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 .
Response to Amendment
The preliminary amendment filed on April 5, 2024 is acknowledged. The application will be examined accordingly.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 5, 2024 is being considered by the examiner.
Claim Objections
The claims are objected to because of the following informalities:
Many instances of the limitation “respective” in the claims are redundant and/or improper. The limitation “respective” establishes a relationship between a pair of elements. Consequently, it is redundant, and in some cases improper, to recite the limitation multiple times when establishing a singular relationship. The issue is further exacerbated by the recitation of “each” in some instances.
For example, in line 2 of claim 9, the limitation “respective” is redundant/improper because the clause already recites “each”.
As another example, in line 5 of claim 9, multiple uses of the limitation “respective” is improper because one instance of “respective” already establishes a corresponding relationship between corrosion rate and corrosion thickness reduction amount.
In many instances, a clause recites multiple instances of “respective” in addition to “each”, rendering the relationship intended by the clause potentially indefinite.
Appropriate corrections throughout the claims are required. The examples above are merely exemplary.
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 9-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to independent claims 9 and 14, they recite steps of assigning scores and subsequently estimating a risk based on the scores. These steps are directed to mathematical relationships and/or mental processes, which fall under the umbrella of an abstract idea, which is considered a judicial exception. This judicial exception is not integrated into a practical application because nothing is done with it. The claimed methods terminate with the step of estimating a risk. While the claims further recite steps of measuring and obtaining data, these steps are directed to data gathering that precede the judicial exception, and hence they are considered insignificant extra-solution activities, which do not integrate a judicial exception into a practical application. See MPEP 2106.05(g) discussing examples of “insignificant extra-solution activities”, and MPEP 2106.04(d) explaining that “insignificant extra-solution activities” fail to integrate a judicial exception into a practical application. Moreover, because these additional steps are considered “insignificant extra-solution activities”, the steps are also not considered “additional elements that are sufficient to amount to significantly more than the judicial exception” so as to obviate a rejection under 35 U.S.C. 101. See MPEP 2106.05(g). Claim 14 further recites a measurement device for gathering the data discussed above, but the measurement device is:
detached from the judicial exception identified above; and
well-known/conventional in the art (see prior art rejection set forth below).
Consequently, the recitation of the measurement device does not “integrate the judicial exception into a practical application”, and it is not considered “additional elements that are sufficient to amount to significantly more than the judicial exception”.
The dependent claims do not remedy the deficiency of claims 9 and 14. Specifically, the dependent claims do not integrate the above-identified judicial exception into a practical application, and they do not recite “additional elements that are sufficient to amount to significantly more than the judicial exception” (see prior art rejections below). Consequently, they are also rejected.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 9-22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claims 9 and 22 are indefinite because they recite a step of setting a score “based on the magnitude of the…corrosion rate and based on the…correlation”, even though the correlation is already based on said magnitude. It is unclear whether the claims intend to recite a calculation in which the magnitude of the corrosion rate is accounted for twice.
Claims 11, 13, 16 and 18 are indefinite because they introduce a new step (“further comprising acquiring the environment data”) that is already inherent. Specifically, in order to obtain the respective correlation recited in claims 9 and 14, it is evident that the environment data must be acquired. That said, the intended scope of claims 11, 13, 16 and 18 is unclear, rendering the claims indefinite.
Claims 12 and 17 are indefinite because the relationship between the subject matter of claims 12 and 17 and the subject matter of claims 11 and 16, respectively, is unclear. Specifically, it is unclear to what “area” refers and how it relates to the buried locations, the corrosion samples and/or the metal structure recited in claims 11 and 16. Claims 12 and 17 provide no context for the limitation “area”.
Claim Interpretation
The claims are replete with recitations directed to mental processes/calculations that are “based on” previously obtained information, and in some instances (see indefiniteness rejection above), the scope of the limitation is unclear. Absent the claims explicitly specifying how the previously obtained information is used, the limitation “based on” is being interpreted to convey a mental process where the previously obtained information is merely used in the mental process/calculation.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Asakura et al. (“Asakura”) (JP 2016114564 A).
With respect to claim 9, Asakura discloses a method comprising:
measuring a corrosion thickness reduction amount for a corrosion sample (see “external corrosion rate of a buried metal structure …are measured”), the corrosion sample including a metal structure (e.g. a pipe) buried at a buried location (see abstract);
obtaining a corrosion rate from the corrosion thickness reduction amount and a buried period for the corrosion sample (see abstract);
obtaining a correlation between environment data (chronopotentiometry measurements of soil) at the buried location and a magnitude of the corrosion rate (see “external corrosion rate of a buried metal structure…and the electrochemical characteristics of the soil in which the buried metal structure is buried are measured and correlated”; see also disclosure directed to “correlation graph”);
setting a score for the environment data at the buried location based on the correlation (see points along the graph illustrated in Fig. 10); and
estimating a risk of corrosion (“service life”) of a metal structure to be buried at the buried location based on the score for the environment data corresponding to the buried location (see disclosure of “service life” and Fig. 12).
The method differs from the claimed invention in that Asakura does not disclose performing the method for a plurality of samples located at different buried locations and setting an overall score of the plurality of samples based on the data of the plurality of samples.
However, Asakura discloses a method of gathering environment data, wherein multiple samples are taken (e.g. side of a pipe, under the pipe), and using the most corrosive score as the environment data (see Example 1). In light of the disclosure and depending on the size of the metal structure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have analyzed a plurality of corrosion samples at a plurality of buried locations, and have derived an overall score based on data derived from the plurality of corrosion samples and buried locations. The modification would avoid miscalculations of risk of corrosion caused by statistical anomalies in environment data and/or corrosion thickness reduction amount, wherein the anomalies are not representative of the actual soil quality of the buried location and/or the corrosion rate of the metal structure. If the modification is made, then the modified method would further comprise performing the method on each corrosion sample and buried location, and further include a step of setting an overall score of the plurality of corrosion samples (e.g. select the highest environment data score to err on the side of caution regarding the service life of the metal structure).
With respect to claim 10, the claimed “overall score” is arbitrary. As long as all of the scores for the environment data are used to determine the “overall score” and the “overall score” properly represents the risk of corrosion (e.g. higher the score, higher the risk), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to derived the overall score using any conventional statistical conversion of numbers, including totaling the scores for the environmental data at the buried locations corresponding to the plurality of samples.
With respect to claims 11 and 13, as discussed above (see rejection of claims 11 and 13 under 35 U.S.C. 112), it is evident that the method of claim 9 comprises acquiring the environment data of each buried location. Otherwise, the correlation cannot be determined.
With respect to claim 12, it is indefinite, as discussed above. That said, the method further comprises estimating a risk of corrosion for each area of a plurality of areas, wherein each “area” refers to a buried location.
With respect to claim 14, Asakura also discloses a system for carrying out the method discussed above. Specifically, the system comprises a depth gauge 70 and an ultrasonic thickness gauge 71 (see Fig. 4) configured to measure a corrosion thickness reduction amount for a corrosion sample; and
a computer for conducting the mental processes/calculations of the method.
Naturally, the computer comprises a memory comprising instructions; and
one or more processors in communication with the memory, wherein the one or more processors execute the instructions to:
obtain the corrosion rate (see Table 2 as evidence that a computer was used to calculate the corrosion rate);
obtain the correlation (see Fig. 10 as evidence that a computer was used to plot points on a coordinate); and
set the score for the environment data (see Fig. 10 as evidence that a computer was used to derive a linear correlation based on the plots); and
estimate the risk of corrosion (see Fig. 12 as evidence that a computer was used to estimate service life).
Moreover, given that a computer is used to perform all of the calculations, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the same computer to calculate the overall score.
With respect to claim 15, the claimed “overall score” is arbitrary. As long as all of the scores for the environment data are used to determine the “overall score” and the “overall score” properly represents the risk of corrosion (e.g. higher the score, higher the risk), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configured the computer to derive the overall score using any conventional statistical conversion of numbers, including totaling the scores for the environmental data at the buried locations corresponding to the plurality of samples.
With respect to claims 16 and 18, as discussed above (see rejection of claims 16 and 18 under 35 U.S.C. 112), it is evident that the instructions must comprise instructions to acquire the environment data of each buried location.
With respect to claim 17, it is indefinite, as discussed above. That said, the instructions further comprise instructions to estimate a risk of corrosion for each area of a plurality of areas, wherein each “area” refers to a buried location.
Claims 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Asakura as applied to claims 9-18 above, and further in view of Ushida et al. (“Ushida”) (JP 2004301754 A).
With respect to claims 19, 21 and 22, Asakura does not disclose that the measurement device cleans each sample before measuring the corrosion thickness reduction amount of a sample.
Ushida discloses a method of determining the extent of corrosion of a buried pipe using an ultrasonic flaw detector, wherein the pipe is cleaned (rust is removed) prior to conducting the measurement so that the detector can be moved smoothly along the surface of the pipe (see [0002]). In light of the disclosure of Ushida, and given that Asakura discloses the use of an ultrasonic gauge 71 (see rejection of claim 14), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the measurement device with a cleaner (rust remover) configured to clean the corrosion samples before the corrosion thickness reduction amount of each corrosion sample is measured.
With respect to claim 20, it also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have dried the corrosion samples after cleaning and prior to conducting the measurements. Aside from preventing rust to the measurement device and electrical shocks, drying the corrosion samples would allow gauge 71 to move smoothly along a surface of the corrosion sample, as taught by Ushida. That said, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the measurement device with a dryer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL S HYUN/ Primary Examiner, Art Unit 1796
Prosecution Insights