DETAILED CORRESPONDENCE
Continuation Application
This application is a continuation application (“CON”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application(s) is/are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application(s) need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution history of the Parent Application(s) is/are relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Priority Status
Domestic Benefit/National Stage under 35 U.S.C. 119 (e), 120, 121, 365(c), or 386(c) or indicate National Stage entry from a PCT application per Application Data Sheet is acknowledged by The Examiner.
Status of Claims
Claim(s) 1-20 is/are examined in this office 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 .
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.
Judicial Exception 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. (See MPEP § 2106.)
STEP 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Yes for Claim(s) 1-20.
STEP 2A PRONG ONE asks does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes, because Claim(s) 1 recite(s) the following limitation(s):
“determine a degradation level for each FRU of the plurality of FRUs based on the computer-based simulation and operating data of each FRU of the plurality of FRUs” – (In this step, the “determine” is interpreted as calculating and “degradation level” is interpreted as a numeric value. This/These step(s) is/are considered a Mathematical Concept which “is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations” furthermore, “[I]t is important to note that a mathematical concept need not be expressed in mathematical symbols”. See MPEP § 2106.04 (a)(2) I.); and
“identify, from the plurality of FRUs, an FRU corresponding to a failure in the vehicle system based on the degradation level for the FRU” – (In this step, the “identify” is interpreted as evaluating and “degradation level” is interpreted as a numeric value. This/These step(s) is/are considered at least one of observations, evaluations, judgments, and opinions performed in the human mind, or by a human using a pen and paper and therefore a Mental Process. See MPEP § 2106.04 (a)(2) III.)
Claims 9 and 16 repeat the subject matter of Claim 1 and analyzed in like manner.
STEP 2A PRONG TWO asks does the claim recite additional elements that integrate the judicial exception into a practical application?
No, Claim(s) 1 recite(s) the following limitation(s):
“generate, for each FRU of the plurality of FRUs of the vehicle system, a computer-based simulation” – (This/These step(s) is/are considered Selecting a particular data source or type of data to be manipulated. See MPEP § 2106.05(g) Insignificant Extra-Solution Activity.); and
“provide an electronic notification identifying the failure in the vehicle system as corresponding to the FRU” – (In this step, “provide” is interpreted as transmit and “electronic notification” is interpreted as data. This/These step(s) is/are considered Receiving or transmitting data over a network. See MPEP § 2106.05(d) Well-Understood, Routine, Conventional Activity.)
The above limitations are recited at a high level of generality, i.e., as generic computer functions of collecting and/or processing data. These generic limitations are no more than mere instructions to apply the exception using generic computer components (e.g., “at least one processing circuit comprising at least one processor coupled with memory, the at least one processing circuit configured to” from Claim 16). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As a result, Claim(s) 1, 9 and 16 is/are directed to the abstract idea.
Additionally, The Examiner refers to The Berkheimer Memorandum1 for submitting more evidence into the prosecution regarding what subject matter is/are well known in the technology. The Berkheimer Memorandum specifies The Examiner shall show one or more of the follow items:
“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).” See Section III (A) (1).
“A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (2).
“A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (3).
“A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).” See Section III (A) (4).
In this particular case, The Examiner provides “A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)” as required by Section III:
“It is well known in the art to provide a vehicle display screen located within the vehicle.” (US 20130224721 A1)
“Client-Server and network communication is well-known in the art of computers and networking.” (US 20050021745 A1, [0052])
“The electronic control unit 23 comprises a microprocessor including a central processing unit (CPU), a random access memory (RAM), a read-only memory (ROM), an A/D converter, and an input/output interface, all not shown, but well-known in the art.” (US 4741163)
“As is well-known in the art, software is stored on a computer-readable storage medium (including compact disc, computer diskette, and computer memory, etc.) with code, or instructions, which, when read and executed by a computer, causes the computer to perform a process or task.” (US 20120226548 A1, [0020])
“Conventionally, an in-vehicle microphone device mounted on a vehicle interior, for example, a vehicle interior ceiling, is widely known.” (JP 2016105557 A)
Claims 9 and 16 repeat the subject matter of Claim 1 and analyzed in like manner.
STEP 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No for Claim(s) 1, 9 and 16. As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, Claim(s) 1, 9 and 16 is/are ineligible.
Dependent Claim(s) 2-8, 10-15 and 17-20 are also ineligible because they do not include additional elements that are sufficient to amount to significantly more than the judicial exception. (In regards to a “rank” step, MPEP 2106.05(d) II expressed “sorting information” is a Well-Understood, Routine, Conventional Activity.)
In summary, Claim(s) 1-20 is/are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-12 and 14-19 is/are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 20190266295 A1 (“Masuda”).
As to Claim 1, Masuda discloses A system (see at least [0007], [0010], Fig. 1A with associated text) comprising:
one or more (Only one option is required to satisfy a “one or more” limitation.) processors coupled with memory in communication with a vehicle system comprising a plurality of field-replaceable units (FRUs) (e.g., “one or more components of the vehicle” from [0024]) (see at least [0007], [0010], [0024], Fig. 1A with associated text), the one or more processors configured to:
generate, for each FRU of the plurality of FRUs of the vehicle system, a computer-based simulation (see at least [0024]-[0025], [0047]-[0050]);
determine a degradation level (e.g., “one or more thresholds”) for each FRU of the plurality of FRUs based on the computer-based simulation and operating data (e.g., “digital data that describes…the service life”) of each FRU of the plurality of FRUs (see at least [0004], [0024]-[0025], [0099]. Masuda discloses “the scheduler system applies one or more thresholds when estimating whether one or more components of the vehicle will fail based on the simulations executed by the scheduling service” and “the vehicle model also includes digital data that describes each of the components of the vehicle and the service life for each of these components”.);
identify, from the plurality of FRUs, an FRU corresponding to a failure in the vehicle system based on the degradation level for the FRU (see at least [0024]-[0025]. Masuda discloses “estimating, based on the simulations, one or more components of the vehicle that will fail at an interval that satisfies a threshold; and proactively scheduling a maintenance event to repair or replace the one or more components before the interval satisfies the threshold in the real-world so that a breakdown event does not occur in the real-world based on a failure of the one or more components”.); and
provide an electronic notification identifying the failure in the vehicle system as corresponding to the FRU (see at least [0041], [0050]-[0051], [0113], [0115], Fig. 3A-3E with associated text).
As to Claim 2, Masuda discloses wherein the one or more processors are further configured to (see at least [0007], [0010], [0024], Fig. 1A with associated text):
receive, from the vehicle system, the operating data comprising information from at least one of (Only one option is required to satisfy an “at least one of” limitation.) a sensor or (Additionally, only one option is required to satisfy an “or” limitation.) an actuator within the vehicle system (see at least [0068], [0077]-[0092]; in particular, [0078]); and
identify, using the operating data, the plurality of FRUs in the vehicle system, each of the plurality of FRUs corresponding to one or more components within the vehicle system (see at least [0024]-[0025], [0077]-[0115]; in particular, [0102] because it discloses updating the vehicle model data by incorporating real-world data for a particular VIN and this step is repeated in a loop according to [0105]. Additionally, VINs are specific to a particular vehicle.).
As to Claim 3, Masuda discloses wherein the one or more processors are further configured to (see at least [0007], [0010], [0024], Fig. 1A with associated text):
determine a plurality of degradation levels for a corresponding plurality of fault scenarios (e.g., “maintenance events”) for each FRU of the plurality of FRUs based on the computer-based simulation and operating data (see at least [0024]-[0025], [0041], [0077]-[0115]. Masuda discloses “Example maintenance events include one or more of the following: change engine oil; change/check engine coolant; change/check braking system (brake fluid, brake pads, rotors, etc.); change/check power steering fluid; change air filter; change fuel filter, change cabin air filter; check engine belts; change/rotate tires; tire alignment; balance tires; check battery fluid and clean contacts; and check/change spark plugs, spark plug wires, distributor cap, etc”.); and
identify, from the plurality of FRUs, the FRU corresponding to the failure in the vehicle system based on the degradation level of the plurality of degradation levels for an associated fault scenario of the corresponding plurality of fault scenarios (see at least [0024]-[0025], [0034], [0041], [0077]-[0115]).
As to Claim 4, Masuda discloses wherein the one or more processors are further configured to (see at least [0007], [0010], [0024], Fig. 1A with associated text):
execute the computer-based simulation to generate output data for each FRU of the plurality of FRUs of the vehicle system (see at least [0024]-[0025], [0044], [0047]-[0050], [0077]-[0115]); and
determine the degradation level for each FRU of the plurality of FRUs based on a comparison between the output data from the computer-based simulation and an expected output of the operating data (see at least [0024]-[0025], [0044], [0047]-[0050], [0077]-[0115]).
As to Claim 5, Masuda discloses wherein the one or more processors are further configured to (see at least [0007], [0010], [0024], Fig. 1A with associated text):
identify the operating data for a first FRU of the plurality of FRUs (see at least [0024]-[0025], [0044], [0047]-[0050], [0077]-[0115]); and
generate the computer-based simulation for a second FRU of the plurality of FRUs, using the operating data for the first FRU (see at least [0024]-[0025], [0044], [0047]-[0050], [0077]-[0115]).
As to Claim 7 wherein the one or more processors are further configured to generate the electronic notification to include at least one of (Only one option is required to satisfy an “at least one of” limitation.) a plurality of codes for a corresponding plurality of potential failures in the vehicle system (see at least [0007], [0010], [0024], [0041], [0050]-[0051], [0113], [0141], Fig. 1A with associated text. Masuda discloses “the scheduler system includes code and routines that are operable to proactively schedule maintenance appointments for the real-world vehicle”.).
As to Claim 8, wherein the one or more processors are further configured to generate the electronic notification to indicate at least one of (Only one option is required to satisfy an “at least one of” limitation.) a plurality of service recommendations comprising a full component replacement, a partial component replacement, or (Additionally, only one option is required to satisfy an “or” limitation.) a repair of components associated with the FRU (see at least [0007], [0010], [0024], [0041], [0050]-[0051], [0113], [0141], Fig. 1A with associated text. Masuda discloses “proactively scheduling a maintenance event to repair or replace the one or more components”).
Claim 9 repeats the subject matter of Claim 1 and rejected in like manner.
Claim 10 repeats the subject matter of Claim 2 and rejected in like manner.
Claim 11 repeats the subject matter of Claim 3 and rejected in like manner.
Claim 12 repeats the subject matter of Claim 4 and rejected in like manner.
Claim 14 repeats the subject matter of Claim 7 and rejected in like manner.
Claim 15 repeats the subject matter of Claim 8 and rejected in like manner.
Claim 16 repeats the subject matter of Claim 1 and rejected in like manner.
Claim 17 repeats the subject matter of Claim 2 and rejected in like manner.
Claim 18 repeats the subject matter of Claim 3 and rejected in like manner.
Claim 19 repeats the subject matter of Claim 4 and rejected in like manner.
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 of this title, 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) 6, 13 and 20 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Masuda and further in view of US 20190146446 A1 (“Abernathy”).
As to Claim 6, Masuda discloses wherein the one or more processors are further configured to (see at least [0007], [0010], [0024], Fig. 1A with associated text):
determine the plurality of FRUs based on the degradation level for each FRU of the plurality of FRUs (see at least [0024]-[0025], [0041], [0077]-[0115]);
identify, from the plurality of FRUs, a subset of FRUs as potential failures in the vehicle system (see at least [0024]-[0025], [0041], [0077]-[0115], [0188]); and
provide the electronic notification identifying the subset of FRUs as the potential failures in the vehicle system (see at least [0041], [0050]-[0051], [0113], [0141]).
Masuda does not directly disclose rank base on a degradation level.
However, Abernathy teaches rank base on a degradation level (e.g., “asset health qualifier”)(see at least Abstract, [0041], [0088], [0102], [0105], [0123]). It would have been obvious to one of ordinary skill in the art BEFORE the effective filing date of the claimed invention to modify Masuda’s invention by incorporating an asset workscope generation system as taught by Abernathy in order to calculate a cost based on a quantity of maintenance personnel and corresponding man-hours to perform a maintenance task, a quantity of components (e.g., a quantity of replacement parts, spare parts, shop-supplied parts, etc., and/or a combination thereof) to perform the maintenance task, a monetary cost for each of the components, etc. (see [0034])
Claims 13 and 20 repeat the subject matter of Claim 6 and rejected in like manner.
Nonstatutory Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1-20 of US Pat# 12131595. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the same invention.
Written Authorization Required for Internet Communication
MPEP § 502.03 II, “Without a written authorization by applicant in place, the USPTO will not respond via email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application by the examiner. Except for correspondence that only sets up an interview time, all correspondence between the Office and the applicant including applicant's representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview, such as an interview agenda, it must be placed in the application. The written authorization may be submitted via the USPTO patent electronic filing system, mail, or fax. It cannot be submitted by email.”
Contact Information
Primary Examiner Calvin Cheung’s contact information is listed at the bottom, and he is best reached MONDAY-THURSDAY, 0700-1700 ET. If attempts to reach the primary by telephone are unsuccessful, the primary’s supervisor, ERIN PIATESKI, is available at telephone number (571) 270-7429.
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/CALVIN CHEUNG/
Direct Office Number (571) 270-7041
Email and Fax send to Calvin.Cheung@USPTO.GOV
1 See https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF