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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 13-24, drawn to a steel pipe out-of-roundness prediction method.
Group 2, claim(s) 25-26, drawn to a steel pipe out-of-roundness control method.
Group 3, claim(s) 27-30, drawn to a steel pipe out-of-roundness prediction model generation method.
Group 4, claim(s) 31-32, drawn to a steel pipe out-of-roundness prediction device.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups 1-4 lack unity of invention because even though the inventions of these groups require the technical feature of claim 13, this technical feature is not a special technical feature as it does not make a contribution over the prior art Abe (JP 2012137813) in view of Eiji (JP 2002346629). See 103 rejection below.
During a telephone conversation with Travis Howell on 12/30/2026 a provisional election was made without traverse to prosecute the invention of Group 1, claims 13-24. Affirmation of this election must be made by applicant in replying to this Office action. Claims 25-32 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 13-24 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claim 13-24 are directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 13-24 fall within one of the statutory categories? Yes. The claim is directed toward a process which falls within one of the statutory categories.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claim is directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The method in claim 13-24 is a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. It merely consists of “a step of predicting the out-of-roundness of the steel pipe after the pipe expanding step …CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person could predict the out-of-roundness of the steel pipe using the operational parameters of the end bending step and the press bending step. The mere nominal recitation that the transmission is being executed by an out-of-roundness prediction model does not take the limitation out of the mental process grouping. Notably, the claim does not positively recite any limitations regarding actual determination of the attitude of the steel pipe forming or controlling the steel pipe forming device in a specific manner. Thus, the claim recites a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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 more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claims 13-24 do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application.
Also, as noted above, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is indicative that the judicial exception has not been integrated into a practical application. In the instant case, the step of predicting is performed by a “prediction model”, i.e. a computer. Thus, it is clear that the abstract idea is merely implemented on a computer, which is indicative of the abstract idea having not been integrated into a practical application.
Examiner notes that while the claims are involving a prediction model, the prediction model as claimed is operating as a general computer or a generic or general purpose computing environment. Moreover, the use of prediction model per se is merely data processing. Also, the machine learning technology is well known and is recited at a high level of generality and is merely invoked as a general link to the technology, therefore the claim does not recite additional elements that amount to significantly more than the judicial exception. The claims as a whole merely describe how to generally “apply” the otherwise mental judgments in a generic or general purpose computing environment. All purported inventive aspects reside in how the data is interpreted and the results desired, not in how the process physically enforces such data interpretation or how the processing technologically achieves those results.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claims 13-24 does/do not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “prediction model trained by machine learning” amount to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
CONCLUSION
Thus, since claim 13-24 are: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 13-24 are directed towards non-statutory subject matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP 2012137813) in view of Eiji (JP 2002346629).
Regarding claim 13, Abe discloses a prediction method for predicting quality by using a prediction model learned by machine learning (learning) which includes, as input data, one or more operation parameters (plurality of operation data) in a manufacturing process and uses as quality of a manufactured product as output data (see paragraph [0010], [0023-0025], [0085]).
Abe fails to disclose a steel pipe out-of-roundness prediction method and that the input data is one or more of operational parameters from ending bending step and press bending step and that the output data is steel pipe out-of-roundness information.
Eiji teaches a method of producing a steel pipe (steel pipe) with end bending step (C forming) and press bending step (U forming) and pipe expanding step (O forming) wherein roundness of the steel pipe is dependent upon the operational parameter of the end bending step and the press bending step (“The peaking amount can be controlled by controlling the curvature at the time of the C press, the width of the U press, and the upset rate at the time of the O press. The reason for limiting the base metal strength range to 900 N / mm .sup.2 or more is that the 800 N / mm .sup.2 grade steel pipe has a HAZ” – “peaking” has to do with roundness).
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the manufacturing prediction method of Abe with the manufacturing method of a steel pipe of Eiji to predict the output data which is the out-of-roundness information of the steel pipe with the input data i.e. operational parameter from the end bending step and the press bending step in order to apply the manufacturing prediction method in the specific manufacturing environment such as manufacturing a steel pipe as taught by Eiji to improve the quality of the final product.
Regarding claim 14, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 13, wherein the out-of-roundness prediction model includes, as the input data, one parameter or two or more parameters selected from attribute information (“yield strength of the sheet material”) of the steel sheet.
Regarding claim 15, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 13, wherein the out-of-roundness prediction model includes, as the input data, a pipe expansion rate (“upset rate at the time of the O press”) selected from the operational parameters of the pipe expanding step.
Regarding claim 16, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 14, wherein the out-of-roundness prediction model includes, as the input data, a pipe expansion rate (“upset rate at the time of the O press”) selected from the operational parameters of the pipe expanding step.
Regarding claim 17, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 13, wherein the operational parameters of the end bending step include one parameter or two or more parameters of an end bending processing width (“The peaking amount can be controlled by controlling the curvature at the time of the C press”), a C-press force, and a clamp gripping force.
Regarding claim 18, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 14, wherein the operational parameters of the end bending step include one parameter or two or more parameters of an end bending processing width (“The peaking amount can be controlled by controlling the curvature at the time of the C press”), a C-press force, and a clamp gripping force.
Regarding claim 19, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 15, wherein the operational parameters of the end bending step include one parameter or two or more parameters of an end bending processing width (“The peaking amount can be controlled by controlling the curvature at the time of the C press”), a C-press force, and a clamp gripping force.
Regarding claim 20, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 16, wherein the operational parameters of the end bending step include one parameter or two or more parameters of an end bending processing width (“The peaking amount can be controlled by controlling the curvature at the time of the C press”), a C-press force, and a clamp gripping force.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe in view of Eiji as applied to claim 13-20 above, and further in view of Masayuki (JP 2012170977).
Regarding claim 21, modified Abe teaches the steel pipe out-of-roundness prediction method according to claim 13.
Modified Abe is silent to wherein the operational parameters of the press bending step include: press position information and a press depression amount regarding an operation in which a punch used in the press bending step presses the steel sheet; and the number of times of pressing performed through the press bending step.
Masayuki teaches a similar steel pipe forming method wherein the operational parameters of a press bending step (forming U shape- Fig. 3: step c-d) includes: press position information (“The intervals between the positions pressed by the upper die with the three-point bending press 4 (hereinafter referred to as the feed pitch P (mm / time)) are set at equal intervals.”) and a press depression amount (“press pressure”) regarding an operation in which a punch (punch) used in the press bending step presses the steel sheet; and the number of times of pressing (“ the roundness of the steel pipe can be improved by increasing the number of three-point bending presses”) performed through the press bending step.
Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to modify the steel pipe out-of-roundness prediction method of modified Abe to incorporate additional operational parameters such as above taught by Masayuki in order to better predict the out-of-roundness of the steel pipe since incorporating all the pressing operational parameter is only going to make the roundness prediction better.
Regarding claim 22, see claim 21 rejection.
Regarding claim 23, see claim 21 rejection.
Regarding claim 24, see claim 21 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 pm.
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/BOBBY YEONJIN KIM/Examiner, Art Unit 3725