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 .
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claims are directed at methods and apparatus and therefore are directed at one of the four statutory categories
Step 2A prong 1
Prong 1 requires the Examiner to determine whether the claims recite an abstract idea that fall under one of the following four categories: a) mathematical concept, b) certain methods of organizing human activity, c) mental process, or d) other abstract ideas such as an idea of itself.
The claim limitations in the abstract idea have been highlighted in bold below; the remaining limitations are "additional elements."
Specifically representative Claim 1 recites:
A method for a state analysis of an on-load tap-changer the on-load tap-changer comprising at least one vacuum interrupter for switching between winding taps of a transformer (does not add significantly more because this represents extrasolution activity), the method comprising:
capturing real-time data with respect to the on-load tap-changer (insignificant extrasolution activity and not significantly more for the same reason);
determining tap-changer-specific parameters (abstract; mathematical concepts, and/or mathematical calculations; computer implementation of method; also does not add significantly more because this represents extra-solution activity), and
determining at least one characteristic value for ascertaining a state index of the on-load tap-changer on the basis of the real-time data and the tap-changer-specific parameters (abstract; mathematical concepts, and/or mathematical calculations; computer implementation of method; also does not add significantly more because this represents extra-solution activity),
wherein the state index comprises a period of time until a due maintenance, a remaining service life, or a remaining number of switching processes of the on-load tap-changer (abstract; mental processes, judgement; insignificant extrasolution activity and not significantly more for the same reason).
Claims 2-10 are also rejected as they are abstract and/or qualify as insignificant extra solution activity for the reasons given next to bolded portions of Claim 1, above. Claims 8-10 add structure, but do not implement a practical application and therefore do not pass step 2A, prong 2 to qualify for eligibility. Examiner also notes that, the addition of a practical application in the claims that add a tangible operation resulting from the abstract limitations may obviate the rejection under USC 101.
The highlighted portion of the claim constitutes an abstract idea because it is analogous to other ideas identified as abstract in court decisions.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above, where noted, is analogous to subject matter deemed an abstract idea in previous court decisions as mental processes that can be performed in the human mind (MPEP 2104.04(B)(iii).
The claims at issue can be summarized, where noted, as concepts that can be performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972); Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965). Notably, in Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016), the court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation. The court held that the claims were directed to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes can be performed by humans with the assistance of physical aids such as pens or paper.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above is analogous to subject matter deemed an abstract idea in previous court decisions as collecting, displaying, and manipulating data (MPEP 2104.04(B)(i) and collecting information, analyzing it, and displaying certain results of the collection and analysis (MPEP 2104.04(B)(ii).
The claims at issue can be summarized, where noted as merely mathematical concepts and calculations, as collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group v. Alstrom, 2015-1778). Both cases are highly relevant and also very recent. Information as such is an intangible. See Microsoft Corp. v. AT & TCorp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340F.3d 1367, 1372 (Fed. Cir. 2003). See also the seminal case of Parker v. Flook, 437 U.S. 584, where the Supreme Court found that mere post-solution activity (such as the natural output of a mathematical algorithm) does not make the ineligible eligible. The CAFC has treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349;... In a similar vein, the Court has treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. See, e.g., TLI Commc'ns, 823 F.3dat 613;. . . And the Court has recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776F.3dat 1347.
Step 2A prong 2
Under prong 2 Examiner is to determine whether the additional elements integrate the abstract idea into a practical application. In order to do this Examiner must identify whether there are additional elements and evaluate whether those additional elements individually and in combination integrate the abstract idea into a practical application.
In this case, there are no additional elements aside from describing the gathered data. The only elements of Claims 1-10 are directed towards gathering and manipulation of data and/or mental processes and no result is discussed. Without a result there can be no practical application of the algorithm of Claims 1-10.
Courts have determined that elements including sensors, processors and memory do not cause a Claim having an abstract idea to be directed at more than the abstract idea. For example. Courts have declined to find significantly more than an abstract idea in claims involving receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto.
LLC, 823 F.3d 607, 610,118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359,1363,115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355,112 USPQ2d 1093,1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Also, Courts have declined to find significantly more than an abstract idea in claims involving performing repetitive calculations, Flook, 437 U.S. at 594,198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266,1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Furthermore, as stated above, the act of repair and maintenance is wholly unrelated to the abstract idea/algorithm. In Diehr, the abstract algorithm was tied into a practical application because the rubber that was manufactured had characteristics (the degree of cure) that was determined by the algorithm. In this case, the algorithm has no effect on the repair, aside from merely flagging the need for repair, much more analogous to the alarm limit in Flook.
Step 2B
In step 2B Examiner must determine whether the additional elements are well-understood, routine, and conventional. Examiner must do this consistent with the Berkheimer Memo.
The Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP’s noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
As mentioned above, there are no additional elements in Claims 1-10 aside from the recitation of the algorithm, performative mental processes, and the data gathered and manipulated.
As such, there are no additional elements to be considered individually and in combination with the other claim elements, and therefore cannot make the claim as a whole significantly more than the abstract idea itself. Rather than being a particular limited application of the abstract idea which serves to improve a specific method or device, the claim would tend to monopolize the abstract idea itself in practice.
Stated simply, nothing in claim 1 forms a nexus between the method and a calibration system or maintenance process of the on-load tap-changer. Claims 2-10 do not include any limitations to cause the claims to be directed at more than the abstract idea.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaar US Patent No.: US 9,679,710 in view of Goutard et al. USPG Pub. No.: US 2011/0282508.
Regarding Claim 1, Schaar teaches a method for a state analysis of an on-load tap-changer the on-load tap-changer comprising at least one vacuum interrupter for switching between winding taps of a transformer (see col.1, ln.63 – col.2, ln.9 and figure 1, 100 which is an example of the tap selector 200 seen in figure 2, comprising an OLTC with a vacuum interrupter), the method comprising:
capturing real-time data with respect to the on-load tap-changer (see col.4, lns.50-59 discussing data acquisition and col.13, lns12-27, discussing the real-time functionality of data gathering and analysis);
determining tap-changer-specific parameters (see col.4, lns.50-59, in which parameters of the tap changer, in particular, are determined), and
determining at least one characteristic value for ascertaining a state index of the on-load tap-changer on the basis of the real-time data and the tap-changer-specific parameters (see col.7, lns.22-64, which discusses determination and analysis of OLTC parameters from an ascertained set of data qualifying as a state index),
Schaar is silent in explicitly disclosing wherein the state index comprises a period of time until a due maintenance, a remaining service life, or a remaining number of switching processes of the on-load tap-changer. However, Goutard discloses a device that determines a state index by which on-load tap changers characteristics are modeled (see Goutard [0139]) and wherein the state index comprises a period of time until a due maintenance, a remaining service life, or a remaining number of switching processes of the on-load tap-changer (see Goutard figure 21, [0049], and [0066]-[0067], in which the power system, including the OLTC, is analyzed and maintenance and health of the device are determined). It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the teachings of Schaar with those of Goutard, ultimately, in order to achieve higher performance objectives (as discussed in Goutard [0066]).
Regarding Claim 2, Schaar and Goutard teach the method as claimed in claim 1, wherein capturing the real-time data comprises: determining a load current during each switching process of the on-load tap-changer, determining a step voltage during each switching process, determining the a present position n-of the on-load tap-changer, determining a switching direction of an imminent switching process of the on-load tap-changer, determining a temperature of an insulating medium in which the vacuum interrupter is situated, determining a switching frequency in a defined period of time, determining the a duration of a switching process of the on-load tap-changer, or determining an arc burning duration during each switching process of the on- load tap-changer (see Schaar col.4, lns.50-59 discussing data acquisition and col.13, lns12-27, discussing the real-time functionality of data gathering and analysis).
Regarding Claim 3, Schaar and Goutard teach the method as claimed in claim 1, wherein the tap-changer-specific parameters comprise specific data of the at least one vacuum interrupter (see Schaar col.2, lns.38-58 and col.9, lns.5-38, in which data regarding the interrupter is collected for use with the parameter data set).
Regarding Claim 4, Schaar and Goutard teach the method as claimed in claim 1, wherein:
the at least one characteristic value comprises contact wear, a reduction of an insulation strength of the vacuum interrupter, or irregularities on a contact surface (see Schaar col.11, ln.63 – col.12, ln.16).
Regarding Claim 5, Schaar and Goutard teach the method as claimed in claim 1, wherein the method further comprises: the comparing the at least one characteristic value with a defined limit value and outputting a message in a case where the at least one characteristic value exceeds the defined limit value (see Schaar col.8, ln.41 – col.9, ln.4).
Regarding Claim 6, Schaar and Goutard teach the method as claimed in claim 1, wherein the method further comprises: determining the operating conditions present in the on-load tap-changer and the vacuum interrupter on the basis of the real-time data and the tap-changer-specific parameters (see Schaar col.2, lns.38-58 and col.9, lns.5-38, in which data regarding the interrupter is collected for use with the parameter data set).
Regarding Claim 7, Schaar and Goutard teach the method as claimed in claim 1, wherein: determining the at least one characteristic value takes place on the basis of model simulation, machine learning methods, interpolation methods, or historical data (see Schaar col.9, lns.5-60).
Regarding Claim 8, Schaar and Goutard teach a device for the state analysis of the on-load tap-changer, the on-load tap-changer comprising the at least one vacuum interrupter for switching between winding taps of a transformer (see Schaar background info for the tap changer discussed in col.1, ln.63 - col.2, ln.9), the device comprising:
an evaluator (see Schaar figure 8 and col.12, ln.17 – col.13, ln.28); and
a data memory (see Schaar figure 8 and col.12, ln.17 – col.13, ln.28),
wherein: the real-time data with respect to the on-load tap-changer and the tap-changer specific parameters are stored in the data memory (see Schaar col.4, lns.50-59 discussing data acquisition and col.13, lns12-27, discussing the real-time functionality of data gathering and analysis), and
the evaluator is communicatively connected to the data memory or to a superordinate control system (see Schaar figure 8 and col.12, ln.17 – col.13, ln.28), and is configured to carry out the method as claimed in claim 1 (refer to Claim 1 above).
Regarding Claim 9, Schaar and Goutard teach the device as claimed in Claim 8: The device as claimed in furthermore comprising an output configured for outputting index of the on-load tap-changer (see Schaar Claim 3).
Regarding Claim 10, Schaar and Goutard teach the device as claimed in claim 8, wherein the on-load tap-changer and the transformer have sensors suitable for capturing the real-time data (see Schaar figure 8 and col.12, ln.17 – col.13, ln.28).
Allowable Subject Matter
Claims 11-16 are allowed. The following is an examiner’s statement of reasons for allowance:
RE Claim 11, the prior art of record does not disclose or suggest “ascertaining the state index based on the at least one characteristic value, the state index comprises a period of time until maintenance is due, a remaining service life, or a remaining number of switching processes of the on-load tap-changer; and controlling further operation of the on-load tap-changer based on the period of time until maintenance is due, the remaining service life, or the remaining number of switching processes of the on-load tap-changer,” in combination with the other claim limitations. Claims 12-15 depend from base Claim 11, and therefore these claims are also allowed.
RE Claim 16, the prior art of record does not disclose or suggest “ascertain the state index based on the at least one characteristic value, the state index comprises a period of time until maintenance is due, a remaining service life, or a remaining number of switching processes of the on-load tap-changer,” in combination with the other claim limitations.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 07/03/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claims 1-10 under 35 USC 101, Applicant Argues: “It is respectfully submitted that the Office has not met its burden of establishing that the claims are directed to an abstract idea or that the claims do not recite significantly more. In any case, it is respectfully submitted that claims 1-10 are not directed to an abstract idea, have a practical application and contain a number of particular limitations which ensure that no underlying idea would be tied up. Additionally, it is respectfully submitted that claims 1- 10 recite features, which alone and in combination, provide improvements to the operation of an on-load tap changer. Furthermore, the claims of the present application provide solutions necessarily rooted in the technology of on-load tap changers to overcome particular problems specifically arising in the realm of on-load tap changers.
Applying the Office's guidance on subject matter eligibility, it is respectfully submitted that claims 1-10 are not directed to an abstract idea under Prong One of Step 2A of the Subject Matter Eligibility Test set forth in MPEP § 2106. Specifically, claims 1-10 are not directed to a mathematical concept, a certain method of organizing human activity, or a mental process. Rather, claims 1-10 are inextricably tied to the operation of an on-load tap- changer, a physical device that interacts in the physical world to control the operation of another device, a transformer. The nexus to the improved device can be seen at least with the method step of "capturing real-time data with respect to the on-load tap-changer" which is a requirement of the claimed inventive solution that directly ties the method steps to the physical device. Moreover, the ultimate result of claim 1, the state index, unambiguously reaches back to this practically applied claimed feature because it is determined based on that data capture. Indeed the unconventional combination of features of the claim as a whole are taught in the present application as providing significant advancements over the prior art in the field of on-load tap-changers because the claimed invention enables more reliable operation of the on-load tap changer due to enabling operation on the actual loading experienced by the on-load tap changer, rather than sanitized "experiments." See Published Application (US 2025/0237700 A1), at paragraphs [0006] and [0012]. This provides for a more accurate operation of the on-load tap-changer, particularly to avoid critical states, which could impact the safe and reliable operation of the on-load tap-changer, and hence the utility grid. See Published Application, at paragraphs [0006], [0012], and [0019]. Moreover, regardless of whether claims 1-10 are viewed as reciting an exception under Prong One of Step 2A of the Subject Matter Eligibility Test, it is respectfully submitted that clams 1-10 provide a practical application under Prong Two of Step 2A of the Subject Matter Eligibility Test. As set forth in the Office's guidance, an element or combination of elements which reflect a technical improvement (e.g., to a computer or other technology) provide that a claim is directed to a practical application. In this regard, claims 1-10 recite a combination of unconventional features that improve the operation of an on-load tap-changer. As discussed in the present application, these features provide for more accurate and reliable operation of the on-load tap-changer. See, e.g., Published Application, at paragraphs [0006], [0012], and [0019]. It is also respectfully submitted that the combination of features of claim 1 providing the above-described technical improvements, would also provide an inventive concept under Step 2B of the Subject Matter Eligibility Test, for example, because they are unconventional features as discussed below.”
Contrary to Applicant’s arguments, the crux of the claim determines characteristic values and state indices which are simply mathematical operations. These values are not used to adjust the on-load tap changer in the claim language as presented therefore no improvement has been made.
Claims 1-10 are also directed towards a method and not the on-load tap-changer itself, or components thereof. Respectfully, the claims are merely limited to the routine gathering of data and subsequent processing of said data with no integrated real-world practical application that occurs due to the gathered and processed data. For this reason, the rejection under 35 USC 101 is maintained.
Regarding the rejection of Claim 1 under 35 USC 103, Applicant Argues: “The Office Action asserts that Schaar discloses the claimed features of "capturing real- time data," "determining tap-changer-specific parameters," and "determining at least one characteristic value for ascertaining a state index" in its passages recited in columns 4, 7, and 13. See Detailed Action, at page 8. However, these sections of Schaar (and indeed Schaar in general) are directed to sequencing actuations (opening/closing bypass switches and vacuum interrupter, moving the tap selector, waiting predetermined times or gating steps on signals/measurements) to perform a tap change operation. That control objective is fundamentally distinct from the claimed invention, which is directed to state analysis and condition assessment of an on-load tap-changer based on captured real-time data and tap- changer specific parameters, which resulting in ascertaining a state index. Data acquisition for controlling a tap change sequence (or determining whether an actuator step has completed) is not the same as capturing real-time data "with respect to the on-load tap-changer" for the purpose of determining characteristic values used to ascertain a state index. Schaar's "signals or measurements" function as control-step gating, not as inputs to a condition monitoring model yielding a state index.”
Contrary to Applicant’s arguments, the interpretation of the recitation: “capturing real-time data with respect to the on-load tap-changer; determining tap-changer-specific parameters; and determining at least one characteristic value for ascertaining a state index” taken by Applicant, is narrower than the broadest reasonable interpretation of the aforementioned limitation. The claims as presently written do not limit the term “state index” to be narrower than the OLTC parameters of Schaar. In particular, Schaar (col.7, lns.22-64 and col.12, ln.59-col.13, ln.11) clearly teaches gathering position data, which depends on a range of factors, which broadly determines a real-time state index, as these value are calculated using a real-time clock (seen in figure 8 and discussed in col.12, ln.59-col.13, ln.11), thus meeting the broadest reasonable interpretation of the aforementioned limitation. Moreover, Goutard is merely used to show that it would have been obvious to one of ordinary skill, to have triggered a maintenance alert based on any relevant threshold being reached. Applicant’s standard for how Goutard must be implemented is beyond what is required of a secondary reference in combining two references to meet, and demonstrate obviousness, of all limitations, as Schaar already teaches that a state index values are determined from the received data.
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 MICHAEL A HARRISON whose telephone number is (571)272-3573. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHANIE BLOSS can be reached at (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A HARRISON/Examiner, Art Unit 2852
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852
