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 .
The amended claims filed 4/30/26 are acknowledged; claims 1-20 are currently pending.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is directed to a non-transitory computer readable storage medium (manufacture). As such, the claims are directed to a statutory category of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim recite abstract limitations – “monitoring a status of a seal element of a rotating control device (RCD) system…; continuously querying a plurality of RFID tags embedded within a seal element…; collecting data comprising an indication…; associating the one or more non-responsive RFID tags with the status comprising a depth of wear and a type of wear pattern of the seal element; and displaying the status comprising the depth of wear and the type of wear pattern…” This limitation, as drafted and under its broadest reasonable interpretation, covers performance of limitation in the mind or by a human using pen and paper, therefore recites a mental process. Nothing in the claim element precludes the step from being performed by a human. Furthermore, as discussed in MPEP §2106.04(a)(2)(III)(A), claims directed toward a mental process include claims to “‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 199 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)”. Thus, the claims recite an abstract idea.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
In this case, the limitation “controlling operation of the RCD system in response to the status to preclude a complete breakdown of the seal element” is additionally recited. However, this is merely a limitation to apply the judicial exception with no real guidance as to who to apply it. There is no significant claimed activity such as how to control the operation by taking specific actions. Thus, the exception is not integrated into a practical application of the exception.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
On the whole, the claim fails to provide an inventive concept. The claims have no steps that are not judicial exceptions or generic applications of the exceptions. On the whole, the claims do not amount to more than the judicial exception. Thus, the claim does not provide an inventive concept.
Regarding claims 2-14, the dependent claims do not offer any additional elements that provide an inventive concept. The dependent claims narrow the data gathered or how it is gathered, but do not change the overall analysis.
Regarding claims 15-20, the claims recite additional judicial exceptions and further limit the previously recited exceptions.
Response to Arguments
Applicant's arguments filed 4/30/26 have been fully considered but they are not persuasive.
Applicant’s remarks regarding the 101 rejection are not persuasive as discussed above.
With respect to the double patenting, the amendments to the claims traverse the rejection. The steps of the monitoring and controlling are not claimed in the previously patent. Therefore, the rejection is withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK F LAMBE whose telephone number is (571)270-1932. The examiner can normally be reached M-Th 10-4.
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, Tara Schimpf can be reached at (571)270-7741. 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.
/PATRICK F LAMBE/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
Prosecution Insights