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 Amendment
Applicant' s amendment and response filed 7/1/2026 has been entered and made record. This application contains 10 pending claims.
Claims 1, 3-5, and 7-8 have been amended.
Claim 2 has been cancelled.
Claims 9-11 have been added.
Response to Arguments
Applicant's arguments filed 7/1/2026 regarding claim rejections under 35 U.S.C. 102 in claims 1, and 6-8 have been fully considered and are persuasive. Independent claims 1, 7, and 8 have been amended and incorporated aspects of allowable claim 2 respectively, and thus, overcome the 102 rejections. Therefore, the 102 claims rejections in claims 1, and 6-8 have been withdrawn.
Applicant’s arguments filed 7/1/2026 regarding claims rejections under 35 U.S.C. 101 in claim 1-8 have been fully considered but they are not persuasive.
The applicant argues on pages 9-12 of the remark filed on 7/1/2026 that “… Claims 1-8 are rejected under 35 USC 101 as directed to an abstract idea without significantly more. Applicant respectfully traverses the rejections. … The USPTO's Subject Matter Eligibility guidance supports this traversal. For example, see the pending USPTO Example 38 claim 1 with features of "initializing a model...generating a normally distributed first random value...simulating a first digital representation" which also clearly involve mathematical concepts yet are noted by the USPTO's guidance as Step 2A Prong 1 … Similarly, see Example 39 claim 1 with features of "applying one of more transformations to each digital facial image including mirroring, rotating, smoothing, or contrast reduction to create a modified set of digital facial images" along with other claim features which also similarly and clearly involve "mathematical concepts" and yet, like Example 38, has that same note that Step 2A Prong 1 … and similarly,11 continuing from the example of "deriving" from this current rejection, the claims would not improperly "tie up" the alleged mathematical concept of "deriving" since each of the independent claims is narrower and more particular than such concept, like also are the features in those USPTO examples 38 and 39 above in addition to not actually "reciting" the abstract idea of mathematical concepts.”
The Examiner respectfully disagrees applicant’s argument. The steps of “deriving, based on the impedance and the phase angle, an oil film thickness and a metal contact ratio in at least one of between the first member and the plurality of rollers and between the second member and the plurality of rollers”, and “the oil film thickness and the metal contact ratio are derived using a calculation equation corresponding to an electrical circuit configured by a line contact occurring between a roller and at least one of the first and second members in the bearing device” are mathematical concepts, therefore, they are considered to be an abstract idea. Thus, the claims are directed to an abstract idea.
Moreover, the present claims are dissimilar to Examples 38 and 39. In Example 38, some of the limitations may be based on mathematical concepts but the mathematical concepts are not recited in the claims. However, in the present claim, a mathematical concept recited as stated above, and as shown in the rejections.
Example 39 describes training a Neural Network, however, claims 1, 7 and 8 do not recite training a neural network. The claims in Example 39 do not recite a judicial exception, however, the instant claim recite a mathematical concepts as described above, and as shown in the rejections.
The applicant argues on pages 12-14 of the remark filed that “… II) And regardless of that above point, the claims are integrated into a practical application … And in light of those background technologies, originally-filed paragraphs [0004]-[0010], [0049], [0081]-[0105], and related descriptions, indicate that aspects of the present application represent improved accuracy over those background technologies and when involving rollers, like described in the pending independent claims. … ”.
The Examiner respectfully disagrees applicant’s argument. Practical application can be demonstrated by additional elements that are sufficient to integrate the judicial exception into a practical application. The additional element “measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage” is considered necessary data gathering and thus, not sufficient to integrate the abstract idea into a practical application. As recited in MPEP section 2106.05(g), necessary data gathering (i.e., receiving the measurements data) is considered extra solution activity in light of Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
The additional elements “applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members” and “the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range” are not sufficient to integrate the abstract idea into a practical application. The alleged improvement of detecting both of oil film state and contact ration between parts states with higher accuracy in rolling bearings having line-contact geometry relates to improvement to the abstract idea itself. Therefore, the current claims do not recite additional elements that are indicative of integration of an abstract idea into a practical application.
The applicant argues on page 12 of the remark filed that “… II) And regardless of that above point, the claims are integrated into a practical application or at least represent significantly more than the abstract idea.”
The Examiner respectfully disagrees applicant’s argument. Significantly more can be demonstrated by additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application. However, the claim does not recite them. The additional elements “applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members”; “measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage”; and “the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range” are routine in monitoring the lubrication state of a rolling bearing by measuring the circuit’s impedance and phase angle, and are well-understood and conventional. Therefore, the claim 1 does not contain additional elements that are not well-understood and conventional that integrate the abstract idea into a practical application.
Claims 7 and 8 recite subject matter that are similar to that of claim 1, and therefore, the claims are also patent ineligible.
Dependent claims 2-6 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application. Therefore, claims 2-6 are also patent ineligible.
Hence, the Examiner submits that the rejections of Claims 1-8 are proper.
Claim Objections
Claim 10 is objected to because of the following informality:
“The detection method according to claim 2” in line 1 should read as “The detection method according to claim 1”
Appropriate correction is required.
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:
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 limitations are “an acquisition unit configured to”; and “a derivation unit configured to” in claim 7. The claim describes the various modules in functional terms of what they do, rather than how they do it. Under 35 USC 112(f), the Specification must identify a specific and readily-identifiable algorithm in the Specification associated with the claimed function.
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, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. For example, [0007] discloses “ … a distribution pattern generation unit that generates a distribution pattern of a combination of a charge quantity and an occurrence phase angle of each of the partial discharges occurring in one or a plurality of cycle periods of an applied voltage of the power transmission cable; a differential data generation unit that generates differential data including a difference between the numbers of occurrences of the partial discharges for each combination of the charge quantity and the occurrence phase angle in two or more latest distribution patterns generated by the distribution pattern generation unit, respectively; and a determination unit that determines the degree of progress of the partial discharge based on data of the latest distribution patterns and the differential data”.
In order to exam the merit, Examiner interprets the above mentioned limitations performed by a generic computer.
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 therefor, subject to the conditions and requirements of this title.
Claims 1, and 3-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As to claim 1, the claim recites “A detection method for detecting a state of a bearing device including a plurality of rollers and first and second members configuring rolling surfaces of the plurality of rollers, the method comprising:
applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members;
measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage; and
deriving, based on the impedance and the phase angle, an oil film thickness and a metal contact ratio in at least one of between the first member and the plurality of rollers and between the second member and the plurality of rollers, wherein
the oil film thickness and the metal contact ratio are derived using a calculation equation corresponding to an electrical circuit configured by a line contact occurring between a roller and at least one of the first and second members in the bearing device, and
the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range.”
Under the Step 1 of the eligibility analysis, we determine whether the claim is directed to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category (process for claim 1).
Under the Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the bold type portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite an abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the grouping of subject matter when recited as such in a claim that covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations).
In claim 1, the steps identified in bold type are mathematical concepts, therefore, they are considered to be abstract idea.
Next, under the Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application.
In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claim comprises the following additional elements:
applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members; measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage, and the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range.
The additional elements “applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members” and “the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range” are not sufficient to integrate the abstract idea into a practical application because they only add insignificant extra-solution activities to the judicial exception. The additional element “measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage” represents necessary data gathering and does not integrate the limitation into a practical application.
In conclusion, the above additional elements, considered individually and in combination with the other claims elements do not reflect an improvement to other technology or technical field, do not reflect improvements to the functioning of the computer itself, do not recite a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and, therefore, do not integrate the judicial exception into a practical application. Therefore, the claim is directed to a judicial exception and require further analysis under the Step 2B.
The above claim, does not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are generically recited and are well-understood/conventional in a relevant art as evidenced by the prior art of record (Step 2B analysis).
For example, measuring an impedance and a phase angle of the electrical circuit when applying the AC voltage is considered necessary data gathering. As recited in MPEP section 2106.05(g), necessary data gathering (i.e., obtaining measurement data) is considered extra solution activity in light of Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
For example, applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members is disclosed by “Maeda US 20190128866”, Abstract, FIG. 1A and [0007], [0022], [0024], [0048], [00]; and “Maeda JP 2019211317A ”, [0007], [0019], Claims 1.
The claim, therefore, is not patent eligible.
Independent claims 7 and 8 recite subject matter that are similar or analogous to that of claim 1, and therefore, the claims are also patent ineligible.
With regards to the dependent claims, claims 3-6 and 9-11 provide additional features/steps which are considered part of an expanded abstract idea of the independent claims, and do not integrate the abstract ideas into a practical application.
The dependent claims are, therefore, also not patent eligible.
Examiner' s Note
Regarding Claims 1, and 3-11, the most pertinent prior arts are "Maeda US 20190128866", hereinafter Maeda; "Maeda JP 2019211317A", hereinafter Maeda 2; "Discenzo US 7581434B1; "Maki US 6151963A"; "Smith US 5001435A"; “Mol WO 2005033535A1”; “Momono JP 2003214810A”; and “Maruyama JP 2020159754A”. However, “Maruyama JP 2020159754A“ has the same assignee with the present application, and the published dates is later than the present application priority date of 05/28/2021.
As to claims 1, 7, and 8, Maeda teaches applying an AC voltage to an electrical circuit configured by the plurality of rollers and the first and second members (FIG. 1A and [0007] disclose applying an alternating voltage to an electric circuit configured by the outer member, the rolling element and the inner member (i.e., FIG. 1A shows the plurality of rollers and the first and second members - emphasis added by Examiner));
measuring, for a bearing device (FIG. 1A, #10), an impedance and a phase angle of the electrical circuit, by an acquisition unit ([0048] discloses LCR meter), when applying the AC voltage ([0007] discloses “measuring an impedance and a phase of the electric circuit when the alternating voltage is applied to the electric circuit”); and
deriving, based on the impedance and the phase angle, an oil film thickness and a metal contact ratio, by a derivation unit ([0048] discloses computer), in at least one of between the first member and the plurality of rollers and between the second member and the plurality of rollers ([0007] discloses “calculating a lubrication film thickness and a metallic contact ratio between the outer member and the rolling element and/or between the inner member and the rolling element, based on a measured impedance and a measured phase.”),
wherein the oil film thickness and the metal contact ratio are derived using a calculation equation corresponding to an electrical circuit configured by a line contact occurring between a roller and at least one of the first and second members in the bearing device ([0019] and [0024] disclose the metallic contact part 7 at which metals are contacted each other has a resistor R2, and as a result, as shown in FIG. 1B, an electric circuit E1 is formed by the outer ring 1 or inner ring 3 and the rolling element 5. When the electric circuit E4 of FIG. 3 is used, the lubrication film thickness h and the metallic contact ratio a are derived by following equations (1) and (2).
Equation (1):
PNG
media_image1.png
148
625
media_image1.png
Greyscale
Equation (2):
PNG
media_image2.png
133
621
media_image2.png
Greyscale
).”
However, the prior arts of record, alone or in combination, do not fairly teach or suggest “the electrical circuit configured by the line contact is configured by a resistor formed by the line contact, a first condenser configured by a lubricant positioned within a predetermined range from the line contact, and a second condenser configured by a lubricant positioned outside the predetermined range” including all limitations as claimed.
Dependent claims 3-6, and 9-11 are also distinguish over the prior art for at least the same reason as claims 1, 7, and 8.
Examiner notes, however, that claims 1, and 3-11 are rejected under 35 U.S.C. 101, and therefore, not patent eligible.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAL CE MANG whose telephone number is (571)272-0370. The examiner can normally be reached Monday to Friday- 8:30-12:00, 1:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine T Rastovski can be reached at (571) 270-0349. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAL CE MANG/Primary Examiner, Art Unit 2857
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