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 11, 2024 is acknowledged. The application will be examined accordingly.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 11, 2024 is being considered by the examiner.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception in the form of abstract ideas without significantly more. Steps C and D in claim 1 involve mathematical calculations and mental processes, which constitute a judicial exception in the form of abstract idea. See MPEP 2106.04(a). This judicial exception is not integrated into a practical application because nothing is done with the judicial exception. The method concludes with performance of the mathematical calculations and mental processes, and there is nothing in the prior steps (steps a and b) that integrates the judicial exception into a practical application. See MPEP 2106.04(d). Moreover, claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements (i.e. steps a and b) are considered well-known and conventional (see prior art rejection below). See MPEP 2106.05.
The dependent claims fail to remedy the deficiencies of claim 1 identified above. In other words, they fail to integrate the judicial exception into a practical application, and they fail to include 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.
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 3, 4 and 9 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.
Claim 3 is indefinite because of the limitation, “the section is marked by”. It is unclear whether the limitation intends to convey a method step or a structural feature. Method steps should be recited in active voice, so if the former is the intent, the claim should be amended to positively recite a step of marking the section (i.e. “further comprising marking the surface”). If the latter is the intent, then the claim should be amended to unequivocally convey structure (e.g. “…further comprising markings in the form of equidistant points…”).
Relatedly, it is unclear what the limitation “points” intends to convey. Specifically, it is unclear whether “point” refers to a location or a physical marking.
In claim 4, there is no antecedent basis for the limitation “the side of the surface S”. A 2-dimensional surface can comprise an infinite number of sides (e.g. a triangle comprises 3 sides). That said, it is unclear to what “the surface” refers.
Claim 9 is indefinite because the scope of the claim is unclear. The claimed invention is directed to a method, meaning the scope of the claim is defined by its step(s). In claim 1, the steps are clearly identified using verbs recited in active voice (e.g. “taking a photograph”, “calculating a ratio”). However, claim 9 recites verbs in passive voice (“is declared to be compliant”, “has undergone”). It is unclear whether the verbs intend to convey method steps (e.g. does the method involve a step of treating the production piece and making a declaration?). In addition, the limitation “declared” is inherently abstract. It is unclear what the limitation entails (verbal act, mental process?).
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (“Hayashi”) (US 2016/0312325 A1).
With respect to claim 1, Hayashi teaches a method for quantitatively measuring an element (e.g. martensite) in a metal control piece (see [0193]), the method comprising the following steps:
a) making a section in the control piece (see [0193] disclosing cutting the control piece so as to expose two cross-sections),
b) taking a photograph of a surface of the section using an optical microscope with magnification (see [0193]),
c) calculating a ratio of area occupied by the element to the surface using an image processing tool (see [0193]), and
d) obtaining the content of the element in the surface of the control piece (see [0193]).
With respect to claim 2, the image processing tool measures area of the image occupied by the element (see [0193]) (i.e. the number of pixels relatively occupied by the element in the photograph is measured).
With respect to claim 9, the claim is indefinite, as discussed above. Nevertheless, given that the method is intended to determine whether the composition of the metal control piece meets the desired standard (see [0193] and abstract), it is evident that a production piece which has undergone the same treatment as the control piece is declared to be compliant if the content of the element in the section of the control piece is less than a limit content (90%) and not in conformity if the content of the element is greater than the limit content (see abstract).
Claims 1, 2 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sano et al. (“Sano”) (US 2019/0226061 A1).
With respect to claim 1, Sano discloses a method for quantitatively measuring an element (e.g. austenite) in a metal control piece which has received a thermochemical surface treatment, the method comprising:
a) making a section in the control piece (see [0201]),
b) taking a photograph of a surface of the section using an optical microscope with magnification (see [0201]),
c) calculating a ratio of area occupied by the element to the surface using an image processing tool (see [0201]), and
d) obtaining the content of the element in the surface of the control piece (see [0201]).
With respect to claim 2, the image processing tool measures area of the image occupied by the element (see [0201]) (i.e. the number of pixels relatively occupied by the element in the photograph is measured).
With respect to claim 7, the element is austenite, as discussed above (see rejection of claim 1).
With respect to claim 8, the control piece comprises a notch formed by etching, the notch exposing a cross-section of the control piece (see [0201]).
With respect to claim 9, the claim is indefinite, as discussed above. Nevertheless, given that the method is intended to determine whether the composition of the metal control piece meets the desired standard (see abstract), it is evident that a production piece which has undergone the same treatment as the control piece is declared to be compliant if the content of the element in the section of the control piece is less than a limit content and not in conformity if the content of the element is greater than the limit content.
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sano in view of Vichniakov et al. (“Vichniakov”) (US 2015/0156462 A1).
With respect to claims 3 and 4, Sano does not disclose that the section is marked by aligned equidistant points. Vichniakov discloses a method of performing image analysis of a component piece wherein the component piece comprises equidistant markings 23 for calibrating the image analysis (see Fig. 1 and [0042]). In light of the disclosure of Vichniakov, 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 section taught by Sano with equidistant markings on the surface that is imaged. The markings would provide reference points for determining distances between various points on the image.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sano.
With respect to claim 5, while Sano does not explicitly disclose that the method is performed on multiple other surfaces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the method on additional surfaces of the cross-section (same cross-sectional surface, but beyond the 300 micron x 300 micron field) or additional cross-sectional surfaces to increase the accuracy of the content determination.
With respect to claim 6, the surface being analyzed is 300 microns x 300 microns (see [0201]). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the magnification such that the field photographed has an area of 80 microns x 80 microns. The increased magnification would result in more accurate measurements.
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.
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/PAUL S HYUN/ Primary Examiner, Art Unit 1796
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