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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/6/26 has been entered.
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 16-20 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.
Claims 16-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being.
In regard to Claims 16 and 18-19, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); in terms of the Applicant claiming:
[a]n action control method […] the action control method comprising […]:
acquiring [data regarding] an external stimulus applied [by] a subject;
calculating a touch characteristic parameter or a voice characteristic parameter of the [data regarding the] acquired external stimulus;
storing the calculated touch characteristic parameter or the calculated voice characteristic parameter […] as a stored parameter on a first-in first-out basis;
calculating, for each of stored parameters of a plurality of the stored parameters previously stored, a similarity between the stored parameter and the calculated touch characteristic parameter or the calculated voice characteristic parameter that is a current characteristic parameter, the stored parameters being stored as a more recent history […];
counting, as a counter variable for counting, a number of stored parameters, among the stored parameters stored in the history buffer, that are each larger than or equal to a predetermined threshold in the corresponding calculated similarity;
determining, based on a comparison between a ratio of the counted counter variable to a total number of the stored parameters stored in the history buffer and a predetermined threshold, an intimacy [felt by] the subject applying the external stimulus […];
selecting, in accordance with the determined intimacy, as an action mode […] a normal action mode or an intimate action mode different from the normal action mode;
in response to selecting the intimate action mode, setting a duration of the intimate action mode such that a longer duration is set when a level of the determined intimacy is higher with respect to the multiple levels of the intimacy that are set in advance; and
[…] execut[ing] an action in the intimate action mode by a time length of the set duration and transition to the normal action mode upon elapse of the set duration.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a pet robot comprising a processor, a sensor, a twist motor, a vertical motor, a memory; and/or embodying Applicant’s abstract idea as computer code, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a pet robot comprising a processor, a sensor, a twist motor, a vertical motor, a memory; and/or embodying Applicant’s abstract idea as computer code, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1-2 in Applicant’s specification and text regarding same; see also, e.g., p31 specifically regarding the claimed twist and vertical motors.
Response to Arguments
Applicant argues on page 8 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. Merely performing an output that involves “physical control” of a device does not necessarily claim “significantly more” in regard to the Mayo test. See, e.g., the physical computer displays claimed in Electric Power Group, University of Florida Research Foundation, and Yousician (non-precedential). See also, e.g., the manufacturing machine held by the CAFC to not render “significantly more” in Ficep v. Peddinghaus (2022-1590; 8/21/23):
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Id., slip. op., page 5.
Applicant also argues on pages 9-10 of its Remarks that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient.
Applicant argues on page 10 that it claims eligible subject matter under the Mayo test because its claimed invention “eliminates the need for excessive storage space”. Applicant’s argument is not persuasive because to the extent that when embodied as computer code Applicant’s claimed abstract idea may require less computer storage to execute than some other abstract idea also rendered as computer code is merely an artifact of this computerized embodiment and not any generally applicable improvement to, e.g., Applicant’s claimed “memory” or “processor”. In other words, Applicant’s claimed invention does not, e.g., result in these devices generally being able to, e.g., run faster, use less power, and/or be manufactured more cheaply. If Applicant’s argument was correct then any claim directed to employing no storage whatsoever would necessarily be patent eligible because it would, likewise, be an (alleged) improvement to “data storage efficiency”, but that would non-sensical. Applicant’s similar argument made on page 11 of its Remarks in regard to battery consumption is likewise non-persuasive for similar reasons. In terms of, Applicant’s claimed invention does not improve the life of any battery generally (in fact, no batter is even claimed). And to the extent that Applicant’s abstract idea when embodied as computer code and executed by a device that employs a battery may use less of that battery is merely an artifact of Applicant’s computerized embodiment.
Applicant also argues on page 11 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. There is nothing specific either about Applicant’s claimed motors or the manner in which they are employed. Applicant discloses no detail in regard to how to make and/or use its claimed “twist motor” and/or “vertical motor”, indicating that they must be well-known, routine, and conventional and thereby do not render “significantly more” when added to Applicant’s abstract idea. In other words, Applicant’s claimed invention does not improve these motors in any way in terms of, e.g., allowing them to use less power, be operated more precisely, be manufacture more cheaply, etc. Instead, Applicant claims the motors to perform what every motor performs, namely, moving something. And to the extent that a human being might find the actions of the pet robot to be enjoyable (“enable more life-like behavior”) which results from motor moving, such improvements to human happiness are not patent eligible under the Mayo test. See, e.g., the CAFC’s decision in USAA v. PNC Bank (2023-1639; 6/12/25):
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Id., slip. op., page 9.
Therefore, the rejections made under 35 USC 101 are maintained.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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