DETAILED ACTION
Claims 1-3, 5-7, 9-10, 18, 20-23, and 26-29 are pending. Claims dated 10/08/2025 are being examined.
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 .
Response to Arguments
Double Patenting:
The double patenting rejections are maintained and will not be copied below again (as from the time of working of this Office Action, the claims of co-pending Application No. 18/551,065 do not appear to be amended), but will be held in abeyance as per applicant’s request in remarks filed 10/08/2025 until the independent claims are found allowable. An appropriate terminal disclaimer may obviate this rejection.
35 U.S.C. § 101:
Applicant’s amendments to the claims do not overcome the previously set forth 101 rejections. Under broadest reasonable interpretation, the additional elements of outputting a control signal amounts to insignificant extra-solution activity as explained in the 101 section below and thus, do not place a practical application to the claims.
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, 5-7, 9-10, 18, 20-23, 26-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1:
Independent claim 1 is directed to a method. Therefore, claim 1 is within at least one of the four statutory categories. Claim 1 will be used as a representative claim for the remainder of the 101 rejections.
101 Analysis – Step 2A, Prong I:
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the 101 rejections. Claim 1 recites:
(Claim 1) A computer implemented method of monitoring the cleanliness of an underwater surface of a stationary object, the method performed by a processor on a computing device and comprising:
retrieving environmental data from memory of the computing device, the environmental data associated with environment conditions of the stationary object;
determining a fouling value indicative of a level of fouling that the surface is exposed to based on at least the environmental data;
determining a fouling protection value defining a tolerance to fouling associated with a surface of the stationary object;
identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value; and
identifying high risk fouling conditions by determining that the fouling risk value exceeds a predetermined threshold, and in response, outputting a control signal to: (i) a remotely operated underwater vehicle or a cleaning robot configured to clean the surface of the stationary object, to initiate inspection of the surface of the stationary object (ii) a cleaning robot configured to clean the surface of the stationary object, to initiate cleaning of the surface of the stationary object or (iii) an output device of the computing device, or a remote device, to alert a user to the high risk fouling conditions.
The Examiner submits that the foregoing bolded limitation(s) constitute “mental processes” – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III) because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
Specifically, the limitation: “determining a fouling value indicative of a level of fouling that the surface is exposed to based on at least the environmental data” in the context of this claim encompasses mental evaluation. A person can mentally evaluate how much fouling is present based on received environmental data.
The limitation: “determining a fouling protection value defining a tolerance to fouling associated with a surface of the stationary object” in the context of this claim encompasses mental evaluation. A person can mentally determine a surface characteristic defining a tolerance to fouling such as temperature of a marine vessel hull.
The limitation: “identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value; and identifying high risk fouling conditions by determining that the fouling risk value exceeds a predetermined threshold” in the context of this claim encompasses mental evaluation. A person can mentally determine how a risk of fouling based on the current fouling state of the hull and a surface characteristic such as the temperature of the surface of the hull exceeding a threshold temperature. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II:
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract idea(s) into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional” limitations” while the bolded portions continue to represent the “abstract idea”):
(Claim 1) A computer implemented method of monitoring the cleanliness of an underwater surface of a stationary object, the method performed by a processor on a computing device and comprising:
retrieving environmental data from memory of the computing device, the environmental data associated with environment conditions of the stationary object;
determining a fouling value indicative of a level of fouling that the surface is exposed to based on at least the environmental data;
determining a fouling protection value defining a tolerance to fouling associated with a surface of the stationary object;
identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value; and
identifying high risk fouling conditions by determining that the fouling risk value exceeds a predetermined threshold, and in response, outputting a control signal to: (i) a remotely operated underwater vehicle or a cleaning robot configured to clean the surface of the stationary object, to initiate inspection of the surface of the stationary object (ii) a cleaning robot configured to clean the surface of the stationary object, to initiate cleaning of the surface of the stationary object or (iii) an output device of the computing device, or a remote device, to alert a user to the high risk fouling conditions.
For the following reason(s), the Examiner submits that the above identified additional elements do not integrate the above-noted abstract idea into a practical application.
Regarding, the additional limitations of “performed by a processor on a computing device”, the processor is a generic computer component and also acts merely as a tool to perform the aforementioned abstract ideas and do not amount to significantly more than the judicial exception. See MPEP 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception.
The additional limitations of “retrieving environmental data from memory of the computing device, the environmental data associated with environment conditions of the stationary object”, amounts to mere data gathering for use in the determining steps which is a form of insignificant extra-solution activity. It has been held that limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include: Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea, see MPEP 2106.05.
The additional limitations of “and in response, outputting a control signal to: (i) a remotely operated underwater vehicle or a cleaning robot configured to clean the surface of the stationary object, to initiate inspection of the surface of the stationary object (ii) a cleaning robot configured to clean the surface of the stationary object, to initiate cleaning of the surface of the stationary object or (iii) an output device of the computing device, or a remote device, to alert a user to the high risk fouling conditions” amounts to insignificant post-solution activity. Mere transmission of data over networks and/or mere displaying/alerting/notifying are forms of insignificant extra-solution activity.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, that reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B:
Regarding Step 2B of the 2019 PEG, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well understood, routine, conventional activity in the field.
Regarding the computer elements:
As discussed with respect to Step 2A Prong Two, the additional elements of a processor in the claim amounts to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)). The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Regarding the data gathering steps:
It has been determined that such limitations are conventional as they merely consist of data gathering and data transmitting which are recited at a high level of generality. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); or buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Regarding the insignificant post solution activity steps:
Examples of insignificant post-solution activities can include merely displaying a result (e.g., output) on a display device, merely communicating a message based on the result, merely recording the result in a memory storage device, and the like. Adding a final step of transmitting collected information to a process that recites an abstract idea does not add a meaningful limitation to the process. See MPEP 2106.05(d)(II) and 2106.05(g). Furthermore, MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner. Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function, and as recited above the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Hence the claim is not patent eligible.
Independent claim 27, 28, and 29 substantially recite the same limitations as the representative independent method claim 1 and is rejected for the same reasons as disclosed above.
Dependent claims 2-3, 5-7, 9-10, 18, 20-23, and 26 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application, specifically only reciting/elaborating on the additional activities in the detecting and generating steps that may also be reasonably performed in the human mind (i.e., claims 6-7, 18, and 20-23 further defining the calculations for the fouling value), and reciting/elaborating on additional insignificant extra-solution activities (data gathering: claims 2-3, 5 further defining the type of data gathered; post-solution activities: claims 9-10, and invoking computers or other machinery merely as a tool to perform an existing process: claim 26) wherein the additional elements are well-known, routine, and conventional as exemplified by the cited case law for the 101 rejection of the representative claim and cited prior art in the 103 rejections.
Allowable Subject Matter
Claims 1-3, 5-7, 9-10, 18, 20-23, and 26-29 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101, set forth in this Office Action and to include all the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding the independent claims, the prior arts on record do not teach, describe, and/or suggest all the limitations as presented in the claims as a whole – specifically “identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value; and identifying high risk fouling conditions by determining that the fouling risk value exceeds a predetermined threshold, and in response, outputting a control signal to: (i) a remotely operated underwater vehicle or a cleaning robot configured to clean the surface of the stationary object, to initiate inspection of the surface of the stationary object (ii) a cleaning robot configured to clean the surface of the stationary object, to initiate cleaning of the surface of the stationary object or (iii) an output device of the computing device, or a remote device, to alert a user to the high risk fouling conditions”.
The closest prior art Kato et al. (US-20180211453-A1) does not teach identifying a level of risk of fouling on the surface of the stationary object by determining a fouling risk value using the fouling protection value and the fouling value.
Prior art Visser et al. (US-20180304321-A1) teaches the claimed fouling protection value corresponding to the temperature of the surface ([0023]). Visser does not teach however, determining a fouling risk value using the surface temperature.
Prior art Umemiya (US-20210047012-A1) teaches a level of risk of fouling determined based on seawater temperature ([0049]), but said seawater temperature does not correspond to the claimed fouling protection value which is said to be associated with a surface of the stationary object.
Prior art Smith (US-20140076224-A1) teaches control of a cleaning robot when a cleaning differential exceeds a predetermined threshold amount or range of acceptable values ([0034]), but said cleaning differential does not correspond to the claimed fouling risk value which is identified based on both the fouling protection value and the fouling value.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-11192069-B2 Coster teaches a method for assessing a state of fouling
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 DAVIN SEOL whose telephone number is (571) 272-6488. The examiner can normally be reached on Monday-Friday 9:00 a.m. to 5:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jelani Smith can be reached on (571) 270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVIN SEOL/Examiner, Art Unit 3662
/JELANI A SMITH/Supervisory Patent Examiner, Art Unit 3662
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