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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1149 filed 02/23/2024. This IDS has been considered.
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:
(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.
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 1-7 and 9-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Legal Framework
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, the Office is guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, Examiners first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, Examiners turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101 and further updated this guidance in October 2019. This guidance is now found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly Sections 2103 through 2106.07(c). See MPEP §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020).
Under the 2019 Revised Guidance and the October 2019 Update, Examiners first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)) (“Step 2A, Prong Two”). 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do Examiners then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Analysis
Examiners consider the claim as a whole giving it the broadest reasonable construction as one of ordinary skill in the art would have interpreted it in light of the Specification at the time of filing.
The Examiner finds, under Step 1 of the 2019 Revised Guidance, that claims 1 and 2 are directed to a method and claims 3-12 are directed to an apparatus and, therefore, all claims recite a statutory category of invention.
Revised Step 2A, Prong One –recites a judicial exception
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Memorandum instructs Examiners first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. Examiners primarily focus here on the first and third groupings - mathematical concepts and mental processes.
As it pertains to independent claim 1, the steps of determining the speed of rotation gradient of the rotor, comparing the speed of rotation of the rotor with a predefined threshold, and detecting the change in the direction of rotation of the rotor from the result of the comparison of the speed of rotation of the rotor with the predefined speed threshold and the determined speed of rotation gradient of the rotor are all limitations that under broadest reasonable interpretation fall under the mental process categories as they can be performed in the human mind or with the aid of a pencil and paper.
As it pertains to independent claim 3, similarly the limitations compare the speed of rotation of the rotor with a predefined threshold, determine the speed of rotation gradient of the rotor, and detect the change in the direction of rotation of the rotor from the result of the comparison of the speed of rotation of the rotor with the predefined speed threshold and the determined speed of rotation gradient of the rotor are all limitations that under broadest reasonable interpretation fall under the mental process categories as they can be performed in the human mind or with the aid of a pencil and paper.
Therefore independent claims 1 and 3 recite abstract ideas which are a judicial exception.
Revised Step 2A, Prong Two – Practical Application
Having determined that claims 1 and 3 recite abstract ideas, Examiners next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); 2019 Revised 101 Guidance, 84 Reg. at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application).
In the current instance, there are no limitations integrating the abstract ideas into a practical application as there is no improvement to the functioning of a computer or to any other technology or technical field, it is not used by a particular machine or to effect a particular transformation.
Step 2B–Inventive Concept
Because the Examiner has determined that independent claims 1 and 3 are directed to an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, the Examiner looks to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 2019 Revised 101 Guidance, 84 Fed. Reg. at 56. That is not the case here. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”).
Claim 1 does not recited any other method steps besides the ones identified as abstract ideas.
Claim 3 recites “comparing means”, “first determining means” and “second determining means” which constitute the “device” for carrying out the claimed abstract ideas. However, as noted in ¶ [0091] of the specification, these components appear to be generic, off the shelf computing components programmed to perform the abstract ideas. The Supreme Court has ruled that “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention”. Alice Corporation Pty. Ltd. v. CLS Bank International 573 U.S. __, 134 S. Ct. 2347 (2014).
Therefore, because there are no additional elements that can provide an inventive concept, the Examiner concludes that claims 1 and 3 do not recite patent eligible subject matter.
Turning now to the dependent claims, the Examiner finds that claim 2 recites further method steps that encompass metal processes that can be performed in the human mind or with a pencil and paper.
Likewise, claim 4 recites the same abstract ideas identified in claim 2 but using generic, off the shelf computing means.
Claims 5-7 and 9-11 are drawn to a control system comprising the generic computing elements of claim 3 and further comprising a synchronous filter. According to the claim construction of these claims, the synchronous filter is defined merely by its function to perform a control algorithm which appears to be drawn to mathematical concepts group of abstract ideas and are therefore likewise not patent eligible.
Applying the guidance set forth in the Memorandum, the Examiner concludes that claims 1-7 and 9-11 do not recite patent-eligible subject matter.
Under the analysis outlined above, claims 8 and 12 the collection of recited elements constitute a particular machine and therefore integrate the recited abstract ideas into a practical application. Claims 8 and 12 are determined to be patent eligible and are only objected to.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Marconato (FR 2995939; see Applicant supplied machine translation).
Regarding claim 1, Marconato discloses a method for detecting a change in the direction of rotation of an object, the method comprising determining the speed of rotation gradient of the object (page 1, lines 10-19), comparing the speed of rotation of the object with a predefined speed threshold (page 3, lines 110-111, page 7, lines 278-279), and detecting the change in the direction of rotation of the object from the result of the comparison of the speed of rotation of the object with the predefined speed threshold and the determined speed of rotation gradient of the object (page 7, lines 267-287).
Marconato’s method is for determining the change in the direction of rotation of a motor rather than a rotor for a magnetic bearing.
However, courts have ruled that applying a known technique, such as Marconato’s motor rotation direction detection method, to a known device such as a rotor for a magnetic bearing involves only routine skill in the art and would be within the purview of a skilled artisan. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing of the invention to apply Marconato’s method to a magnetic bearing rotor for the purpose of determining when an object which operates under magnetic bearings, such as turbines, pumps and compressors, has changed rotation which can prevent the motor from stalling and thus increasing efficiency and reducing the need for maintenance.
Regarding claim 2, Marconato discloses when the object revolves in a first direction of rotation, the method comprises: detecting a first reversal of the direction of rotation of the object in a second direction of rotation that is counter to the first direction of rotation, when the absolute value of the speed of rotation of the object is less than the speed threshold and when the speed gradient is negative (page 3, lines 111-116), and detecting a second reversal of the direction of rotation of the object following the first reversal, when the speed gradient is greater than or equal to zero, and when the absolute value of the speed of rotation of the object is less than the speed threshold (page 7, lines 253-266).
When Marconato’s method is applied to a rotor of a magnetic bearing as described in the rejection of claim 1, the object is a rotor without further modification necessary.
The reasons and motivation for combining are the same as recited in the rejection of claim 1 above.
Regarding claim 3, Marconato discloses a device for detecting a change in the direction of rotation of an object, the device comprising comparing means configured to compare the speed of rotation of the rotor with a predefined speed threshold (page 3, lines 110-111, page 7, lines 278-279), first determining means configured to determine the speed of rotation gradient of the object (page 1, lines 10-19), and second determining means configured to detect the change in the direction of rotation of the object from the result of the comparison of the speed of rotation of the object with the predefined speed threshold and the determined speed of rotation gradient of the object (page 7, lines 267-287).
Marconato’s device is for determining the change in the direction of rotation of a motor rather than a rotor for a magnetic bearing.
However, courts have ruled that applying a known technique, such as Marconato’s motor rotation direction detection method, to a known device such as a rotor for a magnetic bearing involves only routine skill in the art and would be within the purview of a skilled artisan. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing of the invention to apply Marconato’s method to a magnetic bearing rotor for the purpose of determining when an object which operates under magnetic bearings, such as turbines, pumps and compressors, has changed rotation which can prevent the motor from stalling and thus increasing efficiency and reducing the need for maintenance.
Regarding claim 4, Marconato discloses the second determining means are configured to detect a first reversal of the direction of rotation of the object in a second direction of rotation that is counter to the first direction of rotation, when the absolute value of the speed of rotation of the object is less than the speed threshold and when the speed gradient is negative (page 3, lines 111-116), and detect a second reversal of the direction of rotation of the object following the first reversal when the speed gradient is greater than or equal to zero, and when the absolute value of the speed of rotation of the object is less than the speed threshold (page 7, lines 253-266).
When Marconato’s method is applied to a rotor of a magnetic bearing as described in the rejection of claim 3, the object is a rotor without further modification necessary.
The reasons and motivation for combining are the same as recited in the rejection of claim 3 above.
Allowable Subject Matter
Claims 8 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
There are no prior art rejections for claims 5-7 and 9-11 however the Examiner cannot comment on the allowability of these claims until the rejections under §101 are addressed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached T-F 7-4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine 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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/NATALIE HULS/Primary Examiner, Art Unit 2863