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 (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.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) using a mathematical curve fitting technique to map data onto a graphical representation of the raw data. This judicial exception is not integrated into a practical application because the results of the calculations are not applied in any useful or meaningful way. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims merely recite physical objects to tie the exception to a particular technological environment or field of use. MPEP § 2106.04(d).
Applying the “streamlined analysis” outlined in MPEP §§ 2106.03 et seq., the examiner
concedes that claims 1-15 passes eligibility step 1, as claim 1 is expressly drawn to a “method”, which
is a process, and a process is one of the four statutory classes of subject matter expressly set forth in
section 101.
Turning now to eligibility step 2A, namely, does the claim recite an abstract idea, claim 1 is a method for fitting data onto a curve using a certain equation. Under prong one of revised
eligibility step 2A (MPEP § 2106.04, subsection II), it is clear that this paragraph is reciting an abstract
idea, as mathematical calculations are considered abstract ideas (MPEP § 2106.04(a)(2), subsection I,
subsection (C)). Since the claim does not indicate anywhere that this calculation is carried out by a
machine, or processor, or any other device, then it is clear that giving this paragraph its broadest
reasonable interpretation, the “applying an non-linear fitting technique … using … a temperature equation” step is sufficiently broad enough to cover someone mentally calculating a number from the measured temperature data using an equation, possibly using pen and paper (see, also, MPEP § 2106.04(a)(2), subsection III).
The analysis now turns to prong two of step 2A, namely, does the claim recite additional elements that serve to integrate the judicial exception into a practical application?
The preamble mere states the intended use of the method, and sets forth no meaning limitation to the claimed method. The first full paragraph is just a data gathering step, which our reviewing courts have held to be insignificant extra solution activity1. The limitations in this paragraph regarding the specific type of sample, and the type of sensor being used, are just tying the exception to a particular technological environment or field of use which our reviewing courts have held to be insignificant to integrate the judicial exception into a practical application2.
The second paragraph is merely “determining an initial guess”, which is a mental step, which is itself an abstract concept, and not an actionable method step3.
The third paragraph of “applying an non-linear fitting technique … using … a temperature equation” step, as stated above, is sufficiently broad enough to cover someone mentally calculating a number from the measured temperature data using an equation, possibly using pen and paper, which is an abstract concept4.
There is noting more to claim 1 than gathering data, making a guess, and then using the data and the guess (initial estimate) to calculate a mathematical curve from the raw data.
Claims 2-6 describe insignificant extra solution activity.
Claims 7-9 merely limit the method to a particular field of use.
Claims 10-12 are the only claims that contain actionable steps, but these steps are just data gathering steps, which are insignificant extra solution activity.
Claim 13 is just refining calculating step by setting limits on the numerical range that the equation is calculated over.
Claims 14 and 15 merely refine the data gathering step, which is insignificant extra solution activity.
Claims 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) using a mathematical curve fitting technique to map data onto a graphical representation of the raw data. This judicial exception is not integrated into a practical application because the results of the calculations are not applied in any useful or meaningful way. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims merely recite a generic computer to carry out the calculations, and particular physical samples, to tie the exception to a particular technological environment or field of use. MPEP § 2106.04(d).
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) using a mathematical curve fitting technique to map data onto a graphical representation of the raw data. This judicial exception is not integrated into a practical application because the results of the calculations are not applied in any useful or meaningful way. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims merely recite a generic computer to carry out the calculations, and particular types of physical objects to sample, to tie the exception to a particular technological environment or field of use. MPEP § 2106.04(d).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US # 5,711,604). The Nakamura reference discloses a thermal property measurement system (Fig. 1) comprising a processor (24) and a computer memory for storing a program (Col. 3, ll. 60-64) that collects measurement data (Col. 4, ll. 4-13) and calculates a curve based on the measured data (Col. 4, ll. 14-65). The specific non-linear curve fitting technique claimed was not disclosed, but it would have been obvious to the ordinary practioner to program the processor (24) of Nakamura to carry out any conventional calculation to process and graph the data.
With respect to claims 16 & 17, the processor (24) controls the power supplied to the apparatus (Col. 44, ll. 15-27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY W GIBSON whose telephone number is (571)272-2103. The examiner can normally be reached Tue-Friday 10AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RANDY W. GIBSON
Primary Examiner
Art Unit 2856
/RANDY W GIBSON/ Primary Examiner, Art Unit 2855
1 MPEP 2106.05(g)
2 MPEP 2106.04(d)
3 MPEP 2106.04(a)(2)
4 MPEP 2106,04(a)(2)