accordingly, claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shibuta, Kato’622, Kato’283, UI, Takahashi, Sapeter, Fukuda, Shibuta’593, and Erdim show power plant silica monitoring or prevention devices within the general state of the art of invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW THOMAS LARGI whose telephone number is (571)270-3512. The examiner can normally be reached 8:00 - 4:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T LARGI/ Primary Examiner, Art Unit 3746
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