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 .
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re LongL 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto- processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD- info-I.jsp.
Claims 1-16 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,546,678. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element of step whose function is not needed would be obvious to one of ordinary skill in the art. Claim 1 of the instant application is similar to claim 1 of the US Patent No. 12,546,678. Dependent claims of instant application discloses similar limitations of dependent claims of US Pat. No 12,546,678. Hence, it is obvious that the claimed combination or the narrower claims of the patent would encompass the broader claimed combination of the claims of the instant application.
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 1-10 and 12-15 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. A subject matter eligibility analysis is set forth below. See MPEP 2106.
Under step 1, claim 1 belongs to a statutory category, namely it is a method claim.
Under step 2A, prong 1: this part of the eligibility analysis evaluates whether the claim recites a judicial exception as explained in MPEP 2106.4, subsection II, a claim recites a judicial exception when the judicial exception is set forth or described in the claim.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. “mathematical relationships/algorithms/concepts” which the court has identified as abstract) without significantly more. Claim 1 is directed to the abstract idea of (ii) for a second plurality of sets of calibration samples comprised in the first plurality of sets of calibration samples, determine a gas quantity contained in the tank from a gas state equation based on the acquired gas pressure and on a corrected gas temperature model based on the acquired gas temperature, the acquired gas pressure and the acquired ambient temperature, (iii) update the corrected gas temperature model so as to minimize a difference between the gas quantities determined for each of said second plurality of sets of calibration samples is minimized, the method further comprising the following steps during a measurement phase: (v) determining a corrected gas temperature from the corrected gas temperature model and from the acquired gas temperature, the acquired gas pressure and the acquired ambient temperature, (vi) determining the quantity of gas from the gas state equation and from the acquired gas pressure and the determined corrected gas temperature. These limitations fall under mathematical concepts. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are (i) acquiring a first plurality of successive sets of calibration samples, each set of calibration samples comprising a gas pressure measured by the embedded gas pressure sensor, a gas temperature measured by the embedded gas temperature sensor and an ambient temperature measured by an ambient temperature sensor outside the tank; and (iv) acquiring a gas temperature measured by the embedded gas temperature sensor, a gas pressure measured by the embedded pressure temperature sensor, and an ambient temperature measured by an ambient temperature sensor outside the tank; which is mere data gathering recited at a high level of generality. The claims as a whole do not amount to significantly more than the abstract idea itself.
The generic data gathering, and processing steps are recited so generically (no details whatsoever are provided other than e.g., “determining the quantity of gas from the gas state equation and from the acquired gas pressure and the determined corrected gas temperature”) that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claims are directed to the judicial exception. No specific practical application is associated with the claimed method. For instance, nothing is done with the determined quantity of gas.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use.
Dependent claims 2-10 and 12-15 merely expand upon the abstract idea further defining the abstract steps of claim 1, and therefore stand rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim 11 is considered something significantly more and can be used to overcome the 101 rejection if incorporated into claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANUEL A RIVERA VARGAS whose telephone number is (571)270-7870. The examiner can normally be reached M-F 9:00-6:00.
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/MANUEL A RIVERA VARGAS/Primary Examiner, Art Unit 2857
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