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 .
The amendment filed on July 22, 2026 has been considered.
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.
Claims 17-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 17, “the prediction operation includes comparing the component-related process values with a learned relationship between previously recorded process values and associated quality values” and “assigning each detected anomaly to a coating location of the component that was being coated when the anomaly occurred” are not disclosed in the original disclosure.
Contrary to Applicants’ remarks, the above limitations are not described in original claim 25 and paragraph 0028. Instead, claim 25 and paragraph 0028 recite/describe an optimization proposal.
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 17-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Pursuant to the 2019 Revised Patent Subject Matter Eligibility Guidance (MPEP 2106), the following analysis is made:
Under step 1 of the Guidance, the claims fall within a statutory category.
Under step 2A, prong 1, claim 17 recites an abstract idea of “determining the component-related process values of the coating equipment” (evaluation, mental process), “determining the component-related quality values, the quality values reflecting the coating quality of the components” (evaluation, mental process), “determining quality-relevant anomalies of the process values for detecting coating defects during the coating of the individual components in the context of a prediction operation during the coating of the components” (evaluation, mental process), “the prediction operation includes comparing the component-related process values with a learned relationship between previously recorded process values and associated quality values” (evaluation, mental process; mathematical concept) “determining the position of the coating defects corresponding to the anomalies on the component surface of the coated components by evaluating the process values” (evaluation, mental process), “assigning each detected anomaly to a coating location of the component that was being coated when the anomaly occurred” (evaluation, mental process), “determining an optimization proposal for optimizing the process values to avoid the coating defect,” (mental process), “automatically implementing the optimization proposal for optimizing the process values” (mental process), “subsequently operating the coating system according to the optimization proposal” (mental process).
Under step 2A, prong 2, the claim limitations are not integrated into a practical application (MPEP 2106.04(d)(I)).
“Obtaining component-related process values which represent operating variables of devices of the coating system during the coating of the individual components” are directed to insignificant extra-solution activities of data gathering (see MPEP 2106.05(g)).
Under step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea (MPEP 2106.05(A)).
“Coating the components with the coating agent” and “obtaining component-related process values which represent operating variables of devices of the coating system during the coating of the individual components is a well-understood, routine and conventional activity known in the industry (see MPEP 2106.05(d)).
The remaining dependent claims 18-29 and 31 do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.
Claims 18, 20, 24, 26, and 27 are directed to conventional insignificant extra solution activities.
Claims 19, 21-25, 28, 29, and 31 are directed to an abstract idea/data.
Claims 30 and 32 are directed to conventional activities/elements.
Accordingly, claim 17 and its dependent claims 18-32 are patent eligible under 35 USC 101.
Prior Art Note
Claims 17-32 do not have prior art rejections.
The combination as claimed wherein a method to operate a coating system that coats components with a coating agent with an applicator comprising a prediction operation includes comparing the component-related process values with a learned relationship between previously recorded process values and associated quality values (claim 17) is not disclosed, suggested, or made obvious by the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed on July 22, 2026 have been fully considered.
Applicant’s arguments and amendments with respect to the objections to the specification have been fully considered and are persuasive. The objections to the specification have been withdrawn.
Applicant’s arguments and amendments with respect to the rejection under 35 USC 112(b) have been fully considered and are persuasive. The rejection under 35 USC 112(b) has been withdrawn.
With respect to the rejections under 35 USC 101, Applicants argue “[t]he rejection of the earlier unamended claims alleges that the claims were directed to an abstract idea because they are mental processes. Applicant notes that the mental processing grouping does not include concepts that could not be practically performed in the human mind, such as obtaining component-related process values which represent operating variables of devices of the coating system during the coating of the components, as recited in claim 17.”
Examiner’s position is that, as discussed above “obtaining component-related process values which represent operating variables of devices of the coating system during the coating of the individual components” are directed to insignificant extra-solution activities of data gathering (see MPEP 2106.05(g)) and further is a well-understood, routine and conventional activity known in the industry (see MPEP 2106.05(d)). It is noted that “obtaining component-related process values which represent operating variables of devices of the coating system during the coating of the individual components” does not require a practical machine to be performed. The component-related process values are merely data and can be read/memorized by a human mind.
Applicants further argue “[t]he human mind cannot practically determine the component-related process values of the coating equipment and component-related quality values. Furthermore, the human mind cannot practically determine quality-relevant anomalies of the process values for detecting coating defects during the coating of the components in the context of a prediction operation during the coating of the components. Nor can the human mind then determining the position of the coating defects corresponding to the anomalies on the component surface of the coated components by evaluating the process values.”
Examiner’s position is that the above determining steps involve performing evaluations. Thus, they are part of the mental processing grouping (observation, evaluation, judgment, opinion).
Applicants further argue “amended claim 17 is tied to the practical application of task of improving the quality control in a coating system (e.g. painting plant) for coating components (e.g. motor vehicle body components) by determining an optimization proposal for optimizing the process values to avoid the coating defect, automatically implementing the optimization proposal for optimizing the process values, and subsequently operating the coating system according to the optimization proposal. The claimed technology is an improvement over and solves problems with conventional techniques of adjusting process values to improve the quality of the painting process which is carried out manually by an expert on the basis of the expert's experience. The causes of possible quality defects are also determined manually by changing process values according to the trial-and-error principle. This type of quality control is error-prone and heavily dependent on the experience of the expert. The technical solution to these problems is provided by the claimed unconventional combination of technical features of at least: 1) obtaining component-related process values which represent operating variables of devices of the coating system; 2) determining the component-related process values of the coating equipment; 3) determining the component-related quality values reflecting the coating quality of the components; 4) determining quality-relevant anomalies of the process values for detecting coating defects during the coating of the components in the context of a prediction operation during the coating of the components; 5) determining the position of the coating defects corresponding to the anomalies on the component surface of the coated components by evaluating the process values; 6) automatically implementing an optimization proposal for optimizing the process values; and 7) subsequently operating the coating system according to the optimization proposal.”
Examiner’s position is that if the argument is about claim 17 being directed to a technological improvement, the argument must satisfy MPEP 2106.05(a). Pursuant to MPEP 2106.05(a), “[a]n indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.”
Applicants have not explained where in the specification can identification of a technical problem be found. Applicants have not explained where in the specification can details of an unconventional technical solution (includes steps 1-7 that are expressed in claim 17) to the technical problem be found.
Thus, claim 17 has not been shown as being directed to a technological improvement pursuant to MPEP 2106.05(a). Accordingly, claim 17 has not been shown to be indicative of integration into a practical application pursuant to MPEP 2106.05(a).
Applicant’s arguments and amendments with respect to the rejections under 35 USC 103 have been fully considered and are persuasive. The rejections under 35 USC 103 have been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Phillip et al. (KR 20220037392) discloses a method comprising
determining the component-related quality values, the quality values reflecting the coating quality of the components (a method for qualitative and/or quantitative characterization of a coating surface, Abstract, line 1));
assigning each detected anomaly to a coating location of the component that was being coated when the anomaly occurred (page 9, paragraph 9).
Ishizu et al. (WO 2020/250306) discloses a method to operate a coating system that coats components with a coating agent with an applicator (Abstract, lines 1-2) comprising assigning each detected anomaly to a coating location of the component that was being coated when the anomaly occurred (Abstract, lines 7-9).
However, the references above do not disclose a prediction operation includes comparing the component-related process values with a learned relationship between previously recorded process values and associated quality values.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 October 14, 2026
