DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
Response and Claim Status
The instant Office action is responsive to the response received April 20, 2026 (the “Response”).
Applicants’ election of Group I (claims 1–4) is acknowledged. See Response 4 (reciting “Applicant hereby elects Group 1”). Because Applicants do not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse. See MPEP § 818.01(a).
Claims 1–4 and 10–12 are currently pending.
Claimed Foreign Priority
Acknowledgment is made of (1) Applicants’ claim for foreign priority based on an application filed in EP on November 15, 2022; and (2) certified copies of papers required by 37 C.F.R. § 1.55.
Information Disclosure Statement (IDS)
The IDSs filed November 10, 2023 and November 20, 2023 each comply with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDSs have been placed in the application file, and the information referred to therein has been considered.
Drawings
37 C.F.R. § 1.84(q) recites “[Lead lines] must originate in the immediate proximity of the reference character and extend to the feature indicated.”
The drawings are objected to under 37 C.F.R. § 1.84(q) for failing to originate in the immediate proximity of their respective reference characters. See Figure 1, items 3, 51–5x; Figure 9, items 320, 330.
37 C.F.R. § 1.84(u)(2) recites “The view numbers must be larger than the numbers used for reference characters.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(u)(2) for failing to include view numbers larger than numbers used for reference characters. See Figures 1–9.
37 C.F.R. § 1.84(p)(1) recites “Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(1) for failing to orient view number “Fig. 4”; reference numerals 2, 4, 20–28; and the text represented by “1)” to “7)” in the same direction as the view so as to avoid having to rotate the sheet. See Figure 4.
37 C.F.R. § 1.84(p)(5) recites “Reference characters mentioned in the description must appear in the drawings.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(5) for mentioning reference characters not appearing in the drawings. See Spec. 12 (mentioning reference characters 102–104).
37 C.F.R. § 1.83(a) recites “The drawing in a nonprovisional application must show every feature of the invention specified in the claims.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.83(a) for failing to show every feature of the invention specified in claims 10–12. Notably, Figure 6 (i) shows two boxes with the same text “Receive, from runtime service [sic], a unique identifier of a confiiguration [sic] item”; and (ii) does not accurately reflect what is disclosed on page 12 of the Specification (including what is described under items 103–104).
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The following is a quotation of 37 C.F.R. § 1.71(a):
The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
Claims 1–4 and 10–12 are objected to under 37 C.F.R. § 1.71(a) for the following informalities:
(1) claim 1, line 3 should be “server[[-]] and controller layer” to be consistent with lines 7–8.
(2) claim 10, line 9 should be “the corresponding host address.”
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(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 claims in the instant 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) 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):
(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 for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in the instant application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant 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) 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 limitations are:
“runtime service” (claim 1, line 4; claim 10, line 3); and
“Service Dispatcher component” (claim 10, line 2).
Since the claim limitations invoke 35 U.S.C. § 112(f), claims 1–4 and 10–12 have been interpreted to cover the corresponding structure described in the Specification that achieves the claimed function, and equivalents thereof.
With respect to the claimed function corresponding to “runtime service” (claim 1, line 4; claim 10, line 3), the Specification discloses “each Runtime Service in a system is to manage its own configuration data (e.g., in an OPC UA server or similar).” Spec. 10:25–27. Thus, the Specification discloses an OPC UA server as achieving the claimed function.
With respect to the claimed function corresponding to “Service Dispatcher component” (claim 10, line 2), the Specification discloses method item 100 as achieving the claimed function. See Spec. 12. According to the Specification, “The method 100 may be executed in a Service Dispatcher component 24, 34.” Id. And according to the Specification, the “service dispatcher component 24 is . . . an Open Platform Communications Unified Architecture, OPC UA, server.” Id. Thus, the Specification discloses an OPC UA server as achieving the claimed function.
If Applicants do not intend to have the claim limitations treated under 35 U.S.C. § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
The MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 1–4 and 10–12 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
(i) claim 1, line 4, “each runtime service” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the one or more runtime services introduced in line 2 or not. If so, the Examiner recommends amending the limitation to recite “each of the one or more runtime services
It is assumed for examination purposes that the limitation refers to the one or more runtime services introduced in line 2. See MPEP § 2173.06 (reciting “When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection.”; emphasis omitted).
(ii) claim 1, line 6, “configuration item” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the configuration data introduced in lines 4–5 or not. If so, the Examiner recommends amending the limitation to recite “each of the configuration data of the runtime service.”
It is assumed for examination purposes that the limitation refers to the configuration data introduced in lines 4–5.
Claim 10, line 4 by analogy.
(iii) claim 1, line 6, “the runtime services” lacks clear antecedent basis. The limitation adds ambiguity to the claim because the Examiner is uncertain as to which runtime service among the one or more runtime services introduced in claim 2 is being referred to.
(iv) claim 1, line 7, “distributed runtime services” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the one or more runtime services introduced in line 2 or not.
(v) claim 1, lines 9–10, “the respective runtime service” lacks clear antecedent basis. The limitation adds ambiguity to the claim because the Examiner is uncertain as to which runtime service among the one or more runtime services introduced in claim 2 is being referred to.
(vi) claim 1, lines 10–11, “its configuration item” adds ambiguity to the claim because the Examiner is uncertain as to which element possesses a configuration item.
(vii) claim 2, line 3, “the object” lacks clear antecedent basis.
(viii) claim 2, line 3, “the model” lacks clear antecedent basis.
(ix) claim 2, line 4, “the configuration item” lacks clear antecedent basis. The limitation adds ambiguity to the claim because the Examiner is uncertain as to which configuration item is being referred to.
(x) claim 10, lines 6–7, “a unique identifier of a configuration item” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the unique identifier of the configuration item recited in lines 3–4 or not.
(xi) claim 10, line 7, “a corresponding service host address” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the corresponding service host address recited in line 5 or not.
(xii) claim 11, line 3, “a service endpoint” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the endpoint of a respective runtime service recited in claim 1, lines 9–10 or not.
Claim Rejections – 35 U.S.C. § 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 1–4, 10, and 12 are rejected under 35 U.S.C. § 102 as being anticipated by Tuomi, Aggregating OPC UA Server for Flexible Manufacturing Systems, Aalto University, pp. 1–53 (July 2015).
Regarding claim 1, Tuomi discloses a distributed control system (fig. 4.1 including the OPC UA server depicted in fig. 3.1) for industrial processes (intended use in italics; MPEP § 2111.02), the distributed control system comprising
one or more runtime services (41, . . . , 4n) (the services provided by “OPC UA Server” at fig. 3.1) spanning over a server- (fig. 3.1 illustrates a server-layer because the OPC UA server accepts requests and messages from clients, processes them, and returns data) and control layer (fig. 3.1 illustrates a control layer that comprises operations to respond to request and publish messages “From OPC UA client”), wherein:
each runtime service (41, . . . , 4n) is arranged to manage its own configuration data (“OPC UA AddressSpace” at fig. 3.1 comprising nodes), and
each configuration item (“OPC UA AddressSpace” at fig. 3.1 comprising nodes) of the runtime service (41, . . . , 4n) is provided with common namespace (“Id,” “UnifiedNameSpaceId,” “NodeIdType,” and “NodeIdvalue” at fig. 5.4; “Nodes are identified in the database by their NodeId and the Serveruri of the server containing them . . . The NodeId consists of an identifier, an identifier type, and a namespace. . . . Each encountered unique combination of namespace uri and server uri are assigned a unique identifying value in the UnifiedNameSpace table (Figure 5.4).” at p. 32) extended to distributed runtime services (the services provided by “OPC UA Server” at fig. 3.1) spanning over the server and controller layer,
wherein an identifier that is unique within the distributed control system, is associated with a physical host address corresponding to an endpoint of the respective runtime service (41, . . . , 4n) (“individual nodes are identified by their NodeId in conjunction with the Serveruri of the server they are mapped to.” at p. 34) and stored as an attribute (“the configuration specifies database procedures used for mappings. Upon reading the configuration, proxy nodes are created in the Database folder and a mapping is created to a function connecting to a database, ultimately retrieving the value.” at p. 33) of its configuration item.
Regarding claim 2, Tuomi discloses wherein the unique identifier comprises a concatenation of two or more of: a Global Unique Identifier, GUID, for the object (“Each Node is identified with a unique NodeId. These identifiers can be of three types, Numeric, String or guid.” at p. 11); a GUID for the model; and Open Platform Communications Unified Architecture, OPC UA, node path for the configuration item (“OPC UA” at fig. 3.1).
Regarding claim 3, Tuomi discloses comprising runtime clients (21, . . . , 2m) (“OPC UA client” at fig. 3.1; “Alarm and Conditions” section at pages 14–15) for human supervision of industrial processes (intended use in italics).
Regarding claim 4, Tuomi discloses wherein the runtime clients (21, . . . , 2m) for human supervision of industrial processes (intended use in italics) comprises one or more of: process graphics, trend charts and alarm management (“Alarm and Conditions” section at pages 14–15).
Regarding claim 10, Tuomi discloses further comprising a Service Dispatcher component (the OPC UA server illustrated in fig. 3.1 at least suggests including software) configured to:
- receive, from a runtime service (the services provided by “OPC UA Server” at fig. 3.1) of the one or more runtime services, a unique identifier (“Tables implementing hda, illustrated in figure 5.4, contain the information required to identify nodes on opc ua servers, as well as to store and retrieve values. Nodes are identified in the database by their NodeId and the Serveruri of the server containing them – the same values used to identify nodes in configuration.” at p. 32) of a configuration item (“OPC UA AddressSpace” at fig. 3.1 comprising nodes) of the runtime service;
- obtain, based on the unique identifier, a corresponding service host address (“Id,” “NameSpaceURI,” and “SeverEndPointURI” of “UnifiedNameSpace” at fig. 5.4) from a mapping table (fig. 5.4), by accessing the mapping table, in which a unique identifier of a configuration item (“Nodes” at fig. 5.4) of the runtime service maps to a corresponding service host address (“Id,” “NameSpaceURI,” and “SeverEndPointURI” of “UnifiedNameSpace” at fig. 5.), to obtain the service host address, and
- provide (p. 32 of s. 5.2.4; p. 35 of s. 5.3.2), to the runtime service, the service host address.
Regarding claim 12, Tuomi discloses wherein the Service Dispatcher component is an in-process component in a runtime client (the OPC UA server illustrated in fig. 3.1 at least suggests including software), providing an in- process data look-up (p. 32 of s. 5.2.4; p. 35 of s. 5.3.2) to the runtime service.
Allowable Subject Matter
Claim 11 would be allowable if rewritten to (1) overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action; and (2) include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-12001874-B2; US-20230027121-A1; US-12261913-B2; US-20220221832-A1; US-20180347842-A1; US-20240045395-A1; US-20220166636-A1; US-20190166202-A1; US-20190332077-A1; US-20180107230-A1; and US-20220030090-A1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
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