DETAILED ACTION
Status of Claims
The present application, filed on or after 3/16/2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the Remarks and amendments filed 09/10/2025.
Claims 4 and 8 are canceled.
Claims 1 and 5 are amended.
Claims 1-3, 5-7 have been examined and are pending.
(AIA ) Examiner Note
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.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-3, 5-7 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 claims contain subject matter which is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 5 recite limitations directed towards the following:
using, by an actual calculation unit, model data of the model data candidate that contributes to the improvement in the KPI to create recommendation information including one or more maintenance instructions and a maintenance plan, and notifies an instructor device and customer devices of the created recommendation information
These limitations recite functions (e.g., using, by an actual calculation unit, model data… to create) with a desired result (e.g. the creation of recommendation information…) However, the Original disclosure (Claims, Specification, and Drawings) do not provide sufficient written description support for the recited functions to achieve the recited results.
To satisfy the written description requirement of 35 U.S.C. § 112, first paragraph, the Specification must reasonably convey to an artisan of ordinary skill that Appellant had possession of the claimed invention at the time the application was filed. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Functional claim language that merely describes an intended result and fails to support the scope of the claimed invention is insufficient to show possession, even when the claim recitations are found word-for-word in the Specification. Vasudevan, 782 F.3d at 682 ("[t]he written description requirement is not met if the specification merely describes a 'desired result"') (citing Ariad, 598 F.3d at 1349); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) ("[t]he appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy" the written description requirement). The Specification must explain, for example, how Appellant intended to achieve the claimed function to satisfy the written description requirement. Vasudevan, 782 F.3d at 683. While "[t]here is no rigid requirement that the disclosure contain 'either examples or an actual reduction to practice,"' due to the written description requirement, the Specification must set forth "an adequate description that 'in a definite way identifies the claimed invention' in sufficient detail such that a person of ordinary skill would understand that the inventor had made the invention at the time of filing." Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1308 (Fed. Cir. 2015) (citing Ariad, 598 F.3d at 1352); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 US.C. 112, 84 F.R. 57, 61- 62 (January 7, 2019) ("112 Guidance").
Here, the Specification does not sufficiently support the recited functions; i.e. the original disclosure does not adequately explain how the recited results are intended to be created.
The specification does not provide a single technique nor method nor algorithm regarding how this creation is to be accomplished. Instead, the Specification, e.g. per [0038] merely states: “…The specification can be implemented by performing calculation using a predetermined calculation equation using the number of records as a parameter…”. However, the “predetermined calculation equation” is absent and not delineated leaving a practitioner of the supposed invention to invent whatever equation is necessary to achieve the claimed results.
Under these circumstances, the Examiner has determined the Specification merely states the functions and desired result recited in the aforementioned limitations, and does not demonstrate how the Applicant intended to achieve the claimed functions and result. Further, the Specification does not describe the claimed invention in sufficient detail such that an ordinarily skilled artisan would understand that the inventor had made the invention at the time of filing. Thus, the Examiner rejects claims1 and 5 under 35 U.S.C. § 112(a) for a lack of written description support.
Dependent claims 2-3 and 6-7 inherit the deficiencies of their parent claim and are also rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. a judicial exception) without significantly more.
Per step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed towards a process, machine, or manufacture.
Per step 2A Prong One, the claims recite specific limitations which fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, as follows:
Per Independent claims 1 and 5, exemplified per the method steps of claim 5:
Determining an amount of data for calculating an auxiliary variable for a KPI of a related person of the business;
Determining whether the model data candidate contributes to achieving the KPI; and
using, model data of the model data candidate that contributes to the improvement in the KPI to create recommendation information
As noted supra, these limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, these limitations fall within the group Certain Methods Of Organizing Human Activity (e.g. fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
That is, the determining steps, as drafted, are a business decisions (regarding which measured data should be used as a business key performance indicator and recommended) with no technical solution being claimed and no technical problem being solved and thus falling into Certain Methods of Organizing Human Activity. Note, that applicant has not invented nor claimed any particular model or technique by which to effect the recommendation which he claims his system/method can create. Furthermore, the mere nominal recitation of a generic “units” does not take the claim limitation out of the enumerated grouping. Thus, the claims recite an abstract idea.
Per step 2A Prong 2, the Examiner finds that the judicial exception is not integrated into a practical application. Although there are additional elements, other than those noted supra, recited in the claims, none of these additional element(s) or a combination of elements as recited in the claims apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception. As drafted, the claims as a whole merely describe how to generally “apply” the aforementioned concepts or, link them to a field of use (i.e. in this case business decisions regarding which measured data should be used as a business key performance indicator) or, serve as insignificant extra-solution activity. The claimed computer components are recited at a high level of generality and are merely invoked as tools to implement the idea but are not technical in nature. Simply implementing the abstract idea on or with generic computer components is not a practical application of the abstract idea.
These additional limitations are as follows: “recommendation support method using a recommendation support device that supports a recommendation related to business, the recommendation support method comprising: storing model data of data related to the business in a storage unit; … determining, by a model data selection unit, a granularity of a model data candidate selected from the storage unit… [recommendation information] including one or more maintenance instructions and a maintenance plan, and notifies an instructor device and customer devices of the created recommendation information.”
However, these elements do not present a technical solution to a technical problem; i.e. Applicant’s invention is not a technique nor technical solution for “storing” data nor “determining” the granularity of stored data (e.g. whether the data is incremented in units of seconds or minutes of time, etc…) and the description of the type of data which can be recommended is not significantly more than the identified abstract idea which is directed towards a business decision to recommend information. The additional elements do not recite a specific manner of performing any of the steps core to the already identified abstract idea. Instead, these features merely serve to generally “apply” the aforementioned concepts or, link them to a field of use or, are insignificant extra-solution activity to the already identified abstract idea and do not integrate the abstract idea into a practical application thereof.
Per Step 2B, the Examiner does not find that the claims provide an inventive concept, i.e., the claims do not recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception recited in the claim. As discussed with respect to Step 2A Prong Two, the additional elements in the independent claims were considered as merely serving to generally “apply” the aforementioned concepts via generically described computer components (e.g. by undisclosed ambiguously referenced “units”) and “link” them to a field of use (i.e. business data analysis such as deciding what measured data should be used as a key performance indicator), or as insignificant extra-solution activity (e.g. storage of data). For the same reason these elements are not sufficient to provide an inventive concept; i.e. the same analysis applies here in 2B. Mere instructions to apply an exception using a generic computer component and conventional data gathering cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. So, upon revaluating here in step 2B, these elements are determined to amount to no more than mere instructions to apply the exception using generic computer components (i.e. a server) and/or gather and transmit data which is well-understood, routine, conventional activity in the field; i.e. note the Symantec, TLI, and OIP Techs Court decisions cited in MPEP 2106.05(d)(ll) indicate that mere receipt or transmission of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, alone and in combination, these elements do not integrate the abstract idea into a practical application, as found supra, nor provide an inventive concept, and thus the claims are not patent eligible.
As for the dependent claims, the dependent claims do recite a combination of additional elements. However, these claims as a whole, considered either independently or in combination with the parent claims, do not integrate the identified abstract idea into a practical application thereof nor do they provide an inventive concept.
For example, dependent claims 2 and 6 recite the following: “determining, by the model data selection unit, the granularity when the selected model data candidate satisfies a predetermined amount of data and a predetermined unique number.” However, this is part of the abstract idea but not significantly more. Note there is no particular claimed relationship between how much data is necessary nor what the “predetermined unique number” may encompass. Instead, these are black box functions and their variables whose relationships with each other are undefined and abstract.
Therefore, the Examiner does not find that these additional claim limitations integrate the abstract idea into a practical application nor provide an inventive concept. Instead, these limitations, as a whole and in combination with the already recited claim elements of the parent claims, are not significantly more than the already identified abstract idea. A similar finding is found for the remaining dependent claims.
For these reasons, the claims are not found to include additional elements that are sufficient to amount to significantly more than the judicial exception and therefore the claims are not found to be patent eligible.
Please see the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019 (found at http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials).
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-7 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Jafarikojour et al. (U.S. 2023/0150835 A1; hereinafter, Jafarikojour").
Claims 1, 5: (Currently amended)
Pertaining to claims 1 and 5 exemplified in the limitations of method claim 1, Jafarikojour as shown teaches the following:
A recommendation support device for supporting a recommendation related to business, the recommendation support device comprising:
a storage unit configured to store model data of data related to the business (Jafarikojour, see at least Fig. 7 and [0046], teaching, e.g.: “…The plant database 110 [storage unit] can store data from any number of plants or facilities [business], including for example, the illustrated plant 10. The plant database 110 can include asset data 112 [a type of model data], topology data 114 [more model data], connectivity and flow data 116 [more model data] and instrumentation data 118 [more model data]. The data in the plant database 110 can for example include information or data on plant 10 and its asset(s) 12, their topology, their connectivity and flow, as well as the data from measurement instruments 18 at the plant 10.…”; the data which is stored in database 110 is used for modeling and hence is “model data”; see also at least [0074]-[0076]);
a KPI determination unit configured to determine an amount of data for calculating an auxiliary variable for a KPI of a related person of the business (Jafarikojour, see citations noted supra, including also at least Fig. 22 and [0035], in view of [0038], [0108], [0143]-[0145], and [0171]-[0172] teaching e.g.: data processing system 100 [KPI determination unit] can determine an amount of usage data [amount of data] needed to determine a threshold [auxiliary variable] of system usage at which point servicing an asset is recommended to be performed to maintain an acceptable level of specified performance [KPI] as specified by a user [person of the business]
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a model data selection unit configured to: determine a granularity of a model data candidate selected from the storage unit, [and] change a granularity of at least a
component name indicating a component used in the business, and determine
whether the KPI is changed by the granularity change of the model data of the model
data candidate; (Jafarikojour, see citations noted supra, including at least Fig. 4D in view of at least [0038], [0091], [0108], and [0143]-[0154] teaching, e.g.: “…the data processing system 100 can decide [determine] which preconfigured models 135 to apply as a starting point and which KPis [model data candidates] can be useful for the finalized model 135…”; note that each determined KPi has an associated category and relationship [granularity] to a system components and therefore is determined as part of the system’s identification of possible KPis which are generated for user selection; the relationships [granularity] may be changed, such as a name, etc…);
a contribution determination unit configured to determine whether the model data candidate contributes to achieving the KPI (Jafarikojour, see citations noted supra, including again at least Fig. 4D and again [0108] and [0143]-[0154] teaching, e.g.: “…The KPis identified by the rules engine 140 can be the KPis offered to the user to select the KPis in which the user is interested and declining the KPis which the user does not want to use, such as for example illustrated in FIGS. 4D and 4E…” and “…FIG. 4D illustrates a an example web interface window
notifying the user that the data processing system 100 has generated 60 KPis [model data candidates] on the illustrated model 135 and that the user can select which KPis to keep [whether the model data candidate contributes to achieving the KPI]. FIG. 4E illustrates an example web interface window for the user to select which KPis to keep in the model to be generated by the processing system 100…”); and
an actual calculation unit configured to use model data of the model data candidate that contributes to the improvement in the KPI to create recommendation information including one or more maintenance instructions and a maintenance plan, and notifies an instructor device and customer devices of the created recommendation information (Jafarikojour, see citations noted supra, including again at least Fig. 22 and [0038], e.g.: “…For example, an external user of the solution can utilize the software to create a model. As data in the system updates, the features can automatically recalculate to provide [notify] the most up to-date optimization results and forecasts [recommendation information including instructions and plans]. The customer can view recommendations and information in the user interface [i.e. via instructor/customer device] of the product. Customers can adjust some key inputs to the features, such as costs of various features or limits of various equipment or materials which can provide the system with updated information…”; and note per [0261]-[0265], teaching, e.g.: “FIGS. 21-22 depict an example flowchart of a RO optimization process is illustrated along with an example of the results provided to the user… Optimization function of the optimizer 180 can run optimization 2110 utilizing RO plant model 135 to test out various set-points for assets 12 and
find the set-points that provide the most optimal operation of the plant 10... FIG. 22 depicts an example of the results provided to a user, such as an operator, are illustrated. The results include recommended operation…”; Note the recommendations are based on various generated KPis [model data candidates] which were selected by the user and as such they are applicable to the recommendation related to the operating plant [business]. The user had and still maintains an option to change the KPis of interest and the system has an optimization function which changes set-points of the KPis which provide an optimal operation according to various Benefits [The KPI] – e.g. see Fig. 22 “Benefits” include Estimated Cost Savings [$/month]; Specific Cost [$/kgal]; Reduction from baseline [$/ kgal] etc…).
Claims 2, 6:
Jafarikojour, teaches the limitations upon which these claims depend. Furthermore, as shown, Jafarikojour teaches the following:
…wherein the model data selection unit determines the granularity when the selected model data candidate satisfies a predetermined amount of data and a predetermined unique number (Jafarikojour, see citations noted supra, including also at least [0004]-[0005], in view of at least [0033]-[0038] and [0098], e.g.:”… Similarly, a virtual data generator 160 can determine that there is a relationship [i.e. the granularity] or a correlation between data of two or more instruments 18 measuring pressure at a fluid at the input into a filter and a flow rate of the output of the fluid through the filter… Accordingly, virtual data generator 160 can use relationships or correlations between different sensor readings [predetermined amount of data is readings from different sensors and a predetermined unique number is a correlation between such readings] to generate virtual instrumentation data 170 at virtual sensors 165. To implement these calculations using such relationships, virtual data generator 160 can rely on the rules by the rules engine 140 to establish the relationships between different sensors, different components, different assets or different parts of the system or process…”).
Claims 3, 7:
Jafarikojour, teaches the limitations upon which these claims depend. Furthermore, as shown, Jafarikojour teaches the following:
The recommendation support device according to claim 2, wherein the model data selection unit changes the granularity for the selected model data candidate (Jafarikojour, see citations noted supra, including also at least [0038] in view of at least [0098]-[0099], the system may adjust setpoints to find optimum benefits and the user may also adjust key inputs to update the model and receive updated recommendations based on changes to the data; such changes can include granularity of the data such as specific relationships between components, etc… as illustrated per at least Figs. 4D and 22. Where RO system has granular data such as cartridge filter and also feed pump each of which have associated sensors and associated data, each of which may be used in the model of the Plant [business].)
Response to Arguments
Applicant amended claims 4 and 8 are canceled and claims 1 and 5 are amended on 9/10/2025. Applicant's arguments (hereinafter “Remarks”) also filed 09/10/2025, have been fully considered but are moot in view of the new grounds of rejection necessitated by applicant’s amendments. Note the new 101, 112, and 102 rejections in view of Jafarikojour.
Conclusion
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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J SITTNER whose telephone number is (571)270-3984. The examiner can normally be reached M-F; ~9:30-6:30. 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, Waseem Ashraf can be reached on (571) 270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Sittner/
Primary Examiner, Art Unit 3621