CTNF 19/220,090 CTNF 87952 DETAILED ACTION Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In accordance with MPEP 2106.04, each of Claims 1-5 has been analyzed to determine whether it is directed to any judicial exceptions. Step 2A, Prong 1 per MPEP 2106.04(a) Claim 1 recites at least one step or instruction for “abnormality diagnosis”, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). The claimed limitations involve mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)); and, processes and mental concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP 2106.04(a)(2)(III))]] Accordingly, Claims 1 recites an abstract idea. Specifically, Claim 1 recites: An abnormality diagnosis device configured to diagnose presence or absence of an abnormality in an internal combustion engine, the internal combustion engine including a dry sump lubrication system that circulates lubricating oil between the internal combustion engine and an oil tank outside the internal combustion engine, and the internal combustion engine being configured to recirculate blow-by gas in the oil tank to an intake passage, wherein the abnormality diagnosis device comprises a pressure sensor that detects a tank internal pressure that is a pressure inside the oil tank (additional element – extra-solution activity, e.g., data collection), and the abnormality diagnosis device is configured to perform a diagnosis process that diagnoses presence or absence of an abnormality in a recirculation path of the blow-by gas (evaluation or judgement, which is a mental process) based on whether the tank internal pressure at a time of a low-load operation of the internal combustion engine exceeds a threshold value (evaluation or judgement, which is a mental process), which is grouped as a mental process in MPEP 2106.04(a)(2)(III)). Further, dependent Claims 2-5 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the claimed functions/steps are performed. Accordingly, as indicated above, each of the above-identified claims recites an abstract idea as in MPEP 2106.04(a). Step 2A, Prong 2 per MPEP 2106.04(d) The above-identified abstract idea in independent Claim 1 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claim 1), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h). More specifically, the additional elements of: the abnormality diagnosis device, pressure sensor and oil tank, are generically recited engine elements in independent Claim 1, (and its respective dependent claims) which do not improve the functioning of a “computer”, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claim 1 (and its respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d). Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer. In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC , the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 1 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I). Accordingly, independent Claim 1 (and its respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d). Step 2B per MPEP 2106.05 None of Claims 1-5 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons. More specifically, the additional elements of: abnormality device, pressure sensor and one-way valve are are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am ., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Accordingly, in light of Applicant’s specification, the claimed controller is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f). Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the controller. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional 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) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)). The recitation of the above-identified additional limitations in Claims 1-5 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. For at least the above reasons, the systems of claims 1-5 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claim 1 (and its dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05. Therefore, for at least the above reasons, none of the Claims 1- 5 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-5 are not patent eligible and rejected under 35 U.S.C. 101. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Shirabe et al. (US 2013/0213370 A1), hereafter Shirabe . Regarding claim 1, Shirabe discloses an abnormality diagnosis device (ECU; [0053]) configured to diagnose presence or absence of an abnormality in an internal combustion engine, the internal combustion engine including a dry sump lubrication system that circulates lubricating oil between the internal combustion engine and an oil tank outside the internal combustion engine ([0070], Fig. 6), and the internal combustion engine being configured to recirculate blow-by gas in the oil tank to an intake passage, wherein the abnormality diagnosis device comprises a pressure sensor (86) that detects a tank internal pressure that is a pressure inside the oil tank, and the abnormality diagnosis device is configured to perform a diagnosis process that diagnoses presence or absence of an abnormality in a recirculation path of the blow-by gas based on whether the tank internal pressure at a time of a low-load operation of the internal combustion engine exceeds a threshold value ([0022], [0073]). Regarding claim 2, Shirabe discloses the abnormality diagnosis device for the internal combustion engine according to claim 1, wherein the internal combustion engine includes a one-way valve that is installed in a connecting portion of the recirculation path connected to the intake passage and is configured to prevent backflow of intake air from the intake passage to the oil tank (shown in Fig. 6). Regarding claim 5, Shirabe discloses the diagnosis process includes diagnosing continues for a predetermined period of time or longer [0079 – during the engine operation) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirabe et al. (US 2013/0213370 A1), in view of Ando et al. (JP 20200203606 A), hereafter Ando . Regarding claims 3 and 4, Shirabe is silent to performing the diagnosis process after stopping an intermittent operation control of the internal combustion engine. Ando discloses a process in a hybrid vehicle wherein the diagnosis process after stopping an intermittent operation control of the internal combustion engine [0050]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the teaching of Ando and inhibit a hybrid operation in the system of Shirabe in order to correctly diagnose the blow-by recirculation path . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEUTA B HOLBROOK whose telephone number is (571)270-3276. The examiner can normally be reached Monday - Friday 8am-4:30pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LINDSAY LOW can be reached at 571-272-1196. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TEUTA HOLBROOK/ Examiner Art Unit 3747 /GEORGE C JIN/Primary Examiner, Art Unit 3747 Application/Control Number: 19/220,090 Page 2 Art Unit: 3747 Application/Control Number: 19/220,090 Page 3 Art Unit: 3747 Application/Control Number: 19/220,090 Page 4 Art Unit: 3747 Application/Control Number: 19/220,090 Page 5 Art Unit: 3747 Application/Control Number: 19/220,090 Page 6 Art Unit: 3747 Application/Control Number: 19/220,090 Page 7 Art Unit: 3747 Application/Control Number: 19/220,090 Page 8 Art Unit: 3747 Application/Control Number: 19/220,090 Page 9 Art Unit: 3747 Application/Control Number: 19/220,090 Page 10 Art Unit: 3747 Application/Control Number: 19/220,090 Page 11 Art Unit: 3747 Application/Control Number: 19/220,090 Page 12 Art Unit: 3747
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