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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 07, 2025 is being considered by the examiner.
Claim Objections
Claim 7 is objected to because of the following informalities: the use of “or/and” is informal and the broadest reasonable interpretation is “or” which has been applied here. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-7 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.
Claim 1 recites the limitations "a computer" in line 3, “a first computer” in line 4, “a second computer” in line 5, and “a third computer” in line 6. The claim fails to particular point out and distinctly claim the whether the claim requires three or four computers. The first instance of “a computer” does is followed by three numbered computers and it is not apparent if one of these three computers is referring back to that first instance or whether there are actually four computers required by the claim. For the purposes of compact prosecution, the first instance of “a computer” in line 3 and the “a third computer” have been interpreted to be the same computer because both are “managed by the manufacturer.”
Claims 2-7 depend upon claim 1 and therefore inherit the above rejection of claim 1.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Alice/Mayo Framework Step 1:
Claims 1-7 recite a combination of devices and therefore recite a machine.
Claims 8 recite a series of steps and therefore recite a process.
Alice/Mayo Framework Step 2A – Prong 1:
Claims 1 and 8, as a whole, are directed to the abstract idea of receiving a replacement request from a maintenance company and a manufacturer matching the replacement request with the defect information before approving the request, which is a method of organizing human activity and a mental process. The claims recite a method of organizing human activity because the identified idea is a commercial or legal interaction (including business relations) by reciting processing a replacement request between a maintenance company and a manufacturer. See MPEP 2106.04(a)(2)(II)(B). The claims recite a mental process because the identified idea contains limitations that can practically be performed in the human mind (including an observation, evaluation, judgement, or opinion) by reciting observing operating defects, evaluating replacement requests, and judging whether or not to approve the request. See MPEP 2106.04(a)(2)(III). The method of organizing human activity and mental process of “receiving a replacement request from a maintenance company and a manufacturer matching the replacement request with the defect information before approving the request,” is recited by claiming the following limitations: receiving operating defect information for an object, storing operating information at a manufacturer, transmitting a replacement request, and approving a replacement. The mere nominal recitation of three computers, a processor, and a memory does not take the claim of the method of organizing human activity or mental process grouping. Thus, the claim recites an abstract idea.
With regards to Claims 2-5, the claims further recite the above-identified judicial exception (the abstract idea) by reciting the following limitations: reading past defect information including the same defect, withholding a response when the replacement request does not match past recovery measures, determining whether recovery measures are valid, approving recovery measures that are similar to past requests, and prompting a manufacture to check whether recovery measures are appropriate and approved.
Alice/Mayo Framework Step 2A – Prong 2:
Claims 1 and 8 recite the additional elements: three computers, a processor, and a memory. These three computer, processor, and memory limitations are no more than mere instructions to apply the exception using a generic computer component. Claim 4-6 recites the limitations a mobile terminal, a camera, and a display device are no more than mere instructions to apply the exception using a generic computer component. Claim 4-6 recites a two-dimensional barcode which is recited at a high level of generality (i.e., as a type of identifier data), and amounts to selecting a particular data source or type of data to be manipulated, which is a form of insignificant extra-solution activity. Claim 7 recites an automated teller machine which limits the field of use by generally linking the identified abstract idea to the ATM maintenance field. Taken individually 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.
Considering the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception does not amount to a practical application of the abstract idea. The claim as a whole does not improve the functioning of a computer or improve other technology or improve a technical field. The claim as a whole is not implemented with a particular machine. The claim as a whole does not effect a transformation of a particular article to a different state. The claim as a whole is not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The claim as a whole merely describes how to generally “apply” the concept of requesting replacement parts in a computer environment. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing maintenance process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim is directed to the abstract idea.
Alice/Mayo Framework Step 2B:
Claims 1 and 8 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims recite a generic computer performing generic computer function by reciting three computers, a processor, and a memory. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (describing a “processor” as a generic computer component); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (discussing the same with respect to “data” and “memory”). The claims recite the following computer functions recognized by the courts as generic computer functions by reciting receiving and transmitting information (See MPEP 2106.05(d)(II) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec; TLI Communications LLC; OIP Techs.; buySAFE, Inc.), processing information (See MPEP 2106.05(d)(II) performing repetitive calculations, Flook; Bancorp Services), presenting information (See MPEP 2106.05(d)(II), MPEP 2106.05(g) presenting offers gathering statistics, OIP Technologies), and storing information (See MPEP 2106.05(d)(II) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc.; OIP Technologies). The specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): three computers (Specification [0016], [0029]), a processor (Specification [0015], [0029]), and a memory (Specification [0016], [0029]). See MPEP 2106.05(d)(I)(2). The claims add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting three computers, a processor, and a memory. See MPEP 2106.05(f). The claims limit the field of use by reciting maintenance companies and manufactures. See MPEP 2106.05(h). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements alone, and in combination, that are sufficient to amount to significantly more than the recited judicial exception.
With regards to Claims 4-7, the additional elements do not amount to significantly more than the judicial exception. Regarding claims 4-7, the specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): a mobile terminal (Specification [0028]), a camera (Specification [0028]), a two-dimensional barcode (Specification [0025]), a display device (Specification [0025]), and an automated teller machine (Specification [0022], [0023]). See MPEP 2106.05(d)(I)(2). Claims 4-6 add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting a mobile terminal, a camera, and a display device. See MPEP 2106.05(f). Claims 6 recite insignificant extrasolution activity (i.e. selecting a particular data source or type of data to be manipulated) by reciting a two-dimensional barcode. See MPEP 2106.05(g). Claims 7 limit the field of use by reciting an automated teller machine. See MPEP 2106.05(h). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the recited judicial exception.
Remaining Claims:
With regards to Claims 7, these claims merely add a degree of particularity to the limitations discussed above rather than adding additional elements capable of transforming the nature of the claimed subject matter. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, the claims as a whole do not amount to significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 102
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.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nuthi et al. (U.S. P.G. Pub. 2020/0210268 A1), hereinafter Nuthi.
Claim 1.
Nuthi discloses maintenance system for maintaining an object to be maintained between a maintenance company and a manufacturer using a computer having a processor and a memory,
wherein the maintenance company has a first computer (Nuthi [0022], [0028] technician device 108) and a second computer managed by the maintenance company (Nuthi [0022], [0028] service center 106), and the manufacturer has a third computer managed by the manufacturer (Nuthi [0022], [0028] machine recovery system 102),
a processor of the first computer receives operation information for a defect of the object to be maintained outputted from the object to be maintained and transmits the received operation information to the third computer of the manufacturer (Nuthi [0019] a problem fault, or issue can be observed during a routine maintenance check, or during usage, for example, by a technician or a user; [0025] technician device may interface with the machine 104 to obtain additional data and/or confirm data; [0026] technician can interface with machine and gather data prior to the machine has been serviced; [0030] technician may gather system logs, continuous health data and other machine analytics prior to servicing and that data may be transmitted to the machine recovery system 102; [0106] user provides the symptoms),
a processor of the third computer stores the operation information in the memory (Nuthi [0023] machine recovery system 102 updates information in various databases; [0032] machine recovery system 102 includes machine log database and dynamic system health database; [0037] updater system can update various information used by processes herein),
the second computer transmits replacement request information for requesting a replacement for the object to be maintained to the third computer of the manufacturer based on a request received from the first computer (Nuthi [0023], [0029] Machine recovery system 102 receives a service request from the service center 106 and machine can communicate with the service center; [0034], [0042], [0048], [0051], [0056] service request requires replacement parts), and
the processor of the third computer approves an application for the replacement for the object to be maintained, in which the defect has occurred, when the operation information stored in the memory is matched with the replacement request information received from the second computer (Nuthi [0033] smart symptom system converts machine malfunctioning systems into error codes; [0034], [0048] smart care package system generates how to solve the problem and can include tools, replacement parts, and models; [0095], [0106], [0107], [0109], [0110] filter out issues that do not correspond to the error logs and/or symptoms; [0119], [0121] add predicted solution to care package).
Claim 2.
Nuthi discloses all the elements of claim 1, as shown above. Additionally, Nuthi discloses:
wherein the processor of the third computer
reads operation information including the same defect as the operation information received from the first computer from past operation information stored in the memory (Nuthi [0023] machine recovery system 102 generates the smart care package based on database information corresponding to previous servicing of the machine; [0036], [0043], [0054], [0132], [0134] identify similar to fleet to identify problems; [0040] service history; [0041] correlate historical symptoms to errors; [0045], [0049], [0145] similar solutions for a fleet of machines; [0065], [0071] digital twin uses historical information for analysis; [0115] care package based on historical machine information),
withholds a response to the application when the replacement request information does not include the same recovery measures as recovery measures for the defect included in the read past operation information (Nuthi [0095], [0106], [0107], [0109], [0110] filter out issues that do not correspond to the error logs and/or symptoms), and
performs a validity determination process of determining whether or not the recovery measures included in the replacement request information are valid (Nuthi [0109] obtain responses from a user and/or directly from a machine to determine whether to filter out issues based on the response).
Claim 3.
Nuthi discloses all the elements of claim 2, as shown above. Additionally, Nuthi discloses:
wherein, in the validity determination process, when recovery measures included in past replacement request information similar to the replacement request information to acertain extent have been approved, the processor of the third computer determines that the recovery measures included in the replacement request information received from the second computer are valid and changes the response from a pending state to an approved state (Nuthi [0023], [0034], [0037] machine recovery system 102 generates the smart care package based on database information corresponding to previous servicing of the machine; [0029] prior knowledge included in the care package; [0042] identify manual sections needed, replacement parts needed, and/or tools needed for the particular problem to develop the smart care package; [0119], [0121] add predicted solution to care package).
Claim 8.
Nuthi discloses all the elements of claim 8 as shown above in claim 1.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nuthi in view of Corn (U.S. 2008/0040268 A1), hereinafter Corn.
Claim 4.
Nuthi discloses all the elements of claim 2, as shown above. Additionally, Nuthi discloses:
wherein in the validity determination process, the processor of the third computer
outputs information for prompting a user to check the defect for the object to be maintained, for which the recovery measures included in the replacement request information received from the second computer have been performed, to a display device of the third computer (Nuthi [0031], [0037], [0038] during debrief a survey result information can be obtained by the service center from the technician; [0042], [0057] problem solution database updated based on survey data; [0056], [0103] survey generator after service is complete),
Nuthi does not disclose the following limitations, but Corn does:
determines that the recovery measures included in the replacement request information received from the second computer are appropriate when a person in charge at the manufacturer inputs information indicating that the recovery measures are appropriate in response to the information for prompting the user to check the defect which has been output to the display device (Corn [0043] a technician may input a repair and a manufacturer may approve a reimbursement request for the repair by manually inputting a decision), and
changes the response from a pending state to an approved state (Corn [0043] a technician may input a repair and a manufacturer may approve a reimbursement request for the repair by manually inputting a decision).
The known technique receiving manually input approval of a repair from a manufacturer of Corn, as shown above, is applicable to the system of Nuthi as they both share characteristics and capabilities, namely, they are facilitating repairs by a technician. One of ordinary skill in the art would have recognized that applying the known technique of receiving manually input approval of a repair from a manufacturer of Corn to technician facilitated repairs of Nuthi would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Corn to the teaching of Nuthi would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such manual approval features into technician facilitated repair systems. Further, applying manual approval from a manufacturer to Nuthi, would have been recognized by one of ordinary skill in the art as resulting in an improved system that would allow more efficient identification of the most effective repair technique because the manufacturer is the expert on a machine and verifying with the manufacturer ensures the repair doesn’t cause a cascade of other issues.
Claim 5.
Nuthi discloses all the elements of claim 2, as shown above. Additionally, Nuthi discloses:
wherein, in the validity determination process, the processor of the third computer
reads a maintenance company of the object to be maintained, for which the recovery measures included in the replacement request information received from the second computer have been performed, from a database in which the object to be maintained and the maintenance company have been registered in advance in association with each other (Nuthi [0051] technician selector selects a technician from the technician database; [0053] technician database includes up to date information on the types of machines the technician can service),
Nuthi does not disclose the following limitations, but Corn does:
outputs the maintenance company to a display device of the third computer (Corn [0043] a technician may input repair information as reimbursement request),
determines that the recovery measures included in the replacement request information received from the second computer are valid when a person in charge at the manufacturer inputs information indicating that the recovery measures are appropriate based on a result of contacting and hearing from the maintenance company output to the display device (Corn [0043] a technician may input a repair and a manufacturer may approve a reimbursement request for the repair by manually inputting a decision), and
changes the response from a pending state to an approved state (Corn [0043] a technician may input a repair and a manufacturer may approve a reimbursement request for the repair by manually inputting a decision).
One of ordinary skill in the art would have been motivated to include the teachings of Corn in the system of Nuthi for the same reasons discussed above in claim 4.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nuthi in view of Aitchison (U.S. 11,281,703 B1), hereinafter Aitchison.
Claim 6.
Nuthi discloses all the elements of claim 1, as shown above. Additionally, Nuthi discloses:
wherein the first computer is a mobile terminal that has a camera and is operated by a maintenance worker who maintains the object to be maintained (Nuthi [0075] head mounted display can include a scanner and can be used in conjunction with the technician device),
Regarding the following limitation:
the camera captures a two-dimensional barcode, into which the object to be maintained has converted the operation information and which has been displayed on a display device of the object to be maintained, in response to an operation by the maintenance worker, and
Nuthi discloses capturing a barcode of the machine to be maintained by a technician (Nuthi [0075] scanner can scan items in its filed of view, including barcodes). However, Nuthi dies not disclose the camera captures a two-dimensional barcode, into which the object to be maintained has converted the operation information and which has been displayed on a display device of the object to be maintained, in response to an operation by the maintenance worker, but Aitchison does (Aitchison (Col. 4 Line 66 – Col. 5 Line 4) In some approaches, the computing device 102 may generate and display a matrix barcode, 2D bar code, quick response (QR) code or some other machine-readable code in the event of an error. An end user may scan these codes (using a camera-equipped device, for instance) to receive feedback on how to respond to these error messages).
Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of 2D bar code displayed on the machine to be maintained of Aitchison for the barcode of Nuthi. Both the barcode of Nuthi and the QR code generated by the object to be maintained of Aitchison convey additional information to assist in a repair. Thus, the simple substitution of one known element in the art of repairing for another producing a predictable result renders the claim obvious. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to substitute the above features and yield predictable result of Nuthi’s system with the improved functionality to quickly provide more specific diagnostic information beyond general identification information.
Nuthi, as modified above by Aitchison, teaches:
the processor of the first computer transmits the two- dimensional barcode captured by the camera as the operation information to the third computer of the manufacturer (Nuthi [0075] scanned information can be provided to the digital twin to identify and track items).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nuthi in view of Moore (U.S. 10,685,537 B1), hereinafter Moore.
Claim 7.
Nuthi discloses all the elements of claim 1, as shown above. Regarding the following limitation:
wherein the maintenance system maintains an automated teller machine (ATM) or/and a device of the ATM as the object to be maintained,
Nuthi discloses wherein the maintenance system maintains a machine as the object to be maintained (Nuthi [0024] machine 104 can be any machine that requires periodic servicing or aperiodic servicing). However, Nuthi does not specify wherein the machine is an automated teller machine (ATM) or/and a device of the ATM as the object to be maintained, but Moore does (Moore (Col. 3 Lines 1-9) ATM repair system provides diagnostics; (Col. 3 Lines 48-52) remove damaged components and install new parts).
Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the ATM of Moore for the machine of Nuthi. Both ATMs and imaging devices require periodic maintenance and are known in the repair art as objects tight need to be maintained. Thus, the simple substitution of one known element in the art of repair for another producing a predictable result renders the claim obvious. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to substitute the above features and yield predictable result of Nuthi’s system with the improved functionality to provide maintenance to an additional category of machine.
Nuthi, as modified above by Moore, teaches:
the processor of the first computer receives the operation information for a defect of the ATM or/and the device of the ATM and transmits the operation information to the third computer of the manufacturer (Nuthi [0019] a problem fault, or issue can be observed during a routine maintenance check, or during usage, for example, by a technician or a user; [0025] technician device may interface with the machine 104 to obtain additional data and/or confirm data; [0026] technician can interface with machine and gather data prior to the machine has been serviced; [0030] technician may gather system logs, continuous health data and other machine analytics prior to servicing and that data may be transmitted to the service center 106 and/or the machine recovery system 102; [0106] user provides the symptoms),
a processor of the second computer transmits the replacement request information for the ATM or/and the device of the ATM to the third computer based on the request received from the first computer (Nuthi [0023], [0029] Machine recovery system 102 receives a service request from the service center 106 and machine can communicate with the service center; [0034], [0042], [0048], [0051], [0056] service request requires replacement parts), and
the processor of the third computer approves an application for a replacement for the ATM or/and the device of the ATM in which the defect has occurred when the operation information of the ATM or/and the device of the ATM stored in the memory is matched with the replacement request information of the ATM or/and the device of the ATM received from the second computer (Nuthi [0033] smart symptom system converts machine malfunctioning systems into error codes; [0034], [0048] smart care package system generates how to solve the problem and can include tools, replacement parts, and models; [0095], [0106], [0107], [0109], [0110] filter out issues that do not correspond to the error logs and/or symptoms; [0119], [0121] add predicted solution to care package).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT M TUNGATE whose telephone number is (571)431-0763. The examiner can normally be reached Monday - Friday, 9:00 - 4:30 EST.
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/SCOTT M TUNGATE/Primary Examiner, Art Unit 3628