The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Detailed Action
Claim(s) 1-8, 10-17, 19 and 20 has/have been examined.Claim(s) 1-8, 10-17, 19 and 20 have been rejected.
Response to Arguments
The arguments submitted June 19, 2026 have been fully considered but are not persuasive.
Regarding the 101 rejection, Applicant argues that the rejection is deficient because it merely alleges that certain claimed steps can be performed as a mental process without justification. The examiner respectfully disagrees. Besides asserting that a step can be performed by the human mind with the aid of pen and paper, no further justification or evidence is required.
Applicant argues that steps are inherently technical in nature and are inherent computer processes. The examiner respectfully disagrees. Whether the data which is subject to a process is technical data does not preclude steps from being performed as a mental process.
Applicant argues that the steps improve the function of a computer and thus integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. The examiner respectfully disagrees. Claim 1 describes a process which obtains defect data, converts the data, generates prediction data, generates a root cause report and a distribution of root cases. These steps analyze data and present a result of the analysis. Despite the data being related to a defect, the analysis of this data and displaying a result of the analysis does not concretely effect an improvement in the functioning of a computer.
Arguments regarding the 103 rejection are moot in view of the new grounds of rejection.
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(s) __ is/are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Note that dependent claims which are rejected but not specifically addressed below inherit the deficiency of the parent claim and do not remedy the issue.
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 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.
Claim(s) __ is/are rejected under 35 U.S.C. 103 as being unpatentable over __.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trialand-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-programindependent.
The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH SCHELL whose telephone number is (571) 272-8186. The examiner can normally be reached on Monday through Friday 9AM-5:00PM (Pacific Time).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. Please note that all agendas or related documents that Applicant would like reviewed should be sent at least one full business day (i.e. 24 hours not including weekends or holidays) before the interview.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashish Thomas can be reached at (571) 272-0631. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The fax phone number for the examiner is 571-273-8186. The examiner may be e-mailed at joseph.schell@uspto.gov though communications via e-mail are not permitted without a written authorization form (see MPEP 502.03).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JS/JOSEPH O SCHELL/Primary Examiner, Art Unit 2114
Prosecution Insights