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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner’s Note
This Office Action is in response to application and preliminary amendment filed on 12/5/2023, where claims 1-6 are currently pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the co-pending application no. 18/578699 (hereinafter co-pending application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims 1 of the instant application and the co-pending application are disclosing screen creation device for supporting creation of user interface screen of a numerical controller with part library and machine information acquirer. Claim 1 of the instant application includes the additional limitation of the available part determinator and the editor. The US Patent No. 5,465,215 (Strickland) teaches such limitations. The co-pending application and Strickland are analogous art to the claimed invention because they are concerning with interface for creating user interface of a numerical controller (i.e., same field of endeavor).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention having the co-pending application and Strickland before them to modify the screen creation device of the co-pending application to incorporate the function of available part determinator and editor as taught by Strickland. One of ordinary skill in the art would have combined the elements as claimed by known methods as disclosed by Strickland (9:9-42, figs. 3 and 4), because the function of available part determinator and editor does not depend on the screen creation device. That is the function of available part determinator and editor performs the same function independent on which interface it is incorporated onto, and therefore, the result of the combination would have been predictable to one of ordinary skill in the art. The motivation to combine would have been to improve the usability of the interface by allowing user edit relevant data of the associated processes. Therefore, the claims are obvious variation of each other.
Claim Interpretation - 35 USC § 112(f)
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: “a part library configured to store”, “a machine information acquirer configured to acquire”, “an available part determinator configured to determine”, “an editor configured to receive”, and “an operation determinator configured to determine” in claims 1 and 5.
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 1-5 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 pre-AIA the applicant regards as the invention.
Claims 1-5 are rejected to because of the following: claims 1 and 5 recite the limitations “a part library configured to store”, “a machine information acquirer configured to acquire”, “an available part determinator configured to determine”, “an editor configured to receive”, and “an operation determinator configured to determine”, which 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 the claimed function. The specification is silent with respect to the corresponding structures to perform said functions.
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; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, 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 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.
All dependent claims are rejected to as having the same deficiencies as the claim they depend from.
Claim 3 is rejected to because of the following: claim 3 recites “the available part determinator determines the available user interface screen from a type of the machine tool.” The element “available user interface screen” is recited with the article “the”, which indicates it is referring to a previously recited element. However, there is no such element recited in claim 1, which the instant claim depends from. Therefore, it is unclear which element it is referring to. As such, renders the claim indefinite.
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 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Independent claim 6 recites a “storage medium storing a computer-readable instruction”. The specification does not define the “storage medium” to exclude transitory signal. A person of ordinary skill in the art would understand a signal as both “tangible” and as capable of “storing or transmitting information”. Compare Ex parte Cromer, App. No. 2009-012992 (BPAI, Jan. 12 2012) and Ex parte Podgurny, App. No. 2010-011806 (BPAI, Mar. 12 2012). Therefore, under broadest reasonable interpretation of said storage medium encompasses a transitory signal per se upon which information is stored and/or transmitted, which is non-statutory subject matter. See id.; In re Nuijten, 500 F.3d 1346, 1356-57, 84 U.S.P.Q.2d 1495, 1502 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) cited in MPEP § 2106; Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Applicant can amend the limitation to “A non-transitory storage medium storing a computer-readable instruction” to overcome the rejection.
Claim Rejections - 35 USC § 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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Strickland et al., (US 5465215 A) (hereinafter Strickland).
Referring to claim 1, Strickland teaches a screen creation device for supporting creation of a user interface screen of a numerical controller (2:10-35, CNC machine control. 3:8-28, figs. 1, 3, 4, generate the display data and application programs for CNC machine control that is stored on memory), the screen creation device comprising:
a part library configured to store parts arranged on the user interface screen and a composite part obtained by combining a plurality of the parts (6:56-7:8, figs. 3 and 4, “A display of a columnar list 132 has the appearance of five push buttons marked with icons of user selected cycles and functions, referred to as processes. The processes appear in the order of selection with the first selected at the top of the list. At the top of the column a push button 134 marked with an arrow is displayed, this display being used to effect scrolling of the displayed list toward the beginning of the list. At the bottom of the column is displayed a similar arrow marked push button 136 to effect scrolling of the displayed list toward the end of the list. A matrix of icon marked push button displays 138 enable selection of processes.” 9:9-42, fig. 4, “Once data have been entered for a selected process, the user may select addition of the process to the process list, insertion of the process in the process list or cancellation of the process using the push button displays 166, 168 and 170 respectively. Push button display 172 is used in connection with process editing. Having selected a process from the process list for editing, push button display 172 permits the user to accept data currently displayed, replacing data previously associated with the selected process.” According to para. [0031]-[0033] of Applicant’s specification, the part is described as button, label, etc., and composite component as program editing part.);
a machine information acquirer configured to acquire machine information of a machine tool serving as a control target of the numerical controller (6:32-53, “lead-through graphic displays facilitate operator selections and numeric data entry…data pertaining to the material, shape and dimensions of the workpiece to be processed is required and tool data must be associated with each machining operation…processing of data input to generate a source program, and post processing of the source program to generate a user program conforming to the selected programming convention as adapted for a particular machine.” 7:44-67, “MDI control routines 44 verify that all data required to define a process has been entered. In the event further data entry is required to complete definition of the selected process, MDI control routines 44 prevent addition of the selected process to the process list. The user may either enter data required or cancel the selected process.”);
an available part determinator configured to determine an available composite part on the user interface screen based on the machine information of the machine tool (9:9-42, fig. 4, “the lead-through graphic display, icon marked push button displays 164 are generated to permit user selection of functions related to the selected process. For example, shown in FIG. 4 in association with the selected drilling operation are: a spindle control icon, enabling entry of spindle speed data and selection of direction of rotation; a coolant control icon, enabling Selection of coolant functions such as coolant "ON" or "OFF" and mist or flood coolant; a tool change icon enabling specification of a change of tool to be effected upon completion of the drill operation; a feedrate control icon enabling specification of a feedrate to be effective during the drilling operation; a dimension control icon enabling specification of the unit of measure to be effective during execution of the drilling operation; a position command mode control icon enabling selection of definition of coordinate data as absolute or incremental; and a plane selection control icon enabling specification of the plane into which the drilling operation is to be effected…Push button display 172 is used in connection with process editing. Having selected a process from the process list for editing, push button display 172 permits the user to accept data currently displayed, replacing data previously associated with the selected process.”); and
an editor configured to receive layout of the available composite part on the user interface screen (Figures 3 and 4 shows the layout of the buttons and elements enabling user to editing of the process(es).)
Referring to claim 2, Strickland further teaches the screen creation device according to claim 1, wherein the machine information acquirer acquires the machine information from at least one of input from a user or information set in the numerical controller (6:32-53, “lead-through graphic displays facilitate operator selections and numeric data entry…data pertaining to the material, shape and dimensions of the workpiece to be processed is required and tool data must be associated with each machining operation…processing of data input to generate a source program, and post processing of the source program to generate a user program conforming to the selected programming convention as adapted for a particular machine.” 7:44-67, “MDI control routines 44 verify that all data required to define a process has been entered. In the event further data entry is required to complete definition of the selected process, MDI control routines 44 prevent addition of the selected process to the process list. The user may either enter data required or cancel the selected process.”)
Referring to claim 3, Strickland further teaches the screen creation device according to claim 1, wherein the available part determinator determines the available user interface screen from a type of the machine tool (7:44-67, “Upon addition of a selected process to the process list or cancellation of a selected process, main MDI display 129 is again presented enabling selection of other processes or selection of another operating mode of CNC 10.” Examiner recognized the type of machine tool as CNC.)
Referring to claim 4, Strickland further teaches the screen creation device according to claim 1, wherein the available part determinator determines the available composite part on the user interface screen from a machine configuration of the machine tool (9:9-42, fig. 4, “Push button display 172 is used in connection with process editing. Having selected a process from the process list for editing, push button display 172 permits the user to accept data currently displayed, replacing data previously associated with the selected process.” Examiner recognizes the machine configuration as the current displayed data for the selected process of the CNC.)
Referring to claim 5, Strickland further teaches the screen creation device according to claim 1, comprising an operation determinator configured to determine an available operation in the available composite part on the user interface screen based on machine information of the machine tool,
wherein the editor receives setting of the available operation in the composite part (9:9-42, fig. 4, “As with the push button display of main MDI display 129, selections of any of the associated functions is effected by contacting touch screen 15 within the push button display area…and will generate the data entry display of the selected function. Once data have been entered for a selected process, the user may select addition of the process to the process list, insertion of the process in the process list or cancellation of the process using the push button displays 166, 168 and 170 respectively. Push button display 172 is used in connection with process editing. Having selected a process from the process list for editing, push button display 172 permits the user to accept data currently displayed, replacing data previously associated with the selected process.”)
Regarding claim 6, the instant claim recites the storage medium having instruction stored thereon, when executed by a processor, perform the method steps performed by the screen creation device of claim 1; therefore, the same rationale of rejection is applicable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
US 20200272126 (Oonishi) – discloses screen creation device and screen creation system.
US 20200073542 (Sato) – discloses numerical controller capable of creating a custom screen.
US 20170109005 (Adachi) – discloses screen creation apparatus with screen creation support function.
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/MONG-SHUNE CHUNG/
Primary Examiner, Art Unit 2118