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 .
STATUS OF CLAIMS
This action is in response to the Applicant’s arguments and amendments filed on 3/16/2026. Applicant amended claims 1 and 11. Claims 1 and 3-14 are pending and are examined below.
CONTINUED EXAMINATION UNDER 37 CFR § 1.114
A request for continued examination under 37 CFR § 1.114, including the fee set forth in 37 CFR § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR § 1.114, and the fee set forth in 37 CFR § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR § 1.114. Applicant’s submission filed on 3/16/2026 has been entered.
RESPONSE TO REMARKS AND ARGUMENTS
In regards to the claim interpretation under § 112(f), Applicant’s arguments and amendments filed on 3/16/2026 have been fully considered but are unpersuasive.
As to “control unit” in amended claim 1, Applicant argues that the term “control unit” is a commonly used term in the art including common structure. Applicant cites a Britannica definition as evidence that “control unit” has a reasonably ascertainable structure to those of skill in the art. Applicant submits that the term “control unit” is analogous to other technical structural terms found to not invoke interpretation under § 112(f). Applicant concludes that the Office has not shown that there exists a generic placeholder, functional language and an absence of sufficient structure in order to invoke interpretation under § 112(f).
Examiner respectfully disagrees. The MPEP explicitly states that “unit for” is a non-structural generic placeholder that may invoke § 112(f). (See MPEP 2181 I. A.) The control unit is tied towards functional language – i.e., calculating maximum heights; determining a warning height; activating a height limit alarm unit; receive electrical signals; determining whether the height of the boom, the arm or the bucket is located in a warning area; outputting a first warning signal; and determining a warning height. Finally, the control unit is not modified by sufficient structure to perform the claimed acts. Accordingly, interpreting “control unit” under § 112(f) is appropriate. (See MPEP 2181.)
Regarding the provided Britannica dictionary definition, Examiner respectfully submits that the MPEP’s guidance that a “unit for” constitutes a nonce term takes priority as said guidance is based in precedential case law. Nevertheless, the Britannica definition does not appear to cure the issue as the definition states that a control unit can be either hardware (i.e., “hardwired”) or software (i.e., “microprogrammed”). Hence, Britannica does not resolve “control unit” to definite structure; in fact, the foregoing supports the notion that a “control unit” is indeed a generic placeholder. As a final note, Examiner notes that “control unit” is a known term in the vehicle control art to denote functional software units.
Accordingly, the claim interpretation under § 112(f) is maintained.
In regards to the claim rejections under § 112(a),(b), Applicant’s arguments and amendments filed on 3/16/2026 have been fully considered but are unpersuasive.
As to amended claims 1 and 11, Applicant argues that, according to the Britannica definition, a person of skill in the art would understand that a control unit is capable of controlling a determination (a computer operation). Applicant further submits that, therefore, those of skill in the art would appreciate that a control unit may direct the operation of computer components by control signals which are electrical signals. Applicant points towards the specification as explicitly disclosing that the control unit is in electrical communication to perform the claimed functional recitations.
Examiner respectfully disagrees. As explained above, the Britannica definition is insufficient to obviate the § 112(f) interpretation of “control unit.” As a result, the rejections under §§ 112(a),(b) are appropriate because the specification provides no/insufficient disclosure of structure, material, or acts for performing the claimed function. (See at least MPEP 2181 C. III.) At best, the specification merely describes the control unit as a generic black box which conducts the claimed functions. Examiner respectfully submits that one of ordinary skill in the art would not bridge the gap to arrive at sufficient structure (of which Applicant has not described either in the argument, claims or the specification) because the specification is completely silent as to any structure, material or acts to perform the claimed functions.
Therefore, the rejections under §§ 112(a),(b) are maintained.
In regards to the claim rejections under § 101, Applicant’s arguments and amendments filed on 3/16/2026 have been fully considered but are unpersuasive.
As to amended claim 11, Applicant argues that the claim as amended now includes sufficient structure, specifically regarding the sensing unit, to bring the claims as a whole outside of the mental processes grouping and further not to recite a mental process. Applicant further argues that at least the recitation of “wherein the warning height is determined by a user’s work tendency” provides an inventive concept because none of the cited references disclose this feature, thereby demonstrating a non-conventional improvement over the prior art.
Examiner respectfully disagrees.
First, the claim limitation pertaining to a sensor unit comprising first, second and third angle sensors is insufficient to render the claim as patent eligible because these additional elements are mere generic computing components through which insignificant pre-solution activity (i.e., gathering data) is performed. That is, the sensor unit and its respective sensors merely capture angle data of respective features, in which the angle data is used to perform the mental process of determining the heights of the respective features of the excavator. Thus, as a whole amended claim 11 still recites an abstract idea without significantly more. (See 101 rejections below for detailed analysis.)
Second, again Examiner respectfully submits that 102/103 prior analysis has no bearing on 101 analysis. (“The ‘‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’” (Emphasis in original, MPEP 2106.05)) Additionally, as to whether the claim recites an “unconventional step,” Examiner notes that the cited portion of the MPEP’s analysis is directed towards additional elements of the claim, whereas “wherein the warning height is determined by a user’s work tendency” is a mental process which cannot itself render the claim as patent eligible.
Accordingly, the claim rejections under § 101 are maintained.
In regards to the claim rejections under § 103, Applicant’s amendments and arguments filed on 3/16/2026 are persuasive – accordingly, the claim rejections under § 103 are withdrawn. See “Allowable Subject Matter” below for detailed discussion.
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 limitations are: “a control unit for calculating maximum heights … wherein the warning height is determined by the control unit” in claim 1 (with dependent claims 3–10) and “activating, by a control unit … detecting, by the control unit … wherein the control unit is configured to receive … determining, by the control unit … outputting, by an electrical signal of the control unit” in claim 11 (with dependent claims 12–14).
There appears to be no corresponding structure in the specification as performing the claimed functions of the “control unit” — see CLAIM REJECTIONS—35 U.S.C. § 112 section below.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have 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 U.S.C. § 112
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1 and 3-14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1 and 11, claim limitations “a control unit for calculating maximum heights … wherein the warning height is determined by the control unit” and “activating, by a control unit … detecting, by the control unit … wherein the control unit is configured to receive … determining, by the control unit … outputting, by an electrical signal of the control unit” are limitations that invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for some of the claimed functions. Applicant’s Specification at most discloses that the control unit is capable of performing the claimed functions, but fails to provide sufficient structure (e.g., a processor, CPU, or the like) for performing the claimed functions. Therefore, claims 1 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Claims 3–10 depend from claim 1. Claims 12–14 depend from claim 11.
Therefore, claims 1 and 3–14 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph.
Appropriate correction is required.
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.
As to claims 1 and 11, claim limitations “a control unit for calculating maximum heights … wherein the warning height is determined by the control unit” and “activating, by a control unit … detecting, by the control unit … wherein the control unit is configured to receive … determining, by the control unit … outputting, by an electrical signal of the control unit” are limitations that invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for some of the claimed functions. Applicant’s Specification at most discloses that the control unit is capable of performing the claimed functions, but fails to provide sufficient structure (e.g., a processor, CPU, or the like) for performing the claimed functions. Therefore, claims 1 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claims 3–10 depend from claim 1. Claims 12–14 depend from claim 11.
Therefore, claims 1 and 3–14 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph.
Appropriate correction is required.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. § 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR § 1.75(d) and MPEP §§ 608.01(o) and 2181.
CLAIM REJECTIONS—35 U.S.C. § 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(s) 1 and 3-14 is/are rejected under 35 U.S.C. § 101 because the claims fail to pass the Alice/Mayo test for determining patent eligibility.
The patent eligibility test is performed below for independent claims 1 and 11.
Step 1—Does the claim fall within a statutory category?
Claim 1: Yes, the claim recites a machine or manufacture
Claim 11: Yes, the claim recites a process.
Step 2A, Prong One—Is a judicial exception recited?
Claims 1 and 11 are provided below with the abstract idea indicated in bold and additional elements without bold.
1. An excavator, comprising:
a display device for displaying shapes of a boom, an arm, and a bucket of an excavator and a terrain where the excavator is located;
a control unit for calculating maximum heights of the boom, the arm, and the bucket from a ground using a sensor unit and configured to receive electrical signals corresponding to an angle of the boom, an angle of the arm, and an angle of the bucket from the sensor unit, the sensor unit comprising a first angle sensor configured to detect an angle of the boom, a second angle sensor configured to detect an angle of the arm, and a third angle sensor configured to detect an angle of the bucket;
a limit height setting unit which is provided in the display device and in which a limit height required for work in the terrain where the excavator is located is set by an electrical signal to the control unit by a user; and
a warning height setting unit which is provided in the display device and in which a warning height lower than the limit height is set by an electrical signal to the control unit,
wherein the display device is configured to display the limit height and the warning height together with the terrain where the excavator is located, and
wherein the warning height is determined by the control unit using information on a user's work tendency.
11. A control method of an excavator, the control method comprising:
activating, by a control unit, a height limit alarm unit of an excavator, wherein the control unit is configured to operate the height alarm unit;
thereafter, setting a limit height in a limit height setting unit and a warning height in a warning height setting unit to the control unit, wherein the control unit is configured to receive electrical signals from the limit height setting unit and the warning height setting unit;
thereafter, detecting, by the control unit using a sensor unit, a height of each of a boom, an arm, and a bucket, wherein the control unit is configured to receive electrical signals corresponding to an angle of the boom, an angle of the arm, and an angle of the bucket from the sensor unit, the sensor unit comprising a first angle sensor configured to detect an angle of the boom, a second angle sensor configured to detect an angle of the arm, and a third angle sensor configured to detect an angle of the bucket;
thereafter, determining, by the control unit, whether the height of the boom, the arm, or the bucket is located in a warning area; and
when the control unit determines that the height of the boom, the arm, or the bucket is located in the warning area, outputting, by an electrical signal of the control unit, a first warning signal for display on a display device,
wherein the warning height is determined by the control unit using information on a user's work tendency.
The above shows: yes, a judicial exception is recited. But for the additional elements, the claim limitations pertaining to setting certain heights and performing determinations are processes which can practically be performed in the human mind with or without the use of a physical aid. Specifically, the broadest reasonable interpretation (BRI) of the claim encompasses evaluating whether a height constitutes a limit height or a warning height, judging whether a detected height meets or exceeds a limit or warning height and judging a warning height based on information relating to a user’s work tendency. The courts have held such forms of observation, evaluation, judgment, or opinion to represent the abstract idea of a mental process. As a result, the bolded limitations represent a mental process. Hence, the claim recites an abstract idea. (See MPEP § 2106.04(a)(2)(C)(III).)
Step 2A, Prong Two—Is the abstract idea integrated into a practical application?
No. The claims as a whole merely use generic computer components—i.e., a control unit, limit height setting unit, warning height setting unit, sensing unit and display unit—that are recited at a high level of generality such that they cannot be considered more than mere instructions to apply the judicial exception using generic computer components. Therefore, the abstract idea is not integrated into a practical application.
Step 2B—Does the claim provide an inventive concept?
No. The additional elements of the claims amount to:
Insignificant pre-solution activity in the form of mere data gathering performed through generic computing components:
wherein the control unit is configured to receive electrical signals from the limit height setting unit and the warning height setting unit; and
detecting, by the control unit using a sensor unit, a height of each of a boom, an arm, and a bucket, wherein the control unit is configured to receive electrical signals corresponding to an angle of the boom, an angle of the arm, and an angle of the bucket from the sensor unit, the sensor unit comprising a first angle sensor configured to detect an angle of the boom, a second angle sensor configured to detect an angle of the arm, and a third angle sensor configured to detect an angle of the bucket.
Insignificant post-solution activity in the form of well-understood and conventional activity carried out by generic computing components:
activating a height limit alarm unit of an excavator, wherein the control unit is configured to operate the height alarm unit;
outputting a first warning signal to a display;
a display device for displaying shapes of a boom, an arm, and a bucket of an excavator and a terrain where the excavator is located; and
wherein the display device is configured to display the limit height and the warning height together with the terrain where the excavator is located.
Claims 3–10 depend from claim 1 but do not render the claimed invention patent eligible because they are directed to additional mental steps—i.e., performing further determinations and calculations; or insignificant extra-solution activity—i.e., performing further displays, operating an alarm unit.
Claims 12–14 depend from claim 11 but do not render the claimed invention patent eligible because they are directed to additional mental steps—i.e., performing further determinations; or insignificant extra-solution activity—i.e., outputting a second warning signal and detecting maximum heights (a form of gathering data).
Claims 11–14 do not pass the patent eligibility test. Accordingly, claims 11–14 are rejected under § 101.
ALLOWABLE SUBJECT MATTER
Claims 1 and 3-14 are allowable over the prior art of record and would be allowed if the 112(a),(b) and 101 issues are resolved. The following references are made of record:
Kobayashi et al. (US20220375157A1; “Kobayashi”)
Nishi (US2021270013A1; “Nishi”)
As to amended claims 1 and 11, previously-cited Junichi discloses: a control unit for calculating maximum heights of the boom, the arm, and the bucket from the ground and configured to receive electrical signals corresponding to an angle of the boom, an angle of the arm, and an angle of the bucket from the sensor unit, the sensor unit comprising a first angle sensor configured to detect an angle of the boom, a second angle sensor configured to detect an angle of the arm, and a third angle sensor configured to detect an angle of the bucket (“The boom 4, arm 5, and bucket 6 constitute an excavation attachment.” See at least ¶ 10. The “height H2 of the excavation attachment” may be obtained – see at least ¶ 11 and FIG. 1. “A boom angle sensor S1 is attached to the boom 4, an arm angle sensor S2 is attached to the arm 5, and a bucket angle sensor S3 is attached to the bucket 6.” ¶ 13.).
The cited prior art of record fails to disclose: wherein the warning height is determined by the control unit using information on a user’s work tendency.
Havnør discloses: adapting a warning region based on a vehicle’s position (“The visualization of the risk zone is dynamically adapted to … changes of the mining vehicle[’]s position relative to the person.” See at least ¶ 17. “The visualization of the risk zone 6 is dynamically adapted to … the relative position of the mining vehicle 1 relative to the person, for example by a continuous determination of … and/or relative position with sensor means as described below. The risk zone 6 then is calculated and displayed renewed, whereby the steps of recognizing of the vehicle and extracting image data of it are optionally additionally based on previous pictures as pre-information, which may facilitate or quicken image processing resp. the process.” ¶ 54.).
Examiner agrees that the foregoing does not disclose determining a warning region based on a user’s work tendency.
Kobayashi discloses: determining a user’s work tendency in relation to a warning region (“The transmission unit 213 transmits the data indicating the history of the states of the work machine 100 when the warning is issued (hereinafter referred to as ‘warning history data’) and the position history data during the operation to the report generation device 300. … The history data transmitted by the transmission unit 213 includes identification information of the operator who manipulates the work machine 100.” ¶ 50.).
However, Kobayashi is silent as to utilizing the user’s work tendency to determine a warning region, never mind a warning height.
Nishi discloses: determine that a warning height has been met by the control unit using information on a user’s work tendency (“This enables the shovel motion predicting part 303A to identify, for example, an operator movement pattern in the case where a predetermined motion for which an alert is issued is going to be performed from the relationship between the past movement details of the operator and motion details of the shovel 100. Accordingly, the shovel motion predicting part 303A can specifically predict the motion of the shovel 100 based on whether a movement corresponding to the identified operation pattern has been made by the operator by monitoring the movement of the operator.” ¶ 163. “In the case of crane work pattern, the motion section end determining condition with respect to the hoisting motion section serving as an immediately preceding motion section is that ‘the rising motion of the boom 4 has stopped at a position higher than a predetermined height.’” ¶ 130. “At step S108B, the outside alerting part 304 starts issuing an alert indicating that a prediction target motion, namely, the swing motion or traveling motion of the shovel 100, is going to be performed to the outside of (the area surrounding) the shovel 100 by outputting a sound output command to the external sound output device 48.” ¶ 131.).
However, like Kobayashi, Nishi is silent as to utilizing the user’s work tendency to determine a warning region, never mind a warning height.
Accordingly, the prior art neither discloses nor renders obvious claims 1 and 11. Therefore, claims 1 and 11 are allowable over the prior art of record. Claims 3-10 are allowable by virtue of their dependency on claim 1, and claims 12-14 are allowable by virtue of their dependency on claim 11.
Hence, claims 1 and 3-14 are allowable over the prior art of record.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mario C. Gonzalez whose telephone number is (571) 272-5633. The Examiner can normally be reached M–F, 10:00–6:00 ET.
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, Fadey S. Jabr, can be reached on (571) 272-1516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIO C GONZALEZ/Examiner, Art Unit 3668
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