DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to Applicant’s arguments and amendments filed on 01/06/2026 amending Claims 1, 6 – 10, and 13, adding new Claim 16, and canceling Claims 12, 14, and 15. Claims 1 – 11 and 13 are examined.
Election/Restrictions
Newly submitted independent Claim 16 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions Group I (Claims 1 - 8) and Group III (new independent Claim 16) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not recite “digital model is an individualized digital model specific to the specific engine” as recited in newly submitted independent Claim 16. The subcombination has separate utility such as an individualized digital model specific to the specific engine that is not an aircraft engine.
Inventions Group II (Claims 9 – 11 and 13) and Group III (new independent Claim 16) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not recite “digital model is an individualized digital model specific to the specific engine” as recited in newly submitted independent Claim 16. The subcombination has separate utility such as an individualized digital model specific to the specific engine that is not an aircraft engine.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claim 16 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Independent Claims 1 and 9 and dependent Claims 2 – 8, 10, 11, and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended independent Claim 1, ll. 7 - 9 recites “simulating the performance parameter using a performance digital model in the form of a partial virtual representation of the aircraft engine, including continuously updating the simulated performance parameter using real-time data”. Amended independent Claim 9, ll. 5 - 10 recites “a controller including a processor and a non-transitory machine-readable memory operatively connected to the processor, and storing: first specifications for the vibration parameter, the first specifications being indicative of a foreign object damage (FOD) event; a performance digital model representing an expected behavior of a performance parameter in varying conditions of operation:”. Therefore, Claims 1 and 9 are interpreted as claims with computer-implemented functional claim limitations. MPEP2161.01(I), seventh paragraph stated “Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).” As discussed below, the original disclosure failed to provide a disclosure of the computer/controller, i.e., generic processor and non-transitory machine-readable memory, and algorithm, i.e., software in particular the “performance digital model”, in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the computer-implemented invention.
The original Specification Para. [0034] disclosed “An example controller 20 is presented in greater detail in Fig. 2. The controller 20 can include one or more computers and be operable to perform functions. The functions may be performed in an individual manner by a single computer, or in a collaborative manner between more than one computer or processor. The functions can be enabled by hardware, or by a combination of hardware and software. The hardware, or combination of hardware and software associated to individual functions will be referred to as modules in this specification for ease of reference.” The original Specification Para. [0058] disclosed “The computer(s) 400 comprises a processing unit 412 and a memory 414 which has stored therein computer-executable instructions 416. The processing unit 412 may comprise any suitable devices configured to implement a method such that instructions, when executed by the computer(s) or other programmable apparatus, may cause the functions/acts/steps performed to control the mode of operation of the engine to be executed. The processing unit may comprise, for example, any type of general-purpose microprocessor or microcontroller, a digital signal processing (DSP) processor, a central processing unit (CPU), an integrated circuit, a field programmable gate array (FPGA), a reconfigurable processor, other suitably programmed or programmable logic circuits, or any combination thereof.” The original Specification Para. [0054] disclosed “In this example, the digital engine model 242 includes three digital engine models, including a performance digital engine model, a vibration digital engine model, and a lidar digital engine model.”. The original Specification Para. [0055] disclosed “One or more digital engine models 242 can be used and analyzed 340 to determine variables affected by the suspected event (e.g., if an anomaly is detected in the lidar digital engine model, the performance digital engine model can be checked for confirmation of the anomaly)”. The original disclosure failed to provide a disclosure of the computer/controller, i.e., generic processor and non-transitory machine-readable memory, and algorithm, i.e., software in particular the “performance digital model”, in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the computer-implemented invention. The original Specification merely repeats the language of the claims without any additional details. For example, the original Specification merely discloses “performance digital engine model” while failing to describe anything about the software, i.e., algorithm, of said “performance digital engine model”. Figs. 1, 2, 5, and 7 are figure and/or block diagrams with a bunch of labeled boxes/modules where each box/module was essentially a “black box” where there are no descriptions of the specific hardware of box/module and no descriptions of the algorithm, i.e., calculations performed by software of each box/module. Fig. 5 just shows a rectangle (242) enclosing three rectangles labeled “performance digital engine model”, “vibration digital engine model”, and “Lidar digital engine model”. A pair of opposite direction arrows lines connects each of the three rectangles to the two other rectangles. Applicant’s original disclosure failed to disclose any details of the software and/or hardware inside the “performance digital engine model” rectangle or any of the other two rectangles. MPEP2161.01(I), third paragraph stated “Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997) ("The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus.") MPEP2161.01(I), sixth paragraph stated “Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” The computer-implemented functional limitations of Claims 1 – 11 and 13 simply claim a desired result and the algorithm or steps/procedure for performing the computer functions are not explained at all or are not explained in sufficient detail because the Specification simply restates the functions recited in the claims. MPEP2161.01(I), eight paragraph stated “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” For all the reasons discussed above, the original disclosure failed to provide a description of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the claimed invention. By failing to provide a description of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the claimed invention Applicant is trying to claim any and all means for achieving the claimed invention. Claims 2 - 8 depend from Claim 1 and are rejected for the same reasons. Claims 10, 11, and 13 depends from Claim 9 and is rejected for the same reasons.
Claims 1 – 11 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Amended independent Claim 1, ll. 7 - 9 recites “simulating the performance parameter using a performance digital model in the form of a partial virtual representation of the aircraft engine, including continuously updating the simulated performance parameter using real-time data”. Amended independent Claim 9, ll. 5 - 10 recites “a controller including a processor and a non-transitory machine-readable memory operatively connected to the processor, and storing: first specifications for the vibration parameter, the first specifications being indicative of a foreign object damage (FOD) event; a performance digital model representing an expected behavior of a performance parameter in varying conditions of operation:”. Therefore, Claims 1 and 9 are interpreted as claims with computer-implemented functional claim limitations. MPEP2164.06(c), third paragraph stated “In a typical computer application, system components are often represented in a "block diagram" format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines. Such block diagram computer cases may be categorized into (A) systems that include but are more comprehensive than a computer and (B) systems wherein the block elements are totally within the confines of a computer.”. Figs. 1, 2, 5, and 7 are figure and/or block diagrams with a bunch of labeled boxes/modules where each box/module was essentially a “black box” where there are no descriptions of the specific hardware of box/module and no descriptions of the algorithm, i.e., calculations performed by software of each box/module. Fig. 5 just shows a rectangle (242) enclosing three rectangles labeled “performance digital engine model”, “vibration digital engine model”, and “Lidar digital engine model”. A pair of opposite direction arrows lines connects each of the three rectangles to the two other rectangles. Applicant’s original disclosure failed to disclose any details of the software and/or hardware inside the “performance digital engine model” rectangle or any of the other two rectangles. Fig. 5 shows computer/controller (220) receiving data from sensors (222) located on physical engine (210). The sensors (222) data goes to a database (240) and a processor (244) contained inside the computer/controller (220). Said computer/controller (220) also contains the digital engine model (242) which contains the “performance digital engine model”, “vibration digital engine model”, and “Lidar digital engine model”. Consequently, Applicant’s figures are categorized as “(A) systems that include but are more comprehensive than a computer”. In other words, Applicant’s claimed invention involves systems which include a computer/controller as well as other system hardware and/or software components.
When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims (Claim 1) a method of monitoring operation of an aircraft engine in an aircraft and (Claim 9) an aircraft engine .; (B) the nature of the invention – For the reasons discussed above the claims are interpreted as MPEP 2164.06(c)(I) Block Elements More Comprehensive than a Computer, i.e., a system which includes a computer as well as other system hardware and/or software components; (C) The state of the prior art – As discussed in the Office Action mailed on 09/10/2026 Beecroft taught the limitations of original Claims 1 and 9. Beecroft does not teach the details of Applicant’s amended Claims 1 and 9. In particular, Beecroft does not teach the claimed “performance digital model” or the disclosed “performance digital engine model”. The claimed “performance digital model” or the disclosed “performance digital engine model” does not appear to be a ‘term of art’ in the gas turbine art.; (D) The level of one of ordinary skill - MPEP 2164.06(c), second paragraph stated “In computer applications, it is not unusual for the claimed invention to involve two areas of prior art or more than one technology, e.g., an appropriately programmed computer and an area of application of said computer. White Consol. Indus. v. Vega Servo-Control, Inc., 214 USPQ 796, 821 (S.D.Mich. 1982). In regard to the "skilled in the art" standard, in cases involving both the art of computer programming, and another technology, the examiner must recognize that the knowledge of persons skilled in both technologies is the appropriate criteria for determining sufficiency. See In re Naquin, 398 F.2d 863, 158 USPQ 317 (CCPA 1968); In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); White Consol. Indus., 214 USPQ at 822, aff’d on related grounds, 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983). Therefore a person of ordinary skill in the art would be a computer systems engineer with at least a Masters degree in Computer Systems Engineering and at least 5 years of relevant work experience designing and implementing complex IT infrastructures by combining hardware, software, and networking components. Computer systems engineers design, integrate, and maintains complex IT infrastructures by combining hardware, software, and networking components. They analyze user needs to build stable, secure systems, often working on cloud infrastructure, servers, and embedded technologies. Computer systems engineers bridge the gap between low-level hardware design and high-level software applications like a digital engine model which contains a “performance digital engine model”, a “vibration digital engine model”, and a “Lidar digital engine model” which communicate with each other.; (E) the level of predictability in the art – low predictability per the sections of MPEP 2164.06(C)(I) and (C)(II) discussed below; (F) the amount of direction provided by the inventor – Applicant's disclosure does not teach how to make or use the invention because the Specification merely repeats the claim language without any additional details. The Specification failed to include any electronic circuit diagrams, programmed steps, algorithms (equations) or procedures that the computer processor performs to produce the claimed functions that required precisely coordinating with other complex assemblages. Figs. 1, 2, 5, and 7 are figure and/or block diagrams with a bunch of labeled boxes/modules where each box/module was essentially a “black box” where there are no descriptions of the specific hardware of box/module and no descriptions of the algorithm, i.e., calculations performed by software of each box/module. Fig. 5 just shows a rectangle (242) enclosing three rectangles labeled “performance digital engine model”, “vibration digital engine model”, and “Lidar digital engine model”. Therefore, it is impossible for Applicant’s original disclosure to show enablement of the full scope of the claimed subject matter at the time of filing. MPEP 2164.06(a)(I), second paragraph stated “A disclosure of an electrical circuit apparatus, depicted in the drawings by block diagrams with functional labels, was held to be nonenabling in In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976), where there was no indication in the specification as to whether the parts represented by boxes were "off the shelf" or must be specifically constructed or modified for applicant’s system. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant.” The Board in In re Gunn focused on the fact that the drawings were "block diagrams, i.e., a group of rectangles representing the elements of the system, functionally labeled and interconnected by lines." 442 F.2d at 991, 169 USPQ at 727. The specification did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. The Board further questioned whether the selection and assembly of the required components could be carried out routinely by persons of ordinary skill in the art. Similarly in this case, Applicant’s original disclosure did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. There was no indication in Applicant’s Specification as to whether the parts represented by the “black boxes” were "off the shelf" or must be specifically constructed or modified for applicant’s system (Para. [0054] disclosed “The digital engine model 242 can be a pre-built model of the physical engine 210 which contains information of conditions of the engine, geometry/features, and performance metrics of the engine model. The model can understand geometric details of the individual engine such as mild folds or small dents. The digital engine model 242 can use artificial intelligence (AI) and deep learning (DL) to be continuously updated with real-time data.”, i.e., specifically designed and constructed for Applicant’s invention and/or for specific individual gas turbine engines since no two gas turbine engines would have the exact same operational history or exact same physical feature like small dents.). Also there were no details in Applicant’s Specification of how the parts should be interconnected, timed and controlled so as to obtain the full scope of the specific operations desired by Applicant’s claimed invention. Therefore, similar to In re Gunn, Applicant’s disclosure has failed to apprise one of ordinary skill how to make and use the full scope of the claimed invention. MPEP 2164.06(a)(I), second paragraph stated “In In re Donohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labeled "LOGIC" in the drawings. See also Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to "compare" or "rescale" data as recited in the claims in order to perform the claimed method.” As discussed above, Applicant’s original disclosure failed to sufficiently describe the details of “performance digital engine model” and/or “performance digital model” other than reciting their names. Without knowing any details about the claimed “performance digital model” it would be impossible for one of ordinary skill in the art to know specific output results of the “performance digital model” when specific input data is input to said “performance digital model”. Consequently, the computer programming details of the “performance digital engine model” and/or “performance digital model”, i.e., algorithms, that Applicant used to perform the claimed computer-implemented functional limitations were not disclosed in Applicant’s Specification since the Specification only repeated the claim limitations which recited the results achieved by the invention. Therefore, similar to In re Donohue and Union Pac. Res. Co. v. Chesapeake Energy Corp, Applicant’s disclosure has failed to apprise one of ordinary skill how to make and use the full scope of the claimed invention. MPEP 2164.06(a)(I), fourth paragraph stated “An adequate disclosure of a device may require details of how complex components are constructed and perform the desired function. The claim before the court in In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974), was directed to a system which comprised several component parts (e.g., computer, timing and control mechanism, A/D converter, etc.) only by generic name and overall ultimate function. The court concluded that there was not an enabling disclosure because the specification did not describe how "complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation" and that "an unreasonable amount of work would be required to arrive at the detailed relationships appellant says that he has solved." 500 F.2d at 566, 182 USPQ at 302”. As discussed above, Applicant’s invention comprised several component parts (e.g., computer/controller/processor and memory, sensors, database, digital engine models containing a performance digital engine model, a vibration digital engine model, and a Lidar digital engine model) only by generic name and overall ultimate function. Applicant’s disclosure did not describe how "complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation". Applicant’s disclosure failed to describe Applicant’s software algorithms that performed all the claimed functional limitations in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the original disclosure FAILED TO ENABLE the full scope of the claimed invention at the time of filing. MPEP 2164.06(c)(I), second paragraph stated “…where the specification provides in a block diagram disclosure of a complex system that includes a microprocessor and other system components controlled by the microprocessor, a mere reference to a commercially available microprocessor, without any description of the precise operations to be performed by the microprocessor, fails to disclose how such a microprocessor would be properly programmed to (1) either perform any required calculations or (2) coordinate the other system components in the proper timed sequence to perform the functions disclosed and claimed. If a particular program is disclosed in such a system, the program should be carefully reviewed to ensure that its scope is commensurate with the scope of the functions attributed to such a program in the claims. In re Brown, 477 F.2d at 951, 177 USPQ at 695. If (1) the disclosure fails to disclose any program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program, the examiner clearly would have a reasonable basis for challenging the sufficiency of such a disclosure.”. Since Applicant failed to sufficiently disclose details of the hardware components and failed to sufficiently disclose details of Applicant’s algorithm, i.e., software that performed the calculations and coordinated the timing and control of all the hardware components, Applicant’s disclosure failed to enable the full scope of the claimed invention which encompasses all known and unknown ways of performing the claimed computer-implemented functions.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function", In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974), MPEP 2164.06(a)(I)]. Even if a potential infringer could, with undue experimentation, design a complex computer/controller system and write a program with the disclosed or claimed “performance digital engine model” or “performance digital model” to run on said complex computer/controller system to perform the claimed computer-implemented functions of Claims 1 and 9, it would be impossible to tell if the potential infringer’s IT system and program would avoid infringing on Applicant’s claimed invention, i.e., the computer hardware, the computer software, or the combination of computer hardware and computer software, because Applicant’s disclosure failed to disclose any details of how the computer-implemented functions of Claims 1 and 9 are performed by Applicant. Claims 2 - 8 depend from Claim 1 and are rejected for the same reasons. Claims 10, 11, and 13 depends from Claim 9 and is rejected for the same reasons.
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 – 11 and 13 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “continuously” in Claims 1 and 9 is a relative term which renders the claim indefinite. The term “continuously” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The limitation “continuously updating the simulated performance parameter using real-time data” of Claim 1 is rendered indefinite due to the relative term “continuously”. The limitation “continuously simulate the performance parameter using the performance digital model and the real-time data” of Claim 9 is rendered indefinite due to the relative term “continuously”. Does “continuously updating” and/or “continuously simulate” mean once every nanosecond? Does “continuously updating” and/or “continuously simulate” mean once every millisecond? Does “continuously updating” and/or “continuously simulate” mean once every second? Does “continuously updating” and/or “continuously simulate” mean once every minute? Does “continuously updating” and/or “continuously simulate” mean once every five minutes, once every fifteen minutes, once every thirty minutes, or once every forty-five minutes? Does “continuously updating” and/or “continuously simulate” mean once every hour? Does “continuously updating” and/or “continuously simulate” mean once every two hour? Does “continuously updating” and/or “continuously simulate” mean once every day? Claims 2 - 8 depend from Claim 1 and are rejected for the same reasons. Claims 10, 11, and 13 depends from Claim 9 and is rejected for the same reasons.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Response to Arguments
Applicant’s arguments filed 01/06/2026 with respect to Claims 1 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
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/LORNE E MEADE/Primary Examiner, Art Unit 3741
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