DETAILED CORRESPONDENCE
Response to Arguments
§ 112(B) or (pre-AIA ) Second Paragraph: This rejection is withdrawn.
§ 112(d) or (pre-AIA ) Fourth Paragraph: This rejection is withdrawn.
§ 101 Rejections:
With respect Claim 8 for failing Step 1, this claim is directed to a physical product based on the preamble (i.e., “A system …”); however, the components recited in the claim body (after the preamble) are only software; in other words, software per se. According to MPEP 2106.03, “a computer program per se (often referred to as ‘software per se’) when claimed as a product without any structural recitations”. Claim 8 continues to fail Step 1; therefore, the rejection is maintained. The Examiner wishes to assist Applicant by suggesting that after said Preamble’s “comprising:” recite two physical components which will act as structure such as “at least one CPU” and “a non-transitory, computer-readable memory comprising:” and then recite the current claim language to overcome this § 101 Step 1 rejection.
With respect to the remaining claims, Claim(s) 1, 4-5, 7-8 and 10, regarding judicial exception, Applicant’s remarks are persuasive thus this rejection is withdrawn.
Status of Claims
Claim(s) 1, 4-5, 7-8 and 10 is/are examined in this office action.
Notice of 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.
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 Analysis will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
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;
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
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Non-structural generic placeholders that may invoke § 112(f) or (pre-AIA 35 U.S.C. 112, sixth paragraph) are “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for”.1, 2
Structural placeholders that do not invoke § 112(f) or (pre-AIA 35 U.S.C. 112, sixth paragraph) are “circuit for,” “detent mechanism,” “digital detector for,” “reciprocating member,” “connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.”3, 4
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:
“a vehicle data collection unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.);
“a vehicle fault preliminary diagnosis unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.);
“a vehicle fault digital twin diagnosis unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.); and
“a visual presentation unit configured to” (see Claim 8. The Examiner takes the position “configured to” is an alternative linking phrase to “for”; therefore, the recited claim language “unit configured to” is considered equivalent to said non-structural generic placeholder “unit for”.).
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.
THIS SECTION IS NOT A REJECTION! The Examiner expresses that this particular section of the office action identifies and clarifies how the means-plus-function limitation(s) listed above are interpreted during examination and further acts as a formal statement on claim interpretation that is recorded into the prosecution history. 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.
Nonstatutory Subject Matter 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) 8 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
Claim(s) 8 fail(s) Step 1 of the Subject Matter Eligibility (“SME”) Test and therefore directed to non-statutory subject matter and immediately rejected. A product claims (i.e., “A system”) requires some hardware or physical characteristic/features in the claim. Claim(s) 8 reads as computer program per se because it lacks hardware or physical characteristics/features in said claim; however, Claim 8 recites only programmed functions like software. MPEP § 2106.03 provides a particular example “Products that do not have a physical or tangible form, such as information (often referred to as ‘data per se’) or a computer program per se (often referred to as ‘software per se’) when claimed as a product without any structural recitations.”
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.
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.
Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice for scheduling an examiner interview that will be performed over telephone or video conferencing (using a USPTO supplied web-based collaboration tool).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CALVIN CHEUNG/
Direct Office Number (571) 270-7041
Email and Fax send to Calvin.Cheung@USPTO.GOV
1 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
2 MPEP § 2181 (I)(A), first paragraph
3 Federal Register /Vol. 76, No. 27 /Wednesday, February 9, 2011 /Notices located at http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf, center column, page 6 of 14.
4 MPEP § 2181 (I)(A), second paragraph
Prosecution Insights