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 .
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.
Examiner’s Remarks
The amended portions of the claims appear to have been typed with a color that is not black, which leads to a line quality which does not print or reproduce well, and makes the text difficult to read. Text must be typed with black.
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.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 1-18 are directed to a method (process) and claims 19-20 are directed to a non-transitory computer readable medium (apparatus). As such, the claims are directed to statutory categories 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.
Claims 1, 16, and 19 recite abstract limitations including (or substantially similar to): “comparing a paving data set with a property profile of the road construction machine stored in a profile memory”, “based on a result of the comparison, an assessment is made that the road construction machine is suitable for paving the road surface”, and “selecting a different road construction machine to perform the paving operation”. These limitations, as drafted, are a process that, under its broadest reasonable interpretation, cover performances of the limitations in the mind and therefore recite mental processes. The comparing of data, assessing whether a road construction machine is suitable for the work required, and selecting (considered as making a choice, mentally) does not require any overt action to be taken and can merely be performed by an operator who can see the road construction machine. Claim 19 includes “performed by a simulation”, but that is an insignificant extra solution activity that do not provide significantly more. It is noted that some of the limitations in the last clause in each of these claims are part of an “or” statement and therefore are considered to be not required.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section | 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.
Claims 1 and 16 also recite the additional steps of “reading-in a paving data set into an onboard computer”, “controlling working components of the road construction machine for paving the road surface based on the read-in paving data set”, and “performing a paving operation”. The generically-recited onboard computer does not add a meaningful limitation to the abstract idea because it amounts to simply implementing the abstract idea on a computer. These generic steps of inputting data and operating the road construction machine to perform the work that needs to be done amounts to insignificant extra-solution activity, and only generally link the structures to a field of endeavor. Accordingly, in when considered separately and in combination, these additional details do not integrate the abstract idea into a practical application because they do not improve any meaningful limits on practicing the abstract idea. It is additionally noted that the step of “selecting” does not even require the computing unit to perform the step; as written, a human operator could perform this step, and even if the claim was amended to require the computing unit to make the selection, there is case law that makes this a matter of obviousness. The amended portions include a limitation of a paving data set comprising a setting for one or more of the parameters listed, and then performing or selecting based on the setting. Selecting a data set is not integration; there is no limitation provided that links to a specific outcome that is not generic. As noted in Electric Power Group, “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas (See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Additionally, one of the claimed parameters is “a paving speed”, even though Hill, the primary reference applied below, already discloses taking the speed into account in a velocity control loop on the control unit. All of the claimed parameters appear to be generic parameters.
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).
Regarding the method steps of reading-in paving data into an on-board computer of a road construction machine and controlling working components of the road construction machine based on the read-in paving data set, the specification discusses that these additional elements are known for at least partial automation of the paving process in the “Background” section of the specification, paragraph [0003], since the disclosure following this section, as stated in paragraph [0005] is to improve what is known.
Claims 2-15, 17-18, and 20 further limit the abstract idea, and is still capable of being performed in the human mind except for instances like “performed by the computing unit” or “performed by a simulation”, but those are insignificant extra solution activities that do not provide significantly more. The dependent claims, including claims pertaining to the types of data and parameters, do not provide any substantive detail such that the narrowing of the additional element would provide meaningful integration of the abstract idea.
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.
Claim 1 (and claims 2-15 through dependency) are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 appears to have two periods in the claim, one of them being in line 4 after the word “parameters”. It is unclear where Applicant intends the claim to end.
Claim 1 recites “a road construction machine comprising a road paver” in lines 2-3 but then “the road construction machine” in subsequent clauses. It is unclear which is required of the claim, the broader road construction machine or the narrower road paver.
Claim 11, which depends from claim 1, recites “wherein the road construction machine comprises a road paver” even though claim 1 already included that limitation.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hill et al., US 11,669,073 B2 in view of Applicant’s admission and Wilkinson et al., US 2018/0174087 A1.
Regarding claim 1, Hill teaches a modern construction machine and discusses in the “Background of the Invention” a modern asphalt paver that allowed paving to be completed much faster due to automation of various aspects so that “construction projects can be carried out by construction crews with fewer individuals than what was previously required” (column 1 lines 11-18), and teaches providing instructions that, when executed by one or more processors, cause the one or more processors to perform operations for controlling an aspect of a construction machine (column 2 lines 30-34). Applicant admits in the Background section of the specification that reading-in a paving data set into an onboard computer of a road construction machine comprising a road paver and during a paving operation, controlling one or more working components of the road construction machine for paving the road surface based on the read-in paving data set are already known method steps to allow at least partial automation of the paving process ([0003]), since the disclosure following this section, as stated in paragraph [0005] is to improve what is known. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hill’s method to include the steps of reading-in a paving data set into an onboard computer of a road construction machine comprising a road paver and during a paving operation, controlling one or more working components of the road construction machine for paving the road surface based on the setting for the one or the plurality of operating parameters of the read-in paving data set in view of what is already known in the art for at least partial automation, since Hill discusses “By controlling the machine velocity in the manner described, better control of the machine's implement can be achieved, resulting in a better finish grade surface with reduced unevenness, which is an undesirable effect that typically occurs when the machine is moving at certain speeds…techniques described herein provide for a velocity control loop to run on the control unit that takes the vehicle travel speed into account” (column 4 lines 11-16 and lines 20-22), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the paving data set comprise a parameter set comprise a setting for a paving speed of the road paver in view of Hill’s discussion as detailed above.
While the resulting combination fails to disclose the method steps of comparing data and making an assessment based on a result of the comparison, and selecting a different road construction machine, Wilkinson teaches a method of vehicle selection based on parameter suitability and discloses using a computing unit to compare and evaluate task requirements/parameters with properties of each available vehicle ([0026]) and when determining that a first vehicle is unsuitable or no longer available, can present another suitable vehicle meeting the required parameters ([0049]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to include the method steps of comparing by a computing unit (in view of the automation of the resulting combination) the paving data set with a property profile of the road construction machine stored in a profile memory and making an assessment whether the road construction machine is suitable for paving the road surface based on a result of the comparison in view of Wilkinson’s disclosure to ensure that the road construction machine is suitable. The resulting combination includes the method step of performing a paving operation when the assessment shows that the road construction machine is suitable for paving the road surface.
While the resulting combination fails to explicitly disclose “before start of a paving operation”, it is obvious to make an assessment of suitability regarding utilizing the machine before using the machine so as to not perform improper work or damage part of the project. It is further obvious to “select”, based on the different vehicle/road construction machine presented as modified by Wilkinson, to be able to actually perform the paving operation.
Regarding claim 2, the resulting combination includes the comparing of the read-in paving data set with the property profile of the road construction machine being performed by the computing unit. While the resulting combination fails to explicitly disclose the limitation “according to rules which are stored in a rule memory”, since the resulting combination involves comparing data and making an assessment based on the data, there must be rules to be able to make an assessment, and storing rules in a rule memory is an obvious modification to be able to save time, since it is old and well-known that a computer would have memory, otherwise the rules would need to be input every time an assessment is desired.
Regarding claim 3, since the resulting combination is able to make a comparison using the read-in paving data set, it is able to determine at least one comparison value to compare.
Regarding claim 6, the resulting combination includes the working components of the road construction machine being automatically controlled based on the read-in paving data set. The remaining limitations are part of an “or” limitation that are therefore not required.
Regarding claim 7, the resulting combination makes obvious that the read-in paving data set comprises a target data set characterizing the road surface to be paved so that the road construction machine is able to perform the desired paving.
Regarding claims 8 and 9, while the resulting combination fails to disclose that the target data set is created based at least in part on at least one of: a measuring process, a construction process, map data, data from a navigation system, landscape images, and that the target data set defines at least one of the following: a geometry of the road surface to be paved, at least one property of the paving material, at least one quality requirement the Examiner took Official Notice in the previous office action that each of the features or functions claimed is old and well-known to be considered in paving. Applicant failed to challenge the Official Notice in their arguments. Under the guidelines of MPEP 2144.03, to adequately traverse Official Notice, an applicant must specifically point out the supposed errors in the Examiner’s action including stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the Examiner’s assertion of Official Notice would be inadequate. Since applicant did not adequately traverse the Examiner’s assertion of Official Notice, the facts are now considered to be admitted prior art (MPEP 2144.03). Applicant’s traversal is considered inadequate because there was no reference to the Examiner’s assertion of Official Notice. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the target data set to be created based on at least in part on at least one of: a measuring process, a construction process, map data, data from a navigation system, landscape images and to have the target data set define at least one of the following: a geometry of the road surface to be paved, at least one property of the paving material, at least one quality requirement to at least partially automate and optimize the paving.
Regarding claim 10, the resulting combination makes obvious that the parameter set comprises a parameter set comprises settings of operating parameters of the road construction machine since the parameter set from claim 1 pertains to operating aspects of the road construction machine.
Regarding claim 11, since Hill discusses velocity control (column 2 lines 33-34) and discusses asphalt pavers in the Background of the Invention, the resulting combination makes obvious the parameter set comprising a setting for a paving speed of the road paver.
Regarding claims 12 and 13, the inclusion of both claims proves a lack in criticality in the location of the computing unit. Additionally, the resulting combination includes an on-board computer of the road construction machine as required in claim 1. The portion of the claim following “and/or” is seen to be optional and is not required.
Regarding claim 14, Hill further discloses that a vehicle database stores the vehicles’ information and properties ([0044]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the property profiles stored in view of Hill’s disclosure for convenience, otherwise the vehicles’ properties would need to be uploaded every time for every task/project. The resulting combination makes obvious the limitations of the claim since the property profiles pertain to the road construction machines’ properties which are required to perform the comparing and assessment and would be based on an indication of a type of road construction machine.
Regarding claim 15, the limitation claimed in obvious because it is just outputting the assessment.
Regarding claim 16, the resulting combination from claim 1 includes the limitations of the claim.
Claims 4-5, 17-18, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hill in view of Applicant’s admission and Wilkinson as applied to claims 1 and 16 above, and further in view of Marsolek, US 2017/0228108 A1 and Ucar et al., US 11,597,395 B2.
Regarding claim 4, while the resulting combination fails to disclose that the comparing of the read-in paving data set with the property profile of the road construction machine is performed by a simulation, Marsolek teaches a management tool for paving operations and discloses a simulation mode for displaying simulation parameters and a computer that is configured to compare simulated operating parameters of a paver to target parameters and determine whether and to what extent they differ ([0054] and [0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have a comparison of the read-in paving data set with the property profile of the road construction machine be performed by a simulation in view of Marsolek’s disclosure to perform an analysis with the comparing of data as discussed above. Ucar teaches a system and method to manage vehicles and discloses an analysis of a vehicle by using digital twin simulations for the vehicle (column 24 lines 6-16) in a digital twin environment that is similar to the real-world roadway environment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the simulation comprise simulating a paving process of the road surface with the road construction machine and according to the read-in paving data set since that is what is relevant to the road construction machine in view of Ucar’s disclosure as discussed above.
Regarding claim 5, the resulting combination includes the simulation using a digital twin of the road construction machine.
Regarding claim 17, the resulting combination includes the comparing of the paving data set with the stored property profile of the road construction machine via execution of stored program instructions by the computing unit (Hill’s column 2 lines 30-34). While the resulting combination fails to disclose performing a simulation, Marsolek teaches a management tool for paving operations and discloses a simulation mode for displaying simulation parameters and a computer that is configured to compare simulated operating parameters of a paver to target parameters and determine whether and to what extent they differ ([0054] and [0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have a comparison of the read-in paving data set with the property profile of the road construction machine be performed by a simulation in view of Marsolek’s disclosure to perform an analysis with the comparing of data as discussed above. Ucar teaches a system and method to manage vehicles and discloses an analysis of a vehicle by using digital twin simulations for the vehicle (column 24 lines 6-16) in a digital environment that is similar to the real-world roadway environment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the simulation comprise simulating a paving process of the road surface with the road construction machine and according to the read-in paving data set since that is what is relevant to the road construction machine in view of Ucar’s disclosure as discussed above.
Regarding claim 18, the resulting combination includes the simulation using a digital twin, which is a digital representation of the road construction machine.
Regarding claim 19, the resulting combination from claim 1 includes the limitations of the claim (Hill discloses a non-transitory computer readable medium having stored program instructions; column 2 lines 30-34) except for the limitation pertaining to a simulation.
While the resulting combination fails to disclose the at least one processor performing a simulation, Marsolek teaches a management tool for paving operations and discloses a simulation mode for displaying simulation parameters and a computer that is configured to compare simulated operating parameters of a paver to target parameters and determine whether and to what extent they differ ([0054] and [0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have a comparison of the read-in paving data set with the property profile of the road construction machine be performed by a simulation in view of Marsolek’s disclosure to perform an analysis with the comparing of data as discussed above. Ucar teaches a system and method to manage vehicles and discloses an analysis of a vehicle by using digital twin simulations for the vehicle (column 24 lines 6-16) in a digital environment that is similar to the real-world roadway environment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the simulation comprise simulating a paving process of the road surface with the road construction machine and according to the read-in paving data set since that is what is relevant to the road construction machine in view of Ucar’s disclosure as discussed above. It is an obvious modification to perform the comparing step before start of a paving operation by the road construction machine since the purpose is to determine whether the road construction machine is even suitable for paving the road surface.
Regarding claim 20, the resulting combination from claim 19 includes the simulation using a digital twin, which is a digital representation of the road construction machine.
Response to Arguments
Regarding the rejection under 35 U.S.C. § 101, Applicant argues that the amended claims thus include “meaningful limitations that integrate any judicial exception into a practical application” and more substantively link to the data recited. However, as detailed in the rejection above, the claims still recite limitations that could be performed in the mind of an operator, that are simply generic steps, or that are insignificant extra solution activities that do not provide significantly more. Specific steps, not generic steps, for operation of the road construction machine substantively linking or utilizing the data may overcome the 101 rejection.
Applicant argues that Wilkinson is non-analogous art because Wilkinson is directed to assessing delivery vehicles and determining cargo capacity and is far removed from the technical field of road construction or road paving. In response to applicant's argument that Wilkinson is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, absent the descriptions of “delivery” and “cargo”, the system and method is basically evaluating vehicles to determine whether they are suitable based on certain requirements, which is reasonably pertinent to the particular problem with which the inventor was concerned based on the claims as presented. It is noted that Applicant argues that the problem faced by the inventor is preventing the interruption of a paving process that has already started. This is not persuasive since that cannot be gathered from the claims as presented.
Applicant further argues that Wilkinson uses the delivery requirements only to determine a suitable delivery vehicle but not in the actual delivery process carried out by the selected delivery vehicle, so that Wilkinson does not teach using the data set both for assessing whether the road construction machine is suitable and for actually performing the paving operation. This argument is not persuasive since Wilkinson was not relied on for using the data set to perform the paving operation. As stated in the previous office actions, Applicant admits in the Background of the Invention that reading-in a paving data set to control working components of the road construction machine for paving the road surface based on the read-in paving data set is already known ([0003]).
Regarding the rejection to claim 19, Applicant argues that Ucar merely discloses digital twin simulations for evaluating certain traffic situations but is not used to determine which vehicle is suitable for a certain job. This argument is not persuasive since it simplifies what Applicant is claiming in the claims as written and does not align with combination in the rejection since Ucar was not applied alone. It is noted that Marsolek has been added to the rejections with a simulation in view of the amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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