DETAILED ACTION
This office action is in response to the amendment filed on 2/26/2026. In the amendment, claims 12-13, 16, 19 and 21 have been amended, and claims 23-24 are now newly added and claim 20 is canceled. Overall, claims 12-19 and 21-24 are pending in this application.
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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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: “control unit” in claim 22.
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 § 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 12-19 and 21-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
[101 Analysis Step 1]
Step 1, of the 2019 Guidance, first looks to whether the claimed invention is directed to a statutory category, namely a process, machine, manufactures, and compositions of mater.
The claim 12 is directed to a method for monitoring a thermal degradation state of a reducing solution contained within a reservoir (i.e. process) and claim 22 is directed to an apparatus for monitoring a thermal degradation state of a reducing solution contained within a reservoir (i.e. machine). Thus, claims 12 and 22 are one of four the statutory categories (Step 1: YES).
[101 Analysis Step 2A, Prong I]
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent Claims 12 and 22 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim(s) for the remainder of the 101 rejection. Claim 12 recites:
A method for monitoring a thermal degradation state of a reducing solution contained within a reservoir, the method comprising:
a) providing a first functional relationship associating a quantity indicative of a temperature of the solution with a first parameter associated with the thermal degradation state,
b) acquiring the quantity, and
c) determining the first parameter as a function of the acquired quantity via the first functional relationship,
wherein the degradation state is monitored based on the first determined parameter,
wherein the first parameter is a decay time of the solution, and
wherein the first functional relationship comprises an increasing function of a product between running time and an increasing coefficient with said first value, and
wherein step a) comprises:
providing a second functional relationship associating the first value with a second parameter associated with the thermal degradation state, such that the second parameter is decreasing as the first value increases,
providing a reference value of the second parameter, the reference value being associated with an ambient temperature,
providing a third parameter inversely proportional to the second parameter, at least for temperature values of the solution greater than said ambient temperature, according to a proportionality constant defined by said reference value, and
providing the first functional relationship as an increasing function of the third parameter, wherein said coefficient is the third parameter.
The examiner submits that the foregoing bolded limitations(s) constitute “mental process” and “mathematical concepts” because under its broadest reasonable interpretations, the claim covers performance of the limitation in the human mind. For example, “providing …”, “determining…”, “providing a second functional relationship …”, “providing a reference value…”, “providing a third parameter inversely proportional…” and “providing the first functional relationship…” in the context of the claim encompasses a person formulating a graph, formula or judgement by using the known data and making a determination based on the data collected to formulating a judgement. Accordingly, the claim recites at least one abstract idea.
[101 Analysis Step 2A, Prong II]
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
A method for monitoring a thermal degradation state of a reducing solution contained within a reservoir, the method comprising:
a) providing a first functional relationship associating a quantity indicative of a temperature of the solution with a first parameter associated with the thermal degradation state,
b) acquiring the quantity, and
c) determining the first parameter as a function of the acquired quantity via the first functional relationship,
wherein the degradation state is monitored based on the first determined parameter,
wherein the first parameter is a decay time of the solution, and
wherein the first functional relationship comprises an increasing function of a product between running time and an increasing coefficient with said first value, and
wherein step a) comprises:
providing a second functional relationship associating the first value with a second parameter associated with the thermal degradation state, such that the second parameter is decreasing as the first value increases,
providing a reference value of the second parameter, the reference value being associated with an ambient temperature,
providing a third parameter inversely proportional to the second parameter, at least for temperature values of the solution greater than said ambient temperature, according to a proportionality constant defined by said reference value, and
providing the first functional relationship as an increasing function of the third parameter, wherein said coefficient is the third parameter.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract into a practical applications.
Regarding the additional limitations of “acquiring the quantity” the examiner submits that these limitations are insignificant extra-solution activities that merely use some kind of device to perform the process. In particular, the acquiring steps can be performed via using sensors are recited at a high level of generality (i.e. as a general means of gathering temperature data for use in the determining step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Lastly, the “reducing solution contained within a reservoir” and “control unit…” recited in claim 22 are recited at a high-level of generality (i.e. as a general reducing agent and reservoir performing generic functions and as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component and normal reducing solution within the reservoir functions.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical filed, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Response to Arguments
Applicant's arguments filed 2/26/2026 have been fully considered but they are not persuasive.
Applicant argues that “Although the prior art status of the cited art is not being challenged at this time, Applicant reserves the right to challenge the prior art status of the cited art at any appropriate time, should the need arise. Accordingly, any arguments and amendments made herein should not be construed as acquiescing to any prior art status of the cited art. further asserted that the claims "do not integrate the above-noted abstract [idea] into a practical application" and "do not include additional elements . . . that are sufficient to amount to significantly more than the judicial exception." Id. at p. 8-9. Applicant respectfully disagrees. In particular and similar to Example 38 of the Subject Matter Eligibility Examples, a judicial exception is not recited under Step 2A - Prong 1. Similar to Example 38, "[w]ith respect to mental processes, the claim does not recite a mental process because the steps are not practically performed in the human mind." For example, "acquiring the first value," "determining the first parameter as a function of the acquired first value via the first functional relationship, wherein the degradation state is monitored based on the first determined parameter," "wherein the first functional relationship comprises an increasing function of a product between running time and an increasing coefficient with said first value," "providing a third parameter inversely proportional to the second parameter, at least for temperature values of the solution greater than said ambient temperature, according to a proportionality constant defined by said reference value, and providing the first functional relationship as an increasing function of the third parameter, wherein said coefficient is the third parameter" are not practically performed in the human mind. Accordingly, the claims are, therefore eligible” however the examiner respectfully disagree with the applicant since the steps can be performed in human mind solving mathematical formulas and the example 38 of the Subject Matter Eligibility Example recites “simulating a first digital representation…” which is to create a model and simulated using a bilinear transformation to create a digital representation of the analog circuit which cannot be performed by the human mind.
Applicant further argues that “Even assuming, arguendo, claim 12 recites a judicial exception, claim 12 is patentable subject under Step 2A - Prong 2. For example, similar to Claim 1 of Example 40 of the Subject Matter Eligibility Examples the claim recites additional elements that provide a "specific framework over prior systems" and "as a whole integrates the mental process into a practical application." In particular, currently amended claim 12 recites "providing a second functional relationship associating the first value with a second parameter associated with the thermal degradation state, such that the second parameter is decreasing as the first value increases, providing a reference value of the second parameter, the reference value being associated with an ambient temperature, providing a third parameter inversely proportional to the second parameter, at least for temperature values of the solution greater than said ambient temperature, according to a proportionality constant defined by said reference value, and providing the first functional relationship as an increasing function of the third parameter, wherein said coefficient is the third parameter." Thus, the claims are eligible because they are not directed to the alleged recited judicial exception” however the examiner respectfully disagree with the applicant since the example 40 of the Subject Matter Eligibility Example is directed to improving network monitoring system of the computer network traffic however the current claims are directed to “monitoring a thermal degradation state of a reducing solution…” and which requires gathering data and calculating variables based on mathematical formula (which can be done in the human mind) and no other steps are recited in result of the monitoring which integrates the method of organizing human activity into a practical application (such as example 42 of the Subject Matter Eligibility Example).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON DONGPA LEE whose telephone number is (571)270-3525. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aniss Chad can be reached at (571) 270-3832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON D LEE/Primary Examiner, Art Unit 3662 May 8, 2026
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