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 preliminary amendment filed on June 10, 2024 has been considered.
Drawings
The drawings are objected to because box (2) should be provided with descriptive text label – target object – (see MPEP 608.02(b)(II) FP 6.22).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "76" (paragraph 0021, line 12) and "118" (Paragraph 0045, lines 9, 10) have both been used to designate detecting section. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 4, 7, and 8 are objected to because of the following informalities:
- claim 1, “an object of estimation” (claim 1, line 7; claim 7, line 6; claim 8, line 7) should be – the target object --.
Claims 1, 7, 8, before “inputted time-series electrical characteristics” (claim 1, lines 13-14; claim 7, line 13; claim 8, line 14), should insert – the --.
Claim 4, “which is results” (line 3) should be – which is a result --.
Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: detecting section (claim 1), estimating section (claim 1).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1-8 and 10-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1, claim limitations “detecting section” and “estimating section” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no corresponding structure for the sections that are discussed or shown. The sections are shown only as black boxes (see Fig. 1). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35
U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The detecting section is interpreted as a sensor, and the estimating device is interpreted as a processor.
Claims 1, 8, “the times-series electrical characteristics” (line 11) lacks antecedent basis. Examiner interprets the times-series electrical characteristics to be the “learning data” times-series electrical characteristics.
Claim 2, the difference between “a number of times of deformation” (lines 5-6) and “a deformation frequency” (line 6) is unclear. Exam8ner interprets both to be same.
Claim 2, “elapsed time” (line 6) is unclear. Exam8ner interprets “elapsed time” to be – elapsed time of the deterioration state --.
Claim 4, “the extent of deterioration increases as a power of a frequency” is unclear. Examiner interprets the limitation to read -- the extent of deterioration increases as a power of a frequency increases --. It is unclear what “becomes larger than a power of a frequency of a predetermined time”. Examiner interprets that the deteriorated state becomes larger.
Claim 7 does not have a transitional phrase. The metes and bounds of the claim cannot be readily ascertain. Examiner interprets the method to comprise the detecting and inputting steps.
Claim 7, “the times-series electrical characteristics” (line 10) lacks antecedent basis. Examiner interprets the times-series electrical characteristics to be the “learning data” times-series electrical characteristics.
The remaining claims are also rejected under 35 U.S.C. 112(b), for being dependent upon a rejected base claim.
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 and 10-17 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 (MPE 2106), the following analysis is made:
Under step 1 of the Guidance, the claims fall within a statutory category.
Under step 2A, prong 1, claims 1, 7, and 8 recite an abstract idea of “outputs the deteriorated state information” (evaluation, mental process), estimates deteriorated state information expressing a deteriorated state corresponding to inputted time-series electrical characteristics (evaluation, mental process).
The mere nominal recitation of a generic processor (estimating section, learning model, computer) does not take the claim limitation out of the abstract idea (MPEP 2106.04(a)(2) (III).
Under step 2A, prong 2, the claim limitations are not integrated into a practical application (MPEP 2106.04(d)(I)).
The detecting section detecting electrical characteristics is directed to an insignificant extra solution activity 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.
The detecting section detecting electrical characteristics is a well-understood, routine, and conventional feature known in the industry. Accordingly, the additional elements do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.
The remaining dependent claims do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.
Claims 2-5, 10, 11 are directed to conventional elements.
Claims 6 and 12-17 are directed to a computer/algorithm.
Accordingly, claims 1, 7, and 8 and their respective dependent claims 2-6 and 10-17 are patent ineligible under 35 USC 101.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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)(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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1, 6-8, 16, and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wakao et al. (US 2024/0104374).
Regarding claims 1, 7, and 8, Wakao et al. discloses an estimating device and method (Fig. 1), comprising:
a detecting section (detection unit, Fig. 1) detecting electrical characteristics between a plurality of predetermined detection points at a flexible material (Abstract, lines 1-3), which is electrically conductive (Abstract, line 3) and which has electrical characteristics that vary in accordance with deformation (paragraph 0035, lines 15-18)), of a target object that has the flexible material (Abstract, lines 3-6); and
an estimating section (5) that inputs time-series electrical characteristics (Fig. 1), which were detected by the detecting section (5 receives electrical signal from detection unit, Fig. 1, where the electrical signal is associated with time-series information, paragraph 0037, lines 3-5), of an object of estimation (2) to a learning model (51) that is trained by using, as learning data, time-series electrical characteristics that vary in accordance with deformation of the flexible material (Abstract, lines 6-8), and deteriorated state information expressing a deteriorated state relating to deformation of the flexible material (Abstract, line 8), such that the time-series electrical characteristics are inputs of the learning model (paragraph 0044, lines 3-5) and the learning model outputs the deteriorated state information (learning models outputs deformed shape of 2 where pressure has been applied, paragraph 0044, lines 4-6), and the estimating section (5) estimates deteriorated state information expressing a deteriorated state (6 is the deformed shape of 2) corresponding to inputted time-series electrical characteristics (deformed shape information of 2 associated with time-series information, paragraph 0037, lines 3-5).
Regarding claim 8, Wakao et al. further discloses a non-transitory computer-readable storage medium storing an estimating program (claim 7, lines 1-2).
Regarding claims 6, 16, and 17, Wakao et al. discloses the learning model includes a model generated by learning by using a network that uses the flexible material as a reservoir and is in accordance with reservoir computing using the reservoir (paragraph 0069, lines 11-14).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 2-4 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wakao et al. in view of Sakurai et al. (US 2024/0219268).
Regarding claim 2, Wakao et al. discloses
the electrical characteristics are volume resistances (paragraph 0020; Fig. 13C),
the target object includes a member that is flexible (paragraph 0037, lines 9-10).
However, Wakao et al. does not disclose the deteriorated state is a state expressing a degree of deterioration in which an extent of deterioration increases as at least one physical amount among a number of times of deformation, a deformation frequency and an elapsed time, from an initial state of the target object, increases.
Sakurai et al. discloses a deteriorated state is a state expressing a degree of deterioration in which an extent of deterioration increases as at least one physical amount among a number of times of deformation, a deformation frequency (deterioration due to repeated deformation, paragraph 0042, lines 1-7)
It is noted that the deteriorated state is a state expressing a degree of deterioration in which an extent of deterioration increases as at least one physical amount among an elapsed time, from an initial state of the target object, increases is an alternative limitation because it is recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide a deteriorated state that can occur due to repeated deformation as disclosed by Sakurai et al..
Regarding claim 3, Wakao et al. discloses the deteriorated state is a state expressing the degree of deterioration with respect to at least one of electrical characteristics of a time of deformation from a pre-deformation form of the target object (an electrical property that changes in a time series in response to deformation of the flexible material, Abstract, lines 7-8).
It is noted that the deteriorated state is a state expressing the degree of deterioration with respect to at least one of electrical characteristics of a time of being restored to the pre-deformation form, in time-series electrical characteristics is an alternative limitation because it is recited in the alternative form.
Regarding claim 4, Wakao et al. discloses results of analysis when frequency analysis of time-series electrical characteristics is carried out (an electrical property with which is associated time-series information that changes in response to deformation of a flexible material, paragraph 0037, lines 3-5).
Wakao et al. does not disclose the deteriorated state is a state expressing the degree of deterioration in which the extent of deterioration increases as a power of a frequency, the deteriorated state becomes larger than a power of a frequency of a predetermined time.
Sakurai et al. discloses a deteriorated state is a state expressing the degree of deterioration in which the extent of deterioration increases as a power of a frequency (deteriorates due to repeated deformation due to force, paragraph 0042, lines 1-7), the deteriorated state becomes larger than a power of a frequency of a predetermined time (deteriorates due to repeated deformation due to force, paragraph 0042, lines 1-7).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide a deteriorated state that can increase due to repeated deformation as disclosed by Sakurai et al..
Regarding claims 12-14, Wakao et al. discloses the claim limitation as discussed above with regard to claim 6.
Claims 5, 10, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Wakao et al. in view of Sakurai et al. as applied to claims 2-4 above, and further in view of Kitano et al. (US 20240286277).
Regarding claims 5, 10, and 11, Wakao et al. as modified by Sakurai et al. discloses the claimed limitations as discussed above, except the target object includes a material at which electrical conductivity is imparted to at least a portion of a urethane material of a structure having a skeleton that is at least one of fiber-like or mesh-like, or a structure in which a plurality of minute air bubbles are scattered at an interior thereof.
Kitano et al. discloses a target object (22, Fig. 4) includes a material at which electrical conductivity is imparted to at least a portion of a urethane material of a structure (paragraph 0155, lines 2-4) having a skeleton that is at least one of fiber-like or mesh-like (paragraph 0095, lines 9-12).
It is noted that at least a portion of a urethane material of a structure in which a plurality of minute air bubbles are scattered at an interior thereof is an alternative limitation because it is recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Wakao et al. as modified with a target object includes a material at which electrical conductivity is imparted to at least a portion of a urethane material as disclosed by Kitano et al. for the purpose of providing a structure having a skeleton that is at least one of fiber-like or mesh-like.
Regarding claim 15, Wakao et al. as modified by Sakurai et al. discloses the claim limitations as discussed above with regard to claim 6.
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.
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).
/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 July 31, 2026
Prosecution Insights