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 .
Response to Arguments
Applicant's arguments filed 17 September 2025 have been fully considered but they are persuasive only in part.
First, applicant argues that the drawing objection is in error because the “manipulation lever” which is specified in the claims (and which is apparently not shown in the drawings (37 CFR 1.83(a)) “is part of the cockpit 13 (see at least para. [0013]), which is shown throughout the drawings”. This argument is not persuasive, since applicant does not claim a “cab” as a feature but rather a “manipulation lever” as the feature, and the feature specified in the claims is not shown in the drawings. See 37 CFR 1.83(a). The objection is therefore only modified to reflect the cancelation of e.g., claims 6, 12, and 18.
Second, the examiner reformulates his Claim Interpretation under 35 U.S.C. 112(f), in view of applicant’s claim amendments.
Third, in view of applicant’s claim amendments, the objection to claim 8 is withdrawn and the duplicate claim warning is rendered moot. However, the claim amendments cause a new objection to claim 7, for minor informalities (e.g., missing grammatical articles).
Fourth, applicant offers no apparent argument as to why the claim amendments resolve the issues previously noted under 35 U.S.C. 112(a), description requirement, and 35 U.S.C. 112(b). Accordingly, the examiner institutes (or re-institutes) rejections in this regard to the extent appropriate.
Fifth, regarding the rejection under 35 U.S.C. 101, the examiner notes that the new claim limitations regarding the actuator that “operate[s]” the manipulation lever and the “causing the manipulation lever to displace through the actuator” are apparently indefinite and recited at a high level of generality so as to possibly constitute only insignificant (e.g., pre-solution) activity, and as such the examiner does not believe that they can integrate the abstract idea into a practical application. For example, were applicant to additionally recite a particular (e.g., construction) machine that applies the judicial exception, or the effecting a transformation or reduction of a particular article to a different state or thing, this would be looked on by the examiner as being indicative of integration into a practical application. Accordingly, applicant’s arguments are not (yet) persuasive in this respect.
Accordingly, applicant’s arguments are only persuasive in part.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the manipulation lever must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement sheets which incorporate the desired changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments section, or remarks, section of the amendment paper. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). A replacement sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheet(s) must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
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.
[The Claim Interpretation Section is divided into two parts, I and II, below:]
I. 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.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term (e.g., “unit” in the amended claims; see MPEP 2181) used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: the initial motion input model generation unit and the feedback control unit in claim 7.
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.
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.
II. A claim limitation that explicitly uses the term “means” or “step” creates a rebuttable presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f). Use of the phrase “step of” rather than “step for” tends to show that § 112(f) does not apply.1 Additionally, use of action words in the limitations (e.g., such as gerunds ending in --ing, including e.g., “generating”, “computing”, etc.) rebuts the presumption that § 112(f) applies.2
Accordingly, the examiner understands that any presumption that “step[s]” recited in claim 1, as well as in the dependent claims 3, etc., is/are to be interpreted § 112(f) has been rebutted, and the examiner does not interpret the “step[s]” in these claims under § 112(f).
Claim (Specification) Objections
Claim 7 is objected to because of the following informalities: in claim 7, lines 2 and 5, an indefinite article should be used, for grammatical correctness, to introduce the (now singular) claim elements (e.g., “an initial motion input model generation unit” and “a feedback control unit”). Appropriate correction is required.
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.
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.
Claims 1, 2, 4, 5, 7, 8, 10, and 11 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 claim(s) contains 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 a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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Regarding claims 1 and 7, applicant apparently has not described, in sufficient detail, by what algorithm(s)3, or by what steps or procedure4, he caused the initial motion input model generation step (of claim 1) or the initial motion input model generation unit (of claim 7) to generate any or all initial motion input models for computing any or all initial motion input values at which any or all movable parts of a construction machine is/are caused to start to move. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of the full scope5 of the claimed invention, but has only, if anything, described a desired result.
For example, applicant discloses at published paragraph [0024] that “an amount of displacement of the manipulation lever of the construction machine 10 provided via the actuator 17 will be referred to as an initial motion input value”. However, applicant has apparently not described, in sufficient detail, any algorithm(s) for achieving the full scope of the claimed function, to generate any or all initial motion input models and to compute initial motion input values (even if limited to actuator displacement of a manipulation lever) for any or all “movable part[s]” of a construction machine, such as a movable/adjustable seat, a steering wheel, a movable crawler, an ignition switch, etc. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of the full scope of the claimed invention, but has only, if anything, described a desired result.
Regarding claims 1 and 7, applicant apparently has not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he caused the feedback control step (of claim 1) or the feedback control unit (of claim 7) to compute the initial motion input value that corresponds to “a state of the movable part” using the initial motion input model and determine a control input value equal to or larger than the initial motion input value. No algorithm(s) for determining the corresponding initial motion input value for any or all “state[s] of the movable part” is/are apparently described, in sufficient detail, and no algorithm(s) for determining the control input value are apparently described, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of the full scope of the claimed invention, but has only, if anything, described a desired result.
In this respect, see e.g., MPEP 2161.01, I., which indicates, “[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
See also e.g., MPEP 2163, I., A. which indicates, “However, as discussed in subsection I, supra, issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing. . . . An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.”
See also MPEP 2163.03, V. which indicates, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Claims 1, 2, 4, 5, 7, 8, 10, and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, lines 2ff, the “initial motion input model generation step . . .” is indefinite from the teachings of the specification which does not describe, in sufficient detail, by what algorithm(s) the initial motion input model is generated or what the model is particularly, in order to model the movable part, and by what algorithm(s) the step computes the initial motion value for the movable part in the construction machine, so that the metes and bounds of the full scope of the step may be determined/determinable by those skilled in the art, with reasonable certainty.6
In claim 1, line 3, and in claim 7, line 3, “an initial motion input value” is indefinite in the claim context without any reasonably certain metes and bounds. It is not reasonably certain from the teachings of the specification and the prosecution history whether the statement at published paragraph [0024] that, according to the first example embodiment[7], “an amount of displacement of the manipulation lever of the construction machine 10 provided via the actuator 17 will be referred to as an initial motion input value” is intended to limit the claim scope or not. For example, could this value be a time of day at which the movable part starts to move, a speed at which the movable part starts to move, an elevation at which the movable part starts to move, an ambient temperature at which the movable part starts to move, a stock market value at which the movable part, a number of patent examiners working at the USPTO when the movable part starts to move, etc.? Additionally, “input” and “initial motion” is unclear from the claim context (e.g., input to what particularly, “initial” defined particularly how, e.g., first motion in the morning, first motion after entry into service of the new machine/backhoe, etc.?), and “motion” of what particularly?
In claim 1, lines 6ff, “feedback control step . . .” is indefinite from the teachings of the specification which does not describe, in sufficient detail, by what algorithm(s) the feedback control step computed the initial motion input value (for any or all movable parts in the construction machine such as a movable/adjustable seat, a steering wheel, a movable crawler, an ignition switch, etc.) that corresponded to the state of the movable part and determined a control input value equal to or larger than the initial motion input value, so that the metes and bounds of (the full scope of) the step may be determined by those skilled in the art, with reasonable certainty.
In claim 1, line 7, and in claim 7, line 7, “a control input value . . .” is indefinite in the claim context without any reasonably certain metes and bounds (e.g., “control” in what respect, particularly, “input” to what, particularly, value of what, particularly, etc.?)
In claim 1, lines 8ff, and in claim 7, lines 8ff, “and is provided to an actuator for causing a manipulation lever for actuating a moveable part to operate” is fully indefinite in the claim context and from the teachings of the specification. For example, the examiner cannot determine from the claim context and grammar what might be “provided to an actuator” or what it might mean that the manipulation lever is “caused . . . to operate” e.g., when the specification apparently refers to no operation of the manipulation lever (see e.g., published paragraphs [0007] and [0024]), and the drawings do not even show the manipulation lever or how the lever might possibly interact with and/or be attached to the actuator 17. Additionally, this claim phrase is unclear for reciting “a movable part” when the claim has previously recited both “a movable part” and “the movable part”. It is unclear whether the “movable part” recited in this claim phrase is the same as, different from, permissively the same as, permissively different from, necessarily the same as, necessarily different from, etc. the previously recited “movable part” in the claim.
In claim 1, lines 12ff, in claim 1, lines 18ff, in claim 7, lines 11ff, and in claim 7, lines 18ff (four occurrences total), “measuring, by causing the manipulation lever to displace through the actuator, an amount of displacement of the manipulation lever acquired from the actuator” is indefinite in the claim context and from the teachings of the specification (e.g., particularly how can the act of “measuring” possibly be effected “by causing the manipulation lever to displace through the actuator” [and what does “displace through the actuator” mean?] and particularly how is the displacement of the manipulation lever “acquired from the actuator”?)
In claim 1, lines 24ff, and in claim 7, lines 25ff, “that derives the initial motion input value corresponding to a desired state of the movable part that is between the first state and the second state and complements between” is indefinite and not reasonably certain from the teachings of the specification, including the equations, and in the claim context (e.g., what is “a desired state”, since no “desired state” is apparently referred to or clarified in the specification, what does “complements between” signify, with reasonable certainty, from the teachings of the specification, etc.?)
In claim 1, line 31, and in claim 7, line 31, “a current state” is indefinite in the claim context without reasonably certain metes and bounds (e.g., current state in what respect based on the positional information and in the context of updating the value?)
In claim 1, line 33, and in claim 7, line 33, “updating the initial motion input value that corresponds to the current state . . .” is indefinite (e.g., no updated “input value” apparently corresponds to any “current state” or state of the movable part in the specification).
In claim 1, lines 35ff, and in claim 7, lines 35ff, “error update [step or processing] of updating the error between the current state and a target state of the movable part” is indefinite in the claim context (with “current state” and “target state” both being unclear) and with insufficient antecedent bases both in the claim and specification for “the error”.
In claim 1, lines 35ff, and in claim 7, line 36, “target state” is indefinite in the claim context and from the teachings of the specification (e.g., target defined particularly how and is this different from the “desired state” of the independent claims? If so, how particularly? If not, why are two different phrases being used for the same thing?)
In claim 11, lines 1ff, “the initial motion input model generation processing” apparently has no proper antecedent basis and is unclear.
Claim limitation “initial motion input model generation unit” and “feedback control unit” (claim 7) 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. For example, it is not described, in sufficient detail, by what algorithm(s) the initial motion input model is generated by the unit or what the model is particularly, and by what algorithm(s) the unit (or possibly the model) computes the initial motion value for any or all movable parts in the construction machine, so that the metes and bounds of (the full scope of) those algorithm(s) and their equivalents may be determined by those skilled in the art, with reasonable certainty. Similarly, it is not described, in sufficient detail, by what algorithm(s) the feedback control unit computed the initial motion input value (for any or all movable parts in the construction machine) that corresponded to a state of the movable part using the initial motion input model and determined a control input value equal to or larger than the initial motion input value . . ., so that the metes and bounds of (the full scope of) those algorithm(s) and their equivalents may be determined by those skilled in the art, with reasonable certainty. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) 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;
(b) 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
(c) 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:
(a) 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
(b) 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(s) depending from claims expressly noted above are also rejected under 35 U.S.C. 112 by/for reason of their dependency from a noted claim that is rejected under 35 U.S.C. 112, for the reasons given.
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, 2, 4, 5, 7, 8, 10, and 11 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.
Step 1 and Step 2A, Prong I:
Claim(s) 1, 2, 4, 5, 7, 8, 10, and 11 , while (each) reciting a statutory category of invention defined in 35 U.S.C. 101 (a useful process, machine, manufacture, or composition of matter), is/are directed to an abstract idea, which is a judicial exception, the recited abstract idea being that of generating (in /with an initial motion model generation step/unit) an initial motion input model for computing an initial motion input value that corresponds to a state of a movable part using the model and also computing the initial motion input value (in/with a feedback control step/unit) and determining a control input value equal to or larger than the initial motion input value, e.g., by performing or providing computer units for performing: an initial motion input model generation step of generating an initial motion input model for computing an initial motion input value at which a movable part of a construction machine is caused to start to move; and a feedback control step of computing the initial motion input value that corresponds to a state of the movable part using the initial motion input model and determining a control input value equal to or larger than the initial motion input value and is provided to an actuator for causing a manipulation lever for actuating a moveable part to operate, wherein the initial motion input model generation step comprises, implementing on a computer: a first initial motion input value measurement step of measuring, by causing the manipulation lever to displace through the actuator, an amount of displacement of the manipulation lever acquired from the actuator as a first initial motion measurement value at a timing at which the movable part is caused to start to move in a first state in which the movable part is controlled to a first position within a movable range of the movable part; a second initial motion input value measurement step of measuring, by causing the manipulation lever to displace through the actuator, an amount of displacement of the manipulation lever acquired from the actuator as a second initial motion measurement value at a timing at which the movable part is caused to start to move in a second state in which the movable part is controlled to a second position that is different from the first position within the movable range of the movable part; and a model generation step of generating the initial motion input model that derives the initial motion input value corresponding to a desired state of the movable part that is between the first state and the second state and complements between the first initial motion measurement value and the second initial motion measurement value, wherein the feedback control step comprises: an initial motion input update step of acquiring a current state of the movable part based on positional information of the movable part of the construction machine and updating the initial motion input value that corresponds to the current state by the value computed using the initial motion input model; an error update step of updating the error between the current state and a target state of the movable part after the movable part has been displaced based on the control input value; and a control input computation step of receiving the error and the initial motion input value and computing the control input value that reduces the error, and providing the computed control input value to the construction machine; wherein in the first initial motion input value measurement step, an input value is provided for the construction machine in such a way that the movable part moves in each of a positive direction of the movable part and a negative direction of the movable part with respect to the movable part which is in the first state, and the first initial motion measurement value is measured for each of the positive direction and the negative direction, in the second initial motion input value measurement step, an input value is provided for the construction machine in such a way that the movable part moves in each of the positive direction of the movable part and the negative direction of the movable part with respect to the movable part which is in the second state, and the second initial motion measurement value is measured for each of the positive direction and the negative direction, and the model generation step includes a control input computation step of generating the initial motion input model using the first initial motion measurement value of the positive direction, the first initial motion measurement value of the negative direction, the second initial motion measurement value of the positive direction, and the second initial motion measurement value of the negative direction; wherein, in the error update step, when a work instruction for instructing a work to be performed by the construction machine has been updated, a parameter update step of updating a control parameter including a target posture of the construction machine is performed; and wherein the initial motion input model generation step generates the initial motion input model in a period other than an operation period during which the construction machine performs work.
This abstract idea falls within the grouping(s) of mathematical concepts, mental processes, and/or certain methods of organizing human activity, distilled from case law, because the model generation, the computing of values, and the determining of values are mathematical concepts and also could be practically performed in the human mind using the simple equations in applicant’s specification, e.g., aided by a pen/pencil and paper.8 See MPEP 2106.04(a)(2), III. and 2106.04(a)(2), III., B. and C.
Step 2A, Prong II and Step 2B:
Additionally, applying a preponderance of the evidence standard, the abstract idea is not integrated (e.g., at Step 2A, Prong II) by the recitation of additional elements/limitations into a practical application (using the considerations set forth in MPEP §§ 2106.04(d), 2106.05(a)-(c) and (e)-(h)) because merely using a computer as a tool (e.g., to implement the claimed initial motion input model generation and feedback control units) to perform an abstract idea/steps or adding the words “apply it” (e.g., “for a construction machine”) is not integrating the idea into a practical application of the idea, and e.g., looking at the claim as a whole and considering any additional elements/limitations individually and in combination, no (additional) particular machine, transformation, improvement to the functioning of a computer or an existing technological process or technical field, or meaningful application of the idea, beyond generally linking the idea to a technological environment (e.g., "implementation via computers", Alice; or to a construction machine including a manipulation lever) or adding insignificant extra-solution activity (measuring or providing values or amounts, e.g., by causing the manipulation lever to displace through the actuator, whatever that may cover and encompass), is recited in or encompassed by the claims.
Moreover, applying a preponderance of the evidence standard, the claim(s) does/do not include additional elements/limitations/steps (e.g., at Step 2B) that are, individually or in ordered combination, sufficient to amount to significantly more than the judicial exception because the elements/limitations/steps are recited at a high level of generality (e.g., measurement steps, a feedback control step to determine a control input value, a construction machine having a manipulation lever, etc.) so as to not favor eligibility (MPEP 2106.05(d)) and/or are used e.g., for data/information gathering only or for other activities that were well-understood, routine, and conventional activity in the industry, for example as indicated in applicant's specification at published paragraphs [0002] to [0005], and moreover, the generically recited computer elements (e.g., the initial motion input model generation and feedback control units, the processing resources, etc.; see e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 110 USPQ2d 1984 (2014); buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 115 USPQ2d 1090 (Fed. Cir. 2015); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362; Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-1355, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Mobile Acuity, Ltd. v. Blippar Ltd., Case No. 22-2216 (Fed. Cir. Aug. 6, 2024); see also the 2019 PEG Advanced Module at pages 89, 145, etc.), Parker v. Flook, 437 U.S. 584 (1978), do not add a meaningful limitation to the abstract idea because their use would be routine (and conventional) in any computer implementation of the idea.
See, for example only, Footnote 18 in Parker v. Flook, 437 U.S. 584 (1978), where the Court held:
“[Appellant] claim[s] that his mathematical algorithm, when related to a computer program, will improve the existing process for updating alarm units. Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.”
Applicant may allege that he claims an “improved” method of determining/computing a “control input value” that is (perhaps in some unclaimed way as post-solution activity) “for the construction machine” (e.g., claims 3, 9, and 15). This is unpatentable subject matter under § 101.9 Moreover, an improved abstract idea is still an ineligible abstract idea. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a *new* abstract idea is still an abstract idea") (emphasis in original). Even if the steps are groundbreaking, innovative, or brilliant, the improvement is to the abstract idea rather than to computers or technology. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., 898 F.3d at 1163 (“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting.”)
See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.")
Moreover, limiting or linking the use of the idea to a particular technological environment (e.g., a construction machine having a manipulation lever and a movable part, etc.) is not enough to transform the abstract idea into a patent-eligible invention (Flook[10]) e.g., because the preemptive effect of the claims on the idea within the field of use would be broad.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 David A Testardi whose telephone number is (571)270-7876. The examiner can normally be reached Monday, Tuesday, Thursday, 8:30am - 5:30pm E.T., and Friday, 8:30 am - 12:30 pm E.T.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 See e.g., https://www.uspto.gov/sites/default/files/documents/112f-memo.pdf
2 See slide 9 at: https://ptoweb.uspto.gov/patents/exTrain/documents/112f-cbt-slides.pdf
3 See the 2019 35 U.S.C. 112 Compliance Federal Register Notice (Federal Register, Vol. 84, No. 4, Monday, January 7, 2019, pages 57 to 63). See also http://ptoweb.uspto.gov/patents/exTrain/documents/2019-112-guidance-initiative.pptx . Quoting the FR Notice at pages 61 and 62, "The Federal Circuit emphasized that ‘‘[t]he written description requirement is not met if the specification merely describes a ‘desired result.’ ’’ Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). . . . When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as 'a finite sequence of steps for solving a logical or mathematical problem or performing a task.' Microsoft Computer Dictionary (5th ed., 2002). Applicant may 'express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.' Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682–83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I."
4 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
5 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
6 See Nautilus, Inc. v. Biosig Instruments, Inc. (U.S. Supreme Court, 2014) which held, "A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." See also In re Packard, 751 F.3d 1307 (Fed.Cir.2014)(“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”) and Ex Parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017, Precedential) (“Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”)
7 E.g., which the examiner would normally assume the claims are not limited to.
8 See MPEP 2106.04, II., A., 2., “See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract")”
9 Quoting Parker v. Flook, 437 U.S. 584 (1978), “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques. The concept of patentable subject matter under 101 is not "like a nose of wax which may be turned and twisted in any direction . . . ." White v. Dunbar, 119 U.S. 47, 51.”
10 See e.g., Bilski v. Kappos, 561 U.S. 593 (“Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable.”)
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