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 .
Prior Art Not Relied Upon
The prior art made of record on the attached PTO-892 and not relied upon in the rejections below are considered pertinent the issue of applicant’s burden to establish possession of the full broad scope of the claimed invention under the written description requirement of 35 USC 112(a). More particularly, a broad controller genus encompasses computer/algorithm controller species and/or mechanical controller species:
Control devices are not necessarily/inherently computer/algorithmic but could also be purely mechanical: US4086710, US20050098236, and US7500758
Control devices using sensors are not necessarily/inherently computer/algorithmic since sensors could be purely mechanical: US5488226, US4394207, US20050177279
Specification
The abstract of the disclosure is objected to for an apparent typographical error. More particularly the last line of the abstract states “The control device is a pump of a variable capacity type that drives the electric motor and changes the discharge capacity of the hydraulic pump”. The written description, drawings and claims disclose the control device (18) as being distinct from the variable capacity pump (32) such that the abstract is misdescriptive of applicant’s invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 1 (from which claims 3, 7 and 8 depend) sets forth limitations that are unclear as to whether or not 35 U.S.C. 112(f) is invoked.
Claim 1 includes claim limitations that do not use the word “means” but nonetheless could be interpreted to invoke 35 U.S.C. 112(f) because the claim uses a generic placeholder “control device” in the same claim as functional language “the operation of the electric motor and the discharge capacity of the hydraulic pump in each of the plurality of drive devices are controlled based on a target value of a position of a corresponding one of the plurality of joints and a result of the detection by the displacement amount detector”. The written description discloses the “control device” as performing the claimed functional language. However, the claim itself fails to expressly specify which claimed element, if any, performs the “controlled” functional language such that it is unclear whether or not the claim invokes 35 USC 112(f).
Because these claim limitations above are unclear as to whether or not they invoke 35 U.S.C. 112(f), it is unclear whether or not they should be interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Furthermore, even if the claim is interpreted to invoke 35 USC 112(f), applicant’s specification fails to properly set forth any detailed description of the control device (purely mechanical, purely computer, both, or other) or explain how (e.g., algorithm details, etc.) the device performs the claimed functions as is detailed in the 35 USC 112(a) and 35 USC 112(b) rejections below.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1, 3, 7 and 8 are rejected under 35 U.S.C. 112(a) 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 a joint inventor, at the time the application was filed, had possession of the claimed invention.
It is unclear whether or not claim 1 invokes 35 USC 112(f) as is detailed in the “Claim Interpretation” section above (incorporated herein by reference). However, the claims fail to comply with the written description requirement regardless of whether or not 35 USC 112(f) is invoked since applicant has failed to establish possession of the claimed invention, in either case, by a reduction to practice, detailed drawings and/or detailed written description. The written description discloses that the “control device” performs the claimed functional language “the operation of the electric motor and the discharge capacity of the hydraulic pump in each of the plurality of drive devices are controlled based on a target value of a position of a corresponding one of the plurality of joints and a result of the detection by the displacement amount detector”. However, the written description fails to describe any details of the “control device” that are sufficient to perform the function. If the “control device” is a computer and algorithmic in nature, then applicant’s burden is to reduce to practice, drawings and/or written description the computer hardware and algorithmic details necessary to perform the claimed functions. If the “control device” is purely mechanical in nature, applicant’s burden under the written description requirement of 35 USC 112(a) is to reduce to practice, drawings and/or written description the mechanical details necessary to perform the functions. Currently, the scope of the claimed “control device” broadly encompasses both mechanical means and/or computer/algorithmic means, whereas applicant has failed to sufficiently describe either. A broad genus omitting particulars of multiple species does not avoid the written description requirement but rather increases the burden since applicant must provide detailed descriptions of a sufficient number of species to establish possession of the full broad scope of the claimed genus (purely mechanical, computer/algorythm, and/or other). See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
For possession of the computer hardware and algorithm species falling within the broad scope of the broadly claimed “controller” genus, see MPEP 2181 II B, which states in various parts:
“An algorithm is defined, for example, as ‘a finite sequence of steps for solving a logical or mathematical problem or performing a task… Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure”
“the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms… A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function… [C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification”
“The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps… language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome… implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported "one-step" algorithm is not an algorithm at all”
“[t]he fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement whereas the question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure’ to satisfy [pre-AIA ] section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function".
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 3, 7 and 8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As detailed in the “Claim Interpretation” section above (incorporated herein by reference) it is unclear whether or not 35 USC 112(f) is invoked. The claim recites a generic place holder “control device” and function “…controlled...” in the same claim, and the written description discloses the “…controlled…” function as being performed by the “control device”. However, the claim itself fails to expressly link the function specifically to the control device, or any other particular claim element for that matter. Furthermore, even if the claim were amended to expressly limit the generic place holder “control device” as being --for-- performing the claimed function “…controlled…” so as to invoke without question, the claim would still be unclear since the specification fails to disclose “control device” particulars (no purely mechanical control device details, no computer hardware details, no computer algorithm details, nor any other) that are adequate to perform the claimed functions. See MPEP 2161.01(I) which states that if the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) and a rejection under 35 U.S.C. 112(b) must be made in addition to the written description rejection. The MPEP citing In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc).
The claim 1 limitation “the operation of the electric motor and the discharge capacity of the hydraulic pump in each of the plurality of drive devices are controlled based on a target value of a position of a corresponding one of the plurality of joints and a result of the detection by the displacement amount detector” is unclear as to what manner the limitation is to be “based on”, e.g., turning the motor on when some target value is achieved or for all possible values? lowering the pump capacity by some amount when some target value is achieved?, doing nothing regardless of what target value is achieved?, etc.) The claim limitation is substantially infinity broad in scope and thus largely non-limiting and unclear.
The claim 1 limitation “a displacement amount detector that detects an amount of displacement of each of the plurality of joints of the manipulator” (lines 5-6 of claim 1) unclearly contradicts the disclosure, which describes/shows plural rotational sensors/detectors (16A-D) necessary to detect the plural joints, without any disclosure that/how any single one sensor could perform the claimed function for each of plural joints without the other sensors/detectors. See paragraph 0033 which states “More specifically, the angular displacement sensors 16A to 16D are provided in a one-to-one correspondence with the joints JT1 to JT4. The angular displacement sensors 16A to 16D detect the amounts of angular displacement (i.e., the tilt angles) of the joints JT1 to JT4 of the manipulator 11.” See MPEP 2173.03 which states that a claim may be "indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970)."
Claim 7 is unclear as to whether “a position detector” (line 5 of claim 7) is to refer to the same element as “a displacement amount detector” (line 5 of claim 1) or to an additional element. Note the written description (para.0033) refers to angular displacement sensors (16A to 16D) as being an example of both claimed labels, without any clear distinction there between. Accordingly, it is unclear whether any certain one or more of the elements are position detector(s) only, displacement amount detector(s) only, or both. If applicant is attempting to assigning two different labels to a common part note that such is improper/unclear in accordance with MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite. Ix parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989)".
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Riskas US9222493 in view of Tanaka US20200248719.
The prior art structures bolded in the claim mappings below appear to be inherently capable of meeting the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which states that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claim 1 (as best understood, see 35 USC 112 rejections). An electrohydraulic robot comprising: a manipulator (46) including a plurality of joints (77, 76b, 76c, 76d) and an end effector (50, 52); a plurality of drive devices (56a, 56b, 56c, 56d) that are provided in a one-to-one correspondence with the plurality of joints and each move a corresponding one of the plurality of joints; a displacement amount detector (see written descriptions of position transducer[s] and sensor[s]) that detects an amount of displacement of each of the plurality of joints of the manipulator; and a control device (one or more of 113, 120, 132, 138) operatively connected to each of the plurality of drive devices, wherein each of the plurality of drive devices individually includes: a hydraulic actuator (58) that moves a corresponding one of the plurality of joints; a hydraulic pump (64) that supplies a working fluid ("hydraulic oil") to the hydraulic actuator; and an electric motor (62) that drives the hydraulic pump and, a position of the end effector of the manipulator is changed based on an operation of the electric motor and a discharge capacity of the hydraulic pump in each of the plurality of drive devices, and the operation of the electric motor and the discharge capacity of the hydraulic pump in each of the plurality of the drive devices are controlled (at least turned on or off) based on (as best understood, see 35 USC 112 rejections) a target value of a position (any joint position value) of a corresponding one of the plurality of joints and a result (any detection result of the disclosed position transducer[s] and sensor[s]) of the detection by the displacement amount detector. The Riskas pump is disclosed to be fixed displacement rather than variable capacity as claimed by applicant. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Riskas fixed displacement pump to be a variable capacity pump since Tanaka expressly teaches variable pumps to be superior to fixed pumps (Tanaka, para.0005-0008).
Claim 3. The electrohydraulic robot according to claim 1, wherein each of the plurality of drive devices further includes a hydraulic circuit (66) that connects the hydraulic actuator and the hydraulic pump and the hydraulic circuit forms a closed circuit together with the hydraulic actuator and the hydraulic pump.
Claim 7 (as best understood, see 35 USC 112 rejection). The electrohydraulic robot according to claim 1, further comprising: an operation device (another one or more of 113, 120, 132, 138) that outputs a position command for specifying the position of the end effector; and a position detector (see written descriptions of position transducer[s] and sensor[s]) that detects a position of each of the plurality of joints of the manipulator.
Claim 8. The electrohydraulic robot according to claim 1, wherein the hydraulic actuator is a hydraulic cylinder ("hydraulic cylinder 58") that is extended and retracted according to supply of the working fluid from the hydraulic pump and the hydraulic cylinder is extended and retracted to move a corresponding one of the plurality of joints of the manipulator.
Response to Arguments
Applicant argues that the claims have been amended to overcome the 35 USC 112 issues. This is not persuasive. The claims as amended create additional issues as is detailed in the reworded rejections and new grounds above.
Applicant argues that the Riskas pump cannot be modified to be a variable-capacity type as claimed since Riskas is concerned with a walking machine/robot. This is not persuasive. The claims do not expressly forbid walking machines. Further, applicant fails to submit evidence proving that the variable displacement pump teachings of Tanaka would necessarily destroy Riskas. To the contrary Tanaka expressly teaches suitability for a “hominoid robot” (para.0011 and 0051) which is well known in the art to have walking functions.
Applicant argues that Riskas fails to disclose the claim 1 displacement amount detector newly amended into claim 1. This is not persuasive. Riskas discloses a displacement amount detector (transducers/sensors 82a-e).
Applicant argues that there is no motivation to modify Riskas in view of the Tanaka variable displacement pump since the prior art does not recognize certain benefits to variable pumps discovered by applicant. This is not persuasive. Tanaka expressly teaches variable pumps to be superior to fixed pumps (Tanaka, para.0005-0008). Applicant's argument that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Riskas does not disclose how to control the discharge capacity of the variable type pump taught by Tanaka. This is not persuasive. As detailed in the 35 USC 112 rejections above there are severe issues with the control functions amended into claim 1. As best understood the claim fails to specify any specific manner of control not inherent to the prior art structure. For instance, claim 1 does not specify any specific scope of motor operation (turning on, turning off, speeding up, slowing, maintaining speed, maintaining off, etc.) such that any manner of operation would read thereon such as operating the motor on, off, or leaving a current state unchanged would read thereon (all of which are inherent to the Riskas motor and the Tanaka variable displacement motor. Further, the claim is silent/unclear as to what manner the control is “based on” the “target value” nor does the claim specify any specific magnitude of value such that the claim is substantially without bound/unclear and met by the prior art as best understood. In fact applicant’s claims fail to even specify any particular element as performing the claimed controlling functions (see reworded rejections elsewhere above).
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618