CTNF 18/708,280 CTNF 91314 Detailed Action Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 15-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The claims recite mathematical concepts and/or mental processes, and fail to integrate the abstract ideas into a practical application, or to recite additional elements that are sufficient to amount to significantly more than the judicial exception, as set forth below. The following analysis is performed as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter 2019 PEG), as set forth in MPEP § 2106. As to claims 15-27, 34-35, and 40: Step 1 Step 1 of the 2019 PEG asks whether the claim is to a process, machine, manufacture, or composition of matter. Claims 15-27, 34-35, and 40 are directed to a method. Step 2A Prong One Step 2A Prong One of the 2019 PEG analysis asks whether the claim recites an abstract idea, law of nature, or natural phenomenon. Claim 15 recites: a method for synchronizing measurement values supplied in a respective measurement phase, the measurement values being processed by a safety-oriented controller in a monitoring phase in accordance with a safety function, the method comprising: comparing respective counter increments of the measurement values with one another in comparison with a previous monitoring cycle during a current monitoring cycle of the monitoring phase (which is directed to both math (comparing numbers) and a mental step (a comparison of numbers can be in human mind)), and determining a maximum counter increment (this is directed to abstract limitations: the determining step is a mental step (the determining a maximum counter increment can be in human mind)); adjusting measurement values which do not have the maximum counter increment based on the maximum counter increment (this is directed to abstract limitations, which are directed to both math (adjusting numbers) and a mental step (adjusting step can be in human mind)); and establishing, by the safety function, at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment (the establishing step can be in human mind). Thus, claim 15 recites limitations that fall into the mathematical concept and/or mental process groups of abstract ideas. Mathematical algorithms are not eligible for patent protection. Mathematical algorithms are found by courts to be abstract (see Diamond v. Diehr, 450 U.S. 175, 209 U.S.P.Q. 1 (1981)). Claims 16-27, 34-35, and 40 depend on claim 15. Claims 16-27, 34-35, and 40, each recite at least all of the judicial exceptions of claim 15, and therefore also recite limitations that fall into the mathematical concept and/or mental process groups of abstract ideas. Additionally, each of claims 16-27, 34-35, and 40 recite nothing more than additional abstract ideas of mathematical concepts (comparing numbers and adjusting numbers/values) and/or mental processes (a comparison of numbers and determining a maximum counter increment and establishing numbers/values i.e. at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment can be in human mind). Applicant should note, with respect to the limitations regarding the value recited in claims 15-27, 34-35, and 40, that because the method merely recites abstract ideas of mathematical concepts (comparing numbers and adjusting numbers) and/or mental processes (adjusting step can be in human mind and/or a comparison of numbers and/or determining a maximum counter increment can be in human mind), and not any particular structure or steps for comparing and adjusting numbers/values and establishing numbers/values, the examiner, under a broad, reasonable interpretation of the claims, does not consider any details about the value to be anything other than part of the abstract step of mathematical concepts and mental processes. Step 2A Prong Two Step 2A Prong Two of the 2019 PEG analysis asks whether a claim recites additional elements that integrate the judicial exception into a practical application. Claim 15 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements do not add to the mathematical algorithms/formula/concept something that in terms of patent law’s objectives had significance i.e. improvements to another technology or technical field, meaningful limitations beyond generally linking the use of the abstract idea to particular technological environment. Step 2B Step 2B of the 2019 PEG analysis asks whether the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim? Regarding claim 15 , as discussed with respect to Step 2A Prong Two, the same analysis applies in Step 2B, i.e., insignificant extra-solution activities of mathematical algorithms/formula/concept and/or mental processes cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims 15-27, 34-35, and 40 do not recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claims. For these reasons, there are no inventive concepts in claims 15-27, 34-35, and 40, and claims 15-27, 34-35, and 40 are therefore ineligible as being directed to judicial exceptions of abstract ideas. As to claims 28-33 and 36-39: Step 1 Step 1 of the 2019 PEG asks whether the claim is to a process, machine, manufacture, or composition of matter. Claims 28-33 and 36-39 are directed to a system. Step 2A Prong One Step 2A Prong One of the 2019 PEG analysis asks whether the claim recites an abstract idea, law of nature, or natural phenomenon. Claim 28 recites: a safety-oriented controller for synchronizing measurement values delivered in a respective measurement phase, the measurement values being processed by the safety- oriented controller in a monitoring phase in accordance with a safety function, the safety- oriented controller comprising: a processor; and memory; wherein the safety-oriented controller is configured to: compare respective counter increments of the measurement values during a current monitoring cycle of the monitoring phase in comparison to a previous monitoring cycle (which is directed to both math (comparing numbers) and a mental step (a comparison of numbers can be in human mind)) and to determine a maximum counter increment (this is directed to abstract limitations: the determining step is a mental step (the determining a maximum counter increment can be in human mind)); adjust the measurement values that do not have the maximum counter increment based on the maximum counter increment (this is directed to abstract limitations, which are directed to both math (adjusting numbers) and a mental step (adjusting step can be in human mind)); and form at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment via the safety function (the forming/establishing step can be in human mind). Thus, claim 28 recites limitations that fall into the mathematical concept and/or mental process groups of abstract ideas. Mathematical algorithms are not eligible for patent protection. Mathematical algorithms are found by courts to be abstract (see Diamond v. Diehr, 450 U.S. 175, 209 U.S.P.Q. 1 (1981)). Claims 29-33 and 36-39 depend on claim 28. Claims 29-33 and 36-39, each recite at least all of the judicial exceptions of claim 28, and therefore also recite limitations that fall into the mathematical concept and/or mental process groups of abstract ideas. Additionally, each of claims 29-33 and 36-39 recites nothing more than additional abstract ideas of mathematical concepts (comparing numbers and adjusting numbers/values) and/or mental processes (a comparison of numbers and determining a maximum counter increment and forming/establishing numbers/values i.e. at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment via the safety function can be in human mind). Applicant should note, with respect to the limitations regarding the value recited in claims 28-33 and 36-39, that because the method merely recites abstract ideas of mathematical concepts (comparing numbers and adjusting numbers) and/or mental processes (adjusting step can be in human mind and/or a comparison of numbers and/or determining a maximum counter increment can be in human mind), and not any particular structure or steps for comparing and adjusting numbers/values and establishing numbers/values, the examiner, under a broad, reasonable interpretation of the claims, does not consider any details about the value to be anything other than part of the abstract step of mathematical concepts and mental processes. Step 2A Prong Two Step 2A Prong Two of the 2019 PEG analysis asks whether a claim recites additional elements that integrate the judicial exception into a practical application. Claim 28 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements do not add to the mathematical algorithms/formula/concept something that in terms of patent law’s objectives had significance i.e. improvements to another technology or technical field, meaningful limitations beyond generally linking the use of the abstract idea to particular technological environment. Step 2B Step 2B of the 2019 PEG analysis asks whether the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim? Regarding claim 28 , as discussed with respect to Step 2A Prong Two, the same analysis applies in Step 2B, i.e., insignificant extra-solution activities of mathematical algorithms/formula/concept and/or mental processes cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims 28-33 and 36-39 do not recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claims. For these reasons, there are no inventive concepts in claims 28-33 and 36-39, and claims 28-33 and 36-39 are therefore ineligible as being directed to judicial exceptions of abstract ideas. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 15-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph. As to claims 15, 23, 26-28, 36, and 39-40, claims 15, 23, 26-28, 36, and 39-40 recites “safety function” render the claims indefinite because it is not clear what exactly constitute “safety function”. Is “safety function” mathematical equation/formula? Hence, it is unclear. As to claims 16-27, 34-35, and 40, claims 16-27, 34-35, and 40 are also rejected because of their dependency on claim 15. As to claims 29-33 and 36-39, claims 29-33 and 36-39 are also rejected because of their dependency on claim 28. Claim Rejections - 35 USC § 112 07-30-01 AIA 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 15-40 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the means or explanation to how “establish, by the safety function , at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment” (as recited in claim 15) and “form at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment via the safety function” (as recited in claim 28) ; the safety function initiates safety functions depending on the at least one monitoring value (as recited in claims 26 and 39) ; an error is calculated by the safety function, which is taken into account when monitoring the monitoring value (as recited in claims 27 and 40) ; the safety function forms the at least one monitoring value based on the adjusted measurement value(s) and values derived from the measurement values associated with the maximum counter increment (as recited in claims 23 and 36). The instant specification did not particularly specify particular mathematical equation/formula intended to carry out the establishing/forming at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment as recited in i.e. claims 15 and 28. An adequate disclosure may require details of mathematical equation/formula intended to carry out the estimations and determinations. See In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974). The Examiner concluded that there was not an enabling disclosure because the specification did not describe how to “establish, by the safety function , at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment” (as recited in claim 15) and “form at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment via the safety function” (as recited in claim 28) ; the safety function initiates safety functions depending on the at least one monitoring value (as recited in claims 26 and 39) ; an error is calculated by the safety function, which is taken into account when monitoring the monitoring value (as recited in claims 27 and 40) ; the safety function forms the at least one monitoring value based on the adjusted measurement value(s) and values derived from the measurement values associated with the maximum counter increment (as recited in claims 23 and 36), with only a reasonable amount of experimentation" and that "an unreasonable amount of work would be required to arrive at the detailed relationships applicant says that he has solved." See In re Scarbrough , 500 F.2d at 566, 182 USPQ at 302. See also MPEP 2164.06 and 2164.06(a). The instant disclosure fails to provide a sufficient amount of direction provided to make and/or use the instant invention (Wands factor (F)), as well as providing any specific working examples employing all the method steps recited in instant independent claims 15 and 28 (Wands factor (G)). Thus, the instant specification fails to fully enable one of ordinary skill in the art to make and/or use the instant claimed invention. Note that: while the analysis and conclusion of a lack of enablement are based on all the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the enablement rejection (see MPEP 2164.04). As to claims 16-27, 34-35, and 40, claims 16-27, 34-35, and 40 are also rejected because of their dependency on claim 15. As to claims 29-33 and 36-39, claims 29-33 and 36-39 are also rejected because of their dependency on claim 28. Allowable Subject Matter Claims 15-40 are allowable once 101 and 112 rejections are overcome. The following is an examiner’s statement of reasons for allowance: Jurisch – US 20160329975 teaches a digital measurement input for an electric automation device, such as a protection or monitoring unit in a power system. The device receives digital measurement values that were originally created by sampling an analog current or voltage signal in a separate merging unit. Because different devices may sample at different rates or at slightly different times, the received data may not line up well with the automation device’s internal signals. The invention processes the incoming digital values so they match a desired sampling rate and timing ([0033-0038]). Jurisch fails to disclose adjusting measurement values which do not have the maximum counter increment based on the maximum counter increment; and establishing, by the safety function, at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment, in combination with the remaining limitations of a method for synchronizing measurement values supplied in a respective measurement phase, the measurement values being processed by a safety-oriented controller in a monitoring phase in accordance with a safety function as claimed in independent claim 1. Jurisch also fails to disclose adjust the measurement values that do not have the maximum counter increment based on the maximum counter increment; and form at least one monitoring value based on the adjusted measurement values and the measurement values associated with the maximum counter increment via the safety function, in combination with the remaining limitations of a safety-oriented controller for synchronizing measurement values delivered in a respective measurement phase, the measurement values being processed by the safety-oriented controller in a monitoring phase in accordance with a safety function as claimed in independent claim 28. Hence the prior art of record fails to teach the invention as set forth in claims 15-40 and Examiner cannot find specific teaching of the invention, nor reasons within the cited art to combine and/or modify the elements of the prior art of record other than applicant's own reasoning. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRUONG D PHAN whose telephone number is (571)272-8883. The examiner can normally be reached on Monday – Friday 12pm-8pm. 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, John Breene can be reached on (571) 272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TRUONG D PHAN/Examiner, Art Unit 2855 /JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855 Application/Control Number: 18/708,280 Page 2 Art Unit: 2855 Application/Control Number: 18/708,280 Page 3 Art Unit: 2855 Application/Control Number: 18/708,280 Page 4 Art Unit: 2855 Application/Control Number: 18/708,280 Page 5 Art Unit: 2855 Application/Control Number: 18/708,280 Page 6 Art Unit: 2855 Application/Control Number: 18/708,280 Page 7 Art Unit: 2855 Application/Control Number: 18/708,280 Page 8 Art Unit: 2855 Application/Control Number: 18/708,280 Page 9 Art Unit: 2855 Application/Control Number: 18/708,280 Page 10 Art Unit: 2855 Application/Control Number: 18/708,280 Page 11 Art Unit: 2855 Application/Control Number: 18/708,280 Page 12 Art Unit: 2855 Application/Control Number: 18/708,280 Page 13 Art Unit: 2855
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