DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. This action is responsive to the following communication: a non-provisional Application filed on December 12, 2023 and a Response to Election/Restriction filed on May 11, 2026. This application claims a foreign priority to JP2022-200121, filed on December 15, 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 (see certified copy received on January 16, 2024), and thus the effective filing date of the instant claims is December 15, 2021.
Information Disclosure Statement
3. The examiner acknowledges the information disclosure statement (IDS) submitted on December 22, 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
4. Claims 1-19 are pending in the case; Claims 1, 16, and 18 are independent claims. In the Claim Amendments accompanying the Response to Election/Restriction filed on May 11, 2026, Claims 8, 17, and 19 were amended (see § Election/Restriction, below). This action is made non-final.
Election/Restriction
5. In the Requirement for Restriction/Election mailed on March 17, 2026, a restriction was required between Group I (Claims 1-7, 13-16, and 18) and Group II (Claims 8-12, 17, and 19). In the Response to Election/Restriction filed on May 11, 2026, the applicant has amended previously independent Claims 8, 17, and 19 of Group II to make them dependent upon independent Claims 1, 16, and 18 of Group I, respectively. Since all of the pending claims now appear to be directed to a single invention, the restriction requirement is withdrawn.
Claim Interpretation – 35 U.S.C. § 112(f)
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 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) 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):
(A) the claim limitation uses the term “means” or “step” or a term 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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), except as otherwise indicated in the 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), except as otherwise indicated in the 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) 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: “an operation unit for operating the work machine,” in Claim 1 (and similarly, in Claims 16 and 18).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), 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 limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 1-3, 13-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Takahiro et al. (hereinafter Takahiro), JP 7170110 B2, published on November 11, 2022 (note that Examiner is relying upon a machine translation of Takahiro provided by the applicant in IDS filed on December 22, 2024).
With respect to independent Claim 1, Takahiro teaches an operation control method executing:
causing a work machine to execute a first action when an operation unit for operating the work machine is operated by a user in a state where a first display screen relating to automatic steering of the work machine is displayed on an operation terminal; and not causing the work machine to execute the first action when the operation unit is operated by a user in a state where a second display screen different from the first display screen is displayed on the operation terminal (see ¶¶ 0023, 0041, 0046, 0048, showing an automatic travel start icon that can be either colored (first display) or grayed out (second display) depending on the transition condition (i.e., state), where automatic travel mode is started when the colored icon is pressed, but it is not started if the grayed out icon is pressed).
It is noted that a display screen having a colored icon (i.e., icon 35c of Takahiro) is different from a screen having a grayed out icon. In addition, a skilled artisan would understand that the automatic travel mode is related to automatic steering, as recited in the claim.
With respect to dependent Claim 2, Takahiro teaches the operation control method according to claim 1, as discussed above, and further teaches wherein the operation unit is an operation unit that accepts an operation to start automatic steering of the work machine from a user, causes the work machine to execute automatic steering when the operation unit is operated by a user in a state where the first display screen is displayed on the operation terminal, and does not cause the work machine to execute automatic steering when the operation unit is operated by a user in a state where the second display screen is displayed on the operation terminal (see ¶¶ 0023, 0041, 0046, 0048).
With respect to dependent Claim 3, Takahiro teaches the operation control method according to claim 2, as discussed above, and further teaches wherein the work machine is caused to execute automatic steering if a predetermined condition for starting automatic steering is satisfied when the operation unit is operated by a user in a state where the first display screen is displayed on the operation terminal, and the work machine is not caused to execute automatic steering even if the predetermined condition is satisfied when the operation unit is operated by a user in a state where the second display screen is displayed on the operation terminal (see ¶¶ 0023, 0041, 0046, 0048).
With respect to dependent Claim 13, Takahiro teaches the operation control method according to claim 1, as discussed above, and further teaches wherein the first display screen includes an operation object that accepts a user operation relating to generation of a target route for the automatic steering, and a function assigned to the operation object is switched in accordance with at least one of a generation status of the target route and an operation status of the work machine (see ¶¶ 0041, 0045).
With respect to dependent Claim 14, Takahiro teaches the operation control method according to claim 13, as discussed above, and further teaches wherein a plurality of functions assignable to the operation object include at least a function of registration operation of a reference point serving as a reference of the target route and a function of deletion operation of the reference point (see Fig. 2).
With respect to dependent Claim 15, Takahiro teaches the operation control method according to claim 13, as discussed above, and further teaches wherein a display mode of the operation object changes in accordance with a function assigned to the operation object (see ¶¶ 0041, 0045; see also discussion of Claim 1, above).
With respect to Claims 16 and 18, these claims are directed to an operation control system and an operation control program, respectively, and they recite limitations that correspond to the limitations recited in Claim 1, thus they are rejected along the similar rationale as Claim 1, above.
Allowable Subject Matter
7. Claims 4-12, 17, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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, Thomas Worden can be reached on 571-272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658
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