DETAILED ACTION
This is a first action on the merits. Claims 1-13 are pending. Claims dated 07/01/2025 are being examined.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/01/2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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:
“an acquisition section” in at least claim 1
“a calculation section” in at least claim 1
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. Specifically, an ECU or computer ([0016]).
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.
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 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim 13, claim 13 does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to “a program”. Non-limiting examples of claims that are not directed to any of the statutory categories include: 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, see MPEP 2106.03.
Although it appears from Applicant’s disclosure that claim 13 could be amended to fall within a statutory category, per MPEP 2106.03, if “it appears from applicant’s disclosure that the claim could be amended to fall within a statutory category (Step 1: YES), the analysis should proceed to determine whether such an amended claim would qualify as eligible at Pathway A, B or C”. Per the analysis below, claim 13 is also rejected under 35 U.S.C. 101 as the claimed invention is directed to an abstract idea without significantly more.
Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
(Claim 12) A prediction method for predicting replacement required timing of an oil check valve provided in an oil circulation path of a vehicle, the prediction method comprising:
processing of acquiring, from a storage section, first information related to an operation history of the oil check valve and second information related to an oil temperature history of oil in the oil circulation path; and
processing of calculating an indicator related to the replacement required timing of the oil check valve based on the first information and the second information by using a classifier model that has been trained in advance.
101 Analysis – Step 1:
Independent claim 12 is directed to a method. Therefore, claim 12 is within at least one of the four statutory categories. Claim 12 will be used as a representative claim for the remainder of the 101 rejections.
101 Analysis – Step 2A, Prong I:
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
The Examiner submits that the foregoing bolded limitation(s) constitute “mental processes” – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III) because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind.
Specifically, the limitation: “processing of calculating an indicator related to the replacement required timing of the oil check valve based on the first information and the second information” in the context of this claim encompasses mental evaluation and/or judgement to identify when a replacement of the oil check valve is needed. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II:
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract idea(s) into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
The Office submits that the foregoing underlined limitation(s) recite additional elements that do not integrate the recited judicial exception into a practical application.
The additional limitations of “processing of acquiring, from a storage section, first information related to an operation history of the oil check valve and second information related to an oil temperature history of oil in the oil circulation path”, amounts to mere data gathering for use in the calculating step. It has been held that limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include: Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea, see MPEP 2106.05.
The additional limitations of “by using a classifier model that has been trained in advance” does not remove the claim from the realm of abstract ideas. The claim merely uses the classifier model as a tool for analyzing collected information and generating the calculation. The claim does not recite any particular improvement to the classifier architecture or any improvement in computer functionality. Rather, the classifier model is recited at a high level of generality as a mechanism for performing the recited abstract idea and this limitation amounts to mere “apply it”. See MPEP 2106.05(f).
The recitation of “by using a classifier model that has been trained in advance” also merely indicates a field of use or technological environment in which the judicial exception is performed. Although the additional element “using a classifier model that has been trained in advance” limits the identified judicial exception “processing of calculating…”, this type of limitation merely confines the use of the abstract idea to a particular technological environment (neural networks and/or machine learning) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, that reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B:
Regarding Step 2B of the 2019 PEG, representative independent claim 12 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well understood, routine, conventional activity in the field.
As discussed with respect to Step 2A Prong Two, the additional elements of the classifier model in the claim amounts to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)). The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
The data gathering steps are conventional as they merely consist of data gathering and data transmitting which are recited at a high level of generality. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); or buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Hence the claim is not patent eligible.
Independent claims 1 and 13 substantially recite the same limitations as the representative independent method claim 12 and is rejected for the same reasons as disclosed above.
Dependent claims 2-11 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application, specifically only reciting/elaborating on the additional activities in the calculating step deemed as an abstract idea (claims 2-5, 10: “the calculation section…”), reciting/elaborating on additional insignificant extra-solution activities (data gathering: claims 4-5 “acquisition section…”, further defining the type of data gathered in claims 6-8; insignificant post-solution activity: claim 11 “displays…”), and mere “apply it”/generally linking to a field of use or technological environment (claim 9: “neural network”) wherein the additional elements are well-known, routine, and conventional as exemplified by the cited case law for the 101 rejection of the representative claim. While claim 11 provides a displaying step, examples of insignificant post-solution activities can include merely displaying a result (e.g., output) on a display device, merely communicating a message based on the result, merely recording the result in a memory storage device, and the like. The Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data is a well understood, routine, and conventional function, and the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Hence the claims are not patent eligible.
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action and to include all the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art teaches predictive maintenance, degradation prediction, and machine learning based failure prediction but does not teach, describe, and/or suggest all the limitations as presented in the claim as a whole – specifically the claimed predictive determination of oil check valve replacement timing using the recited combination of historical valve-operation data and oil-temperature history as inputs to a pre-trained classifier model.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20160035150-A1: Barfield discloses vehicle data may be analyzed to predict potential component failures and that unsupervised machine learning techniques and/or supervised machine learning techniques may be used to generate one or more models that may predict failures relating to the vehicle, but does not specifically disclose an oil check valve.
KR-20230125116-A: Im discloses diagnosing and predicting failures in systems including mechanical equipment and devices based on machine learning and statistical techniques and predicting the time until failure, but does not specifically disclose an oil check valve
US-20180361283-A1: Yokoyama discloses estimating a lifetime of the filter by obtaining a time when the maximum oil temperature in the open state of the valve 17 reaches a temperature of a clogging alarm level (e.g., 40 degrees C.) based on a time-series change between the maximum oil temperature in the open state of the valve 17 at a current time and the maximum oil temperature in the open state of the valve 17 close to the current time, but this is directed to filter replacement timing and not oil check valve replacement timing.
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/DAVIN SEOL/Examiner, Art Unit 3662
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