DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is non-final and is in response to the claims filed December 11, 2023. Claims 1-10 are currently pending, of which claims 1-10 are currently rejected.
Claim Objections
Claims 1, 2, and 8 are objected to because of the following informalities:
Claim 1 recites “DC” and “AC” and when first introduced, this language should be fully spelled out. For example, the claim could read “secondary direct current (DC) alternating current (AC)
Additionally, the claim refers to a “unit” and “probe” in quotation marks (“”), and this is unnecessary and could lead to potential confusion as to a special definition to the word “probe” and “unit” that does not exist. Examiner recommends simply removing the quotation marks around those words.
Claim 2 recites multiple wherein clauses separated by semi-colons (“;”). Wherein clauses are not specific limitations that are delineated with semi-colons, but instead are used to further clarify other claim language. Therefore, the wherein clauses should each be preceded by a comma (“,”).
Claim 8 recites “according to claim 1”, however, for clarity and continuity purposes, this should be “according to the method of claim 1”. This is further emphasized in the rejections under 35 USC 112(b) of claims 9 and 10, as detailed below. Additionally, claim 8 lists multiple claim limitations but is lacking an “and” after the penultimate limitation (“a data storage unit”) and prior to the final limitation (“a data main-console”).
Appropriate correction is required.
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.
Claim 10 is/are rejected under 35 U.S.C. 101, based upon consideration of all the relevant factors, because the claimed invention is directed to non-statutory subject matter. Applicant does not include any language in the specification providing any further guidance or definition to the term “computer readable storage medium.” Therefore, the broadest reasonable interpretation of the claim covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable storage medium. See Ex parte Mewherter, BPAI Appeal No. 2012-7692 (May 8, 2013). Since signals per se do not fall under any of the four statutory categories (i.e., process, machine, manufacture, or composition of matter), they are ineligible for patenting. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
Claim 10 is therefore rejected under 35 U.S.C. § 101 for covering non- statutory embodiments. See MPEP § 2106.03 (“A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims … should be rejected under 35 U.S.C. 101, for at least this reason.”).
Examiner recommends amending claim 10 by adding the words “non-transitory” in front of “computer readable storage medium” in order to overcome this ground of rejection.
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: “instruction collection unit”, “system logic unit”, “data processing unit”, “data storage unit”, and “data main-console” in claim 8.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—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 following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “and the measurement results are output to a communication module…” and it is unclear if this is the measurement potential results or results of other measurements, such as the measurements taken by the sensors prior to analysis and correction. This is unclear because these are two different results and the stage of the output is explicitly required in the claim.
Additionally, the claim recites “a weak AC Current modulation signal” and this is a relative term which renders the claim indefinite. The term “weak” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Furthermore, the claim recites “the multiple potential acquisition “probes”” and there is insufficient antecedent basis for this claim language. Specifically, only a singular “potential collection “probe”” is claimed and it is unclear if this is the same probe or a different set of probes.
Moreover, the claim recites multiple “micro temperature, humidity, and air pressure sensors” and it is unclear if these are each supposed to be individual sensors, such as a “micro temperature sensor”, “a humidity sensor”, and “air pressure sensor”, or if there are multiple instances of a single sensor made up of a combination of all three sensors (i.e. sensor one detects micro temperature, humidity, and air pressure, and sensors 2-n detect micro temperature, humidity, and air pressure as well).
Claim 9 recites “steps of the method” and it is unclear the extent of the method that is actually being implemented. The method of claim 1 contains multiple steps, and claim 9 is not clear whether it is implementing some of those steps, or all of them. Contrast this with claim 8, which just covers all of claim 1. Claim 10 recites similar language and is rejected for at least the same reasons therein.
Claim 2-7 are rejected based on their dependency from above-rejected claim 1.
Regarding claim 8, claim limitations “instruction collection unit”, “system logic unit”, and “data main-console” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, Applicant’s disclosure is not clear if these various units are software, hardware, or a combination of both. Only the functionality is referred to in the Specification, and no structure is provided. Therefore, claim 8 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/NICHOLAS KLICOS/Primary Examiner, Art Unit 2118