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 .
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive. On page 9 of the Remarks, Applicant argues claims 12 and 13 recite additional features and functionality that overcome the rejection under 35 U.S.C. 101. The argument is not persuasive as it presents no particular argument as to what features are believed to overcome the rejection and why. The argument references “actions deemed to be allowable” in the Office Action, however the indication of allowability in the office action was with respect to the prior art and a claimed invention which was not under a 35 U.S.C. 101 rejection.
Additionally concerning the rejection under 35 U.S.C. 101, claims 1-3 and 7-11 are rejected herein, as the claims have been amended to remove interpretation under 35 U.S.C. 112(f) and are therefore no longer interpreted as including a special purpose computer programmed to perform the disclosed algorithm.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendment to claim 1 to incorporate features of original claim 5 creates a conflict in claim 7, as well as claims 8 and 9 dependent thereon. The embodiments of original claims 5 and 7 are disclosed as distinct options for detecting the presence or absence of the void, i.e. based on signal level ratio vs. spectral center of gravity. See Figures 4 and 6 vs. Figures 9 and 12. Claim 7 depends on claim 1 but there is no description of employing both approaches together in the same processing device for detecting the presence or absence as claimed, and the specification makes it clear they are distinct devices and approaches to making the determination. See e.g.: “[0114] In the first embodiment described above, void detection is performed using the ratio. On the other hand, in the second embodiment, attention is paid to the fact that interference of electromagnetic waves occurs due to the presence of voids in the inspection object, and the spectral center of gravity of the received signal (spectral distribution of the received signal) changes due to the interference, and the server 1 detects voids based on this change.”
As there is no disclosure of a processing device that detects the presence or absence of a void based on a ratio (KL/ML) being equal to or greater than a predetermined threshold (per claim 1 as amended), as well as based on a value of a spectral center of gravity in the composite wave (per claim 7), claims 7-9 fail to comply with the written description requirement.
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 and 7-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 12 recite(s) the steps of:
“acquiring data of a reflected wave detected by the inspection device”;
“detecting a presence or absence of a void in the inspection object based on the acquired data, the acquired data including a frequency characteristic of a composite wave of a first reflected wave at a first surface of the void inside the inspection object and a second reflected wave at a second surface opposite the first surface of the void”; and
“determining that the void exists inside the inspection object when a ratio of a second signal level KL in a second frequency band of the composite wave higher than a first frequency band to a first signal level ML in the first frequency band of the composite wave (KL/ML) is equal to or greater than a predetermined threshold”.
Claim 1 recites functions of an information processing device which correlate to these steps.
Claim 13 recites similar as instructions on a computer readable medium.
Analysis – claims 12 and 13.
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
The claims recite “detecting” and “determining” presence or absence of a void based on certain acquired data. This encompasses a mental observation or evaluation.
Thus, the claims recite a mental process, which are recognized as abstract ideas.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claims recite a first additional element of an “inspection device”, with “the inspection device irradiating electromagnetic waves onto a surface of an inspection object; the inspection device detecting reflected waves from inside the inspection object; the information processing device acquiring data of a reflected wave detected by the inspection device”, as well as by an information processing device, “acquiring data” of a reflected wave detected by the inspection device. These steps are recited at a high level of generality and amount to mere data gathering by a generic device. It is necessary to acquire data via a generic inspection device in order to use the recited judicial exception to perform the detection. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more (MPEP 2106.05 (b), III). Regarding the “information processing device” specifically, as provided by the specification (e.g. [0160]) this element amounts to merely using a computer as a tool to perform an abstract idea.
The steps amount to insignificant extra-solution activity and do not integrate the exception into a practical application.
Step 2B:
A conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the re-evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
Here the steps of irradiating and receiving waves by an inspection device and acquiring data of a reflected wave is mere data gathering that is recited at a high level of generality, and as shown in numerous documents listed on the IDS (e.g. JP2003-166950A , JP2005-043197A, etc.), is well-understood, routine, and conventional practice. Therefore, this limitation remains insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
At Step 2A, Prong Two, the information processing device was found to represent no more than mere instructions to apply the judicial exception on a computer using generic computer components. The analysis under Step 2A, Prong Two is carried through to Step 2B.
Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, and therefore the claimed invention is directed to an abstract idea without significantly more.
Additionally concerning claim 13, the claim recites a non-transitory computer readable medium storing a computer program that causes a computer to perform the same steps as the method of claim 1. Therefore, the claim includes the additional element of a computer to execute the steps of the method. Accordingly, the claim invokes a generic computer merely as a tool for performing the recited abstract idea. The presence of such a computer does not integrate the exception into a practical application of the exception per step 2A or represent significantly more per step 2B.
Analysis – claim 1.
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
The claim recites functions to “detect” and “determine” presence or absence of a void based on certain acquired data. This encompasses a mental observation or evaluation.
Thus, the claims recite a mental process, which are recognized as abstract ideas.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claim references an “inspection device” to which the information processing device is connected. It is noted this “inspection device” is not a part of the information processing device which is the subject of the claim.
Regarding the “information processing device” specifically comprising a “communication unit” and “computer processor”, these additional elements amount to merely using a computer as a tool to perform an abstract idea. In particular, the “communication unit” merely represents conventional computer hardware to connect to the internet as described by the specification ([0041]).
The claim requires the information processing device is configured to “acquire data” of reflected waves detected by the inspection device. The acquiring is recited at a high level of generality and amounts to mere data gathering by a conventional computer. It is necessary to acquire data via a generic inspection device in order to use the recited judicial exception to perform the detection. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more (MPEP 2106.05 (b), III).
The steps amount to insignificant extra-solution activity and do not integrate the exception into a practical application.
Step 2B:
A conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the re-evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
Here the functions of irradiating and detecting reflected waves by an inspection device (albeit not functions of the claimed invention) and acquiring data of a reflected wave represent mere data gathering that is recited at a high level of generality, and as shown in numerous documents listed on the IDS (e.g. JP2003-166950A , JP2005-043197A, etc.), is well-understood, routine, and conventional practice. Therefore, this limitation remains insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
At Step 2A, Prong Two, the information processing device comprising a communication unit and computer processor was found to represent no more than mere instructions to apply the judicial exception on a computer using generic computer components. The analysis under Step 2A, Prong Two is carried through to Step 2B.
Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, and therefore the claimed invention is directed to an abstract idea without significantly more.
Dependent claims 2-3 and 7-9 further detail the presence detection step and do not add any additional elements.
Dependent claim 10 indicates the object to be inspected and claim 11 details the presence detection step in accordance with the indicated object. The claims do not add any additional elements.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action and to include all of the limitations of the base claim.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew M Barker whose telephone number is (571)272-3103. The examiner can normally be reached M-Th, 8:00 AM-4:30 PM; Fri 8 AM-12 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at 571-273-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW M BARKER/Primary Examiner, Art Unit 3646
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