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 .
Claim Status
Claims 1-12 are pending:
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 01/12/2024, 05/01/2025, 02/09/2026, 04/21/2026, 06/30/2026 is/are being considered by the examiner.
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:
“acquisition unit” in claim 1.
Corresponding structure
None
Para43 comes the closest to providing support, however the first/second signal analysis unit 501/502 also do not provide the corresponding structure that corresponds to the recited function(s) and therefore cannot be a corresponding structure themselves for the acquisition unit.
Or equivalents
“first estimation calculation unit” in claim 1.
Corresponding structure
None
Or equivalents
“degree-of-denseness calculation unit” in claim 4.
Corresponding structure
None
Or equivalents
“storage control unit” in claim 4.
Corresponding structure
None
Or equivalents
“storage unit” in claim 4.
Corresponding structure
RAM / ROM, as informed by Para39
Or equivalents
“second estimation calculation unit” in claim 4.
Corresponding structure
None
Or equivalents
“average calculation unit” in claim 6.
Corresponding structure
None
Or equivalents
“operation unit” in claim 7.
Corresponding structure
None
Or equivalents
“display control unit” in claim 8.
Corresponding structure
None
Or equivalents
“communication control unit” in claim 9.
Corresponding structure
None
Or equivalents
“warning generation unit” in claim 10.
Corresponding structure
None
Or equivalents
“control device” in claim 11.
Corresponding structure
Computer or computerized numerical controller (CNC), as informed by Para25
Or equivalents
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 Objections
Claims are objected to because of the following informalities:
Claim 6
L2, replace the comma between “calculation unit, wherein” with a semicolon to improve clarity
L9, replace the comma with a semicolon to improve clarity
Claim 12
L10, amend “for estimating [[a]]the wire remaining amount” to improve clarity by more clearly using the proper antecedent basis indication
Appropriate correction is required.
Claim Rejections - 35 USC § 101
Claim 1-12 rejected under 35 U.S.C. 101 because in Claim 1-12 the claimed invention directed to an abstract idea without significantly more.
Independent Claim 1 recites:
“A remaining amount estimation device for a wire electric discharge machine,
wherein the wire electric discharge machine includes:
a wire bobbin;
a feed roller configured to feed a wire electrode that is wound around the wire bobbin;
a first rotational position detection sensor configured to detect a first rotational position of the wire bobbin; and
a second rotational position detection sensor configured to detect a second rotational position of the feed roller,
the remaining amount estimation device being configured to estimate a wire remaining amount of the wire electrode that is wound around the wire bobbin of the wire electric discharge machine,
the remaining amount estimation device comprising:
an acquisition unit configured to acquire the first rotational position and the second rotational position; and
a first estimation calculation unit configured to estimate the wire remaining amount at an ending time of a predetermined period, based on
a first ratio
that is a ratio of an amount of rotation of the wire bobbin and an amount of rotation of the feed roller at a starting time of the predetermined period,
a second ratio
that is a ratio of an amount of rotation of the wire bobbin and an amount of rotation of the feed roller at the ending time of the predetermined period, and
a total amount of rotation that the feed roller has rotated during the predetermined period.”
Independent Claim 12 recites:
“A remaining amount estimation method for a wire electric discharge machine,
wherein the wire electric discharge machine includes:
a wire bobbin;
a feed roller configured to feed a wire electrode that is wound around the wire bobbin;
a first rotational position detection sensor configured to detect a first rotational position of the wire bobbin; and
a second rotational position detection sensor configured to detect a second rotational position of the feed roller,
the remaining amount estimation method for estimating a wire remaining amount of the wire electrode that is wound around the wire bobbin of the wire electric discharge machine, comprising:
an acquisition step of acquiring the first rotational position and the second rotational position; and
an estimation calculation step of estimating the wire remaining amount at an ending time of a predetermined period, based on
a first ratio
that is a ratio of an amount of rotation of the wire bobbin and an amount of rotation of the feed roller at a starting time of the predetermined period,
a second ratio
that is a ratio of an amount of rotation of the wire bobbin and an amount of rotation of the feed roller at the ending time of the predetermined period, and
a total amount of rotation that the feed roller has rotated during the predetermined period.”
The underlined portions of the cited claim are all directed towards abstract ideas that fall within the bucket of a mental process. That is each of the underlined portions can be performed in the human mind as the abstract idea is effectively an exam question for one of ordinary skill in the art.
This judicial exception is not integrated into a practical application because beyond the abstract idea, the only items are either basic computing parts or are applying the abstract idea within a technological area. Additionally, the claim limitations of Claims 1/12 as recited below are notoriously well known in the art as evidenced by Watanabe (JP 2736544) published 02 April 1998.
Claim 1/12
Watanabe discloses:
“…
wherein the wire electric discharge machine (arrangement of Fig1; SpecQuote1) includes:
a wire bobbin (bobbin 1);
a feed roller (roller 3) configured to feed a wire electrode (wire electrode 2) that is wound around the wire bobbin (Fig1, wire electrode 2 shown wound around bobbin 1);
a first rotational position detection sensor (rotation sensor 4) configured to detect a first rotational position of the wire bobbin (sensor 4 connected to bobbin 1; SpecQuote2); and
a second rotational position detection sensor (rotation sensor 5) configured to detect a second rotational position of the feed roller (sensor 5 connected to roller 3; SpecQuote2),
…”
SpecQuote1: “The present invention relates to a wire electric discharge machine”
SpecQuote2: “A source bobbin rotation sensor for detecting the speed, a reference roller for detecting the traveling speed of the wire electrode provided in the wire traveling system, a reference roller rotation sensor for detecting the number of revolutions of the reference roller,”
All dependent claims have been analyzed and present only additional abstract ideas and thus do not cure the deficiencies of the cited claim.
The office notes that Claim 11 comes the closest to integrating the judicial exception in to the practical application of the wire electric discharge machine, due to the application of a control device “to control the wire electric discharge machine”. However, the control provided by the control device is not required to be based upon the result of the judicial exception.
A potential amendment to explicitly require that the control of the practical application to be directed/based on the result(s) of the judicial exception should overcome the instant 35 USC 101 rejection, pending consideration of the particular potential amendment language and confirmation that such a potential amendment has sufficient written description support.
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.
Claim 1-11 rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
The recitations of:
Claim 1 “acquisition unit”, “first estimation calculation unit”; Claim 4 “degree-of-denseness calculation unit”, “storage control unit”, “second estimation calculation unit”; Claim 6 “average calculation unit”; Claim 7 “operation unit”; Claim 8 “display control unit”; Claim 9 “communication control unit”; Claim 10 “warning generation unit”;
Each fails to provide the corresponding structure to perform the claimed function.
The office notes that Para43 comes the closest to providing support for “acquisition unit”, however the first/second signal analysis unit 501/502 also do not provide the corresponding structure that corresponds to the recited function(s) and therefore cannot be a corresponding structure themselves for the acquisition unit.
Claims dependent on an indicated rejected claim above is rejected itself due to dependency, unless explicitly otherwise indicated.
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.
The claim limitations of Claims 1-11 indicated below invokes 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims 1-11 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The recitations of:
Claim 1 “acquisition unit”, “first estimation calculation unit”; Claim 4 “degree-of-denseness calculation unit”, “storage control unit”, “second estimation calculation unit”; Claim 6 “average calculation unit”; Claim 7 “operation unit”; Claim 8 “display control unit”; Claim 9 “communication control unit”; Claim 10 “warning generation unit”;
Each fails to provide the corresponding structure to perform the claimed function.
The office notes that Para43 comes the closest to providing support for “acquisition unit”, however the first/second signal analysis unit 501/502 also do not provide the corresponding structure that corresponds to the recited function(s) and therefore cannot be a corresponding structure themselves for the acquisition unit.
Claims dependent on an indicated rejected claim above is rejected itself due to dependency, unless explicitly otherwise indicated.
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;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.
Claim 4, 6-7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4
L3-4 “a degree of denseness of the wire electrode” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown exactly what structural feature the term is defining, as the term is not a standard term of art. Claim 4 fails to provide a full definition for the term. The office further notes that the specification fails to provide an explicit definition for the custom term of art, beyond that recited in Claim 5.
It would be improper to import the further limitations of Claim 5 into Claim 4 in order to define the instant term, as applicant has implicitly asserted that claim 5 has a different patentable scope than that of claim 4 due to the nature of providing the limitations/recitations in different claims, therefore Equation 2 of Claim 5 cannot be the definition for the instant term in Claim 4.
Claims 6-7 are rejected based on dependency on Claim 4.
Claim 5 is not rejected based on dependency on Claim 4, as Claim 5 defines the term of issue.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 4,998,003 to Kawanabe: Fig1, wire arrangement where encoders 23/24 are based on rotational speed, as opposed to rotational positions at pre-determined times
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN HUNTER JR whose telephone number is (571)272-5093. The examiner can normally be reached M-F, 9-18.
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/JOHN S HUNTER, JR/Examiner, Art Unit 3761
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